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James Skelley | Technology Lawyer
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SESSIONS
Sessions are online meetups for discussing recent legal news, general education, and sharing various of James' research. The next scheduled session is:


You can find a complete listing of upcoming sessions and request to join HERE.
(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
RECENT CASE HIGHLIGHTS
    • CAFC affirms 101 invalidity on claims to "[a] digital media player device for controlling digital media presentations."
      CAFC concludes "that claim 1 of the ’403 patent is directed to the abstract idea of preventing skipping advertisements by receiving, organizing, displaying, and controlling access to data . . . The claim achieves the goal of preventing skipping advertisements via steps that do nothing more than receive, organize, display, and control access to data, which places the claim squarely in line with those claims we have previously determined to be directed to computer-implemented abstract ideas . . . Consumers have used analog technology to skip advertisements in media for decades. Piranha’s own filings at the district court confirm that “copyright holders . . . giving away their content for free . . . was a problem associated with many, if not all, forms of pre-existing media distribution. For example, broadcast, cable, internet, and satellite broadcasts could be recorded and during playback, ads could be fast forwarded.” J.A. 552 (emphasis added). We conclude that claim 1 does not solve a technological problem."
      Matters fare no better at Step Two:
      "We are not persuaded by Piranha’s argument that claim 1 includes an inventive concept because the claimed intersplicer “offer[s] a specific improvement over the prior art” . . . Piranha’s citations to the specification amount to little more than the insertion of the word “novel” or “novelty” before one or more of the intersplicer’s generic functions."
      Ergo, affirmed.
    • A brief affirmance reiterating that post-priority evidence isn't necessarily inconsequential to enablement assessments at the time of filing (lot of enablement cases lately . . . ), here in the context of herbicide-degrading enzymes:
      "This case is unlike In re Hogan and In re Entresto because all tested variants of the claimed genus could have been created at the time of the priority date, although they were tested by Pioneer afterward. “[T]he use of post-priority-date evidence to show that a patent does not disclose a representative number of species of a claimed genus is proper.” Amgen I, 872 F.3d at 1375. It was not error for the Board to rely on the post-priority experimental data that Pioneer provided to establish that the challenged claims were not enabled. "
    • In this precedential decision involving "a communications apparatus for transmitting electric or electromagnetic signals over air" (emphasis added) the claims were invalidated below for indefiniteness - here, CAFC affirms, but instead upon lack of enablement.
      "First, we construe “transmitting electric . . . signals over air” in claim 1 to mean transmitting signals over air in electric form—something neither party disputes is scientifically impossible . . . Satius argues that “transmitting electric . . . signals over air” is not scientifically impossible because, properly construed, this language refers “to the fact that the electric signal [transmitted within the device] will be transformed into an electromagnetic signal, and then that electromagnetic signal is what will go out over the air and to its destination” . . . We do not agree. Transmitting signals over the air is not the same as transmitting signals to the air . . . We conclude the claims are invalid for lack of enablement because, to comply with 35 U.S.C. § 112(a)’s enablement requirement, “the specification must enable the full scope of the invention as defined by its claims” . . . This standard cannot possibly be met when, as here, the claims include an express limitation that adds inoperable (and thus non-enabled) alternative embodiments to the scope of the invention."
      While the enablement analysis seems coherent, its predication upon the claim construction concerned me a bit. Regarding the latter, consider:

      CAFC seems comfortable with the "non-sensical" construction, though, particularly because:
      "[claim 1’s preamble does not refer] to transforming an electric signal to an electromagnetic signal that is then transmitted over air because this would require rewriting claim 1 to provide for an electricto-electromagnetic transformation step that (1) does not exist in the claim language and (2) would not apply equally to claim 1’s “electric . . . signals” and “electromagnetic signals.”"
      (1) is rather than nature of correction, but I think (2) is what they consider most salient.

      As the application was filed in 2000, and this case in 2018, I'm not sure why a reissue or amendment in the preceding reexam wasn't proposed.

      In any event, affirmed, but for lack of enablement.
    • In this precedential decision, defendant "Pen-Tech moved for Rule 11 sanctions, contending Epic Tech and Baker Donelson should be held jointly and severally liable for Pen-Tech’s attorneys’ fees and costs incurred in PenTech’s defense against allegedly frivolous infringement claims." The DCT disagreed and denied the fees, but CAFC vacates and remands:
      "There were a number of strong indicators prior to the filing of the suit at issue that the asserted claims were invalid under § 101. First, the Supreme Court decided Alice . . . Second, the PTO determined claims in two of the three related applications were patentably indistinct from independent claims of the ’317 patent . . . and rejected claims in all three related applications under § 101 post-Alice . . . Third, and again post-Alice, the court in Fusion Skill held claims of the related ’315 patent ineligible under § 101. In such circumstances, it does not suffice for Epic Tech or its counsel to rely only on the presumption of validity when faced with multiple indicators that these claims were unpatentable under § 101 . . . The court failed to address whether Alice put Epic Tech on notice of its asserted claims’ potential invalidity . . . The court also failed to adequately address whether the PTO’s office actions served as notice of potential invalidity . . . The court’s analysis regarding the Fusion Skill holding likewise fails to provide reviewable reasoning for the court’s decision."
      Ergo, rather than decide that the sanctions were / were not appropriate, finding the DCT's analysis incomplete in failing to consider above, CAFC remands for a more thorough analysis.
    • In this Alice case, CAFC affirms 101 invalidity on web advertising patents. There's some nice distinguishing analysis:
      "In SRI International, we held claims non-abstract that were directed to a “specific technique” for “using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors” to solve the “technological problem” of “identifying hackers or potential intruders into the network” . . . In Finjan, we held that, although scanning for computer viruses by itself is an abstract idea, the claims were nonetheless non-abstract because they included limitations corresponding to a “behavior-based” approach to virus scanning which “constitutes an improvement in computer functionality” . . . And in McRO, we held claims focused on an improvement in computer animation non-abstract for setting forth specific rules for, e.g., “evaluat[ing] sub-sequences, generat[ing] transition parameters or apply[ing] transition parameters to create a final morph weight set” . . . Ultimately, our determinations in those cases rested on the recitation of specific solutions for solving technological problems in the respective claims. We cannot say the same is true here.

      As the district court determined, nothing in the claims or specification indicates any specific technological improvements or solutions to an internet-centric problem in advertising. Instead, the Asserted Patents are directed to combining two methods of conventional targeted internet advertising, i.e., using either page context or user browsing history to select advertisements . . . And the performance score concept is directed to the non-technological problem of selecting the highest revenue generating advertisement." (my emphasis)
      Subject matter scope remains salient.
More . . .
ABOUT
James Skelley is a solo practitioner based in Mountain View, California since 2015, focusing primarily upon technology transactions and intellectual property procurement. James' practice also serves as an "incubator" for new legal service technologies / methodologies and a "living example" of their application. To this end, James regularly partners with larger law firms and with his clients so as to improve the practice of intellectual property law.

LEGAL PRACTICE AREAS
  • Utility / Design / PCT Patent Prosecution
  • Open Source Diligence
  • Technology Transactions (typically as a team)
  • Litigation / Inter Partes Review Support (typically as a team)
  • James tends NOT to handle low-volume trademark work (though referrals are available)
LICENSING
  • USPTO - #59458 - 10/16/2006
  • California - #257829 - 12/01/2008
  • District Columbia - #1014986 - 08/05/2013
CONTACT
  • James is available by email, 8x8 hangout, and in-person meetups in the Valley.
  • Email is typically the best way to reach James.
TECHNICAL FIELDS
  • Machine Learning / Robotics
  • Cryptograpy / Cryptocurrency / Smart Contracts
  • Medical Device
  • Computational Biology (primarily modeling and proteomics)
  • Signal Processing (primarily wireless and compression)
  • Quantum Physics (primarily semiconductor) / Electromagnetics (antennae, waveguides, etc.)
  • Manufacturing / 3D Printing
  • James tends NOT to handle pure chemistry applications (though referrals are available), however James HAS handled matters involving computational proteomics, cellular modeling, and diagnostic lab protocols
SOFTWARE
LAWMUX BITES
LawMux Bites are (very) short, one-page summaries of various legal concepts, cases, and technologies. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you if you're new to the subject matter.

LAWMUX BITES
PAPERS / ARTICLES