(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
- Previously, SCOTUS agreed with CAFC that APJ judges were principal officers under the Appointments Clause, though it disagreed as to the required remedy (United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021); "[SCOTUS] agreed that because APJs are appointed by the Secretary of Commerce, rather than the President with the advice and consent of the Senate, they could not issue any “final
decision binding the Executive Branch.” Id. at 1985. The Court held, however, that the appropriate remedy was to (1) exempt the Director from 35 U.S.C. § 6(c), which precludes anyone but the Board from granting rehearing of a Board decision, and (2) “remand to the Acting Director for him to decide whether to rehear” the case. Id. at 1987."). As the office of USPTO Director was vacant on remand, however, the USPTO Commissioner stepped in per office procedure, which the appealing party here argues failed to accord with the SCOTUS instruction. In accordance with Eaton, CAFC here reiterates that "the Appointments Clause allows an inferior officer to temporarily wield the powers of an absent PAS officer" and rejects the challenge (as well as a corresponding challenge under the FVRA). CAFC then reviews and affirms the Board's anticipation ruling based on the written description analysis of the prior art.
- Another Volkswagon factors mandamus granting transfer out of WDTX to NDCAL.
- Patent owner agreed that the references disclosed each of the claimed limitations, challenging, rather, the Board's proposed motivation to combine ("[T]he Board credited ABF’s expert testimony that P. pastoris yeast was known to “produce high yields of heterologous protein [e.g., bacterial protein] and, thus, reduce industrial costs—an important factor in producing phytases for livestock feed” on an industrial level. Final Written Decision, at 128. The Board found this to be “persuasive evidence setting forth reasons why [a] skilled artisan would have been motivated to express an E. coli appA [enzyme] in a fungal cell.”"). Reviewing the evidence, CAFC affirms the Board's assessment.
- Another Juniper factors mandamus transfer from EDTX to NDCAL, where CAFC basically affirms each factor in the petitioners' favor ("Under these circumstances, we conclude that the district court clearly abused its discretion, leading to a patently erroneous result, when it denied Petitioners motions to transfer to the clearly more convenient forum,
the Northern District of California.").
- The CAFC majority affirms the PTAB's obviousness determination, agreeing there was sufficient basis for a motivation to combine ("The Board also noted that Dr. Fronczak admitted it would be “catastrophic” and a “hazard” if a user failed to notice the absence of a stapler cartridge before attempting
to fire the instrument. Id. Accordingly, the Board found
that Intuitive sufficiently established a motivation to combine Green with Solyntjes.") and a reasonable expectation of success ("The Board found that Dr. Knodel logically and credibly opined that a POSITA would have had a reasonable expectation of success in combining Green with Solyntjes" as the adjustment as a "routine modification"; "This is not indicative of a situation where the Board improperly shifted the burden of proof on the patent owner to establish non-obviousness in the first instance, as Ethicon argues. Rather, the Board weighed competing evidence and made its determination on the record as a whole."). In her dissent, Judge Newman argues that as there is "no teaching or suggestion in the prior art of the ’379 patent’s structure as a whole", the obviousness determination should be overturned ("The panel majority finds the elements of the ’379 invention in assorted prior art references, which the majority
then plugs into the claims. Such judicial hindsight was negated in KSR International . . .").
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.
- 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)
- USPTO - #59458 - 10/16/2006
- California - #257829 - 12/01/2008
- District Columbia - #1014986 - 08/05/2013
- James is available by email, 8x8 hangout, and in-person meetups in the Valley (albeit while mindful of COVID protocols).
- Email is typically the best way to reach James.
- 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
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.