Contact - Sessions
James Skelley | Technology Lawyer
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 the DCT's denial of declaratory judgment for infringement under an ANDA application, basically agreeing that arguments the generic's pH range would "drift" into the infringing range over time required overbroad readings of the ANDA application ("The district court’s finding that there was no upward pH drift in Eagle’s post-release pH data was not clear error . . . while the pH measurements fluctuated over time, there was no discernable trend . . . Par continues to erroneously view the release specification in isolation. Eagle’s ANDA is not constrained by its release specification only—it is also limited by the stability specification and the manufacturing process . . . The district court did not clearly err in finding that Par failed to establish that Eagle was engaged in, or making meaningful preparation for, infringing activity.").
    • In SAS, SCOTUS overruled partial IPR institutions. Here, the Board partially instituted pre-SAS, and following SAS, the petitioner did not seek remand for institution. CAFC first considers estoppel as to the as-instituted claims / reference, and reverses the DCT for not considering the estoppel argument as estoppel applies to those arguments petitioner "reasonably could have raised" ("[A]nticipation of claim 27 in view of Dezonno—the invalidity challenge the district court accepted—is a ground that Ingenio “reasonably could have raised” in the IPR"). CAFC then considers the patent owner's request to amend the list of asserted claims to those not challenged in the IPR and defers to the DCT's judgment ("[T]his is a decision concerning the management of a district court’s case docket, a decision we review under a highly deferential lens for an abuse of discretion . . . Because the district court did not abuse its discretion in this regard, we affirm."). N.b., the decision is precedential.
    • In this precedential decision, CAFC considers a writ of mandamus following the Board's rejection of an IPR petition, wherein the petitioner seeks Director review under the post-Arthrex interim procedures (which recite that “the Office does not accept requests for Director review of institution decisions” but “the Director has always retained and continues to retain the authority to review such decisions sua sponte after issuance (at the Director’s discretion).”). While the petitioner believes the "categorical refusal to accept requests for Director review of institution decisions violates the Appointments Clause" CAFC notes that "[h]ere, there is no structural impediment to the Director’s authority to review institution decisions either by statute or by regulation" and "[t]hat the Appointments Clause requires that a [Presidentially appointed, Senate-confirmed officer] have review authority does not mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers" and consequently concludes that "the delegation of authority as to whether to institute IPR and PGR proceedings to the Board and the Director’s policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause." In a brief concurrence, Judge Reyna additionally notes: a) that the Director's refusal is not absolute, rather she merely "exercised her discretion not to invoke her review authority"; and b) that there were "two other actions where she granted sua sponte review of determinations denying institution." Consequently, the extraordinary remedy of mandamus "would not be appropriate under the circumstances" ("Mandamus should be reserved for extraordinary cases requiring extraordinary relief and not serve to provide declaratory relief in a run-of-the-mill action.").
    • In this precedential claim construction decision, CAFC agrees with the Board that “cast in one piece” is a product-by-process limitation as it "describes the structure “being” cast in a particular way" (take note ye trainers of neural networks) and that the owner's arguments were "merely that the claim element describes a manufacturing method with some inherent restrictions" ("[T]he alleged structural and functional difference that Kamstrup identifies is detached from the claim"; "Consequently, we hold that because Kamstrup fails to show that the process claimed imparts “structural and functional differences” distinguished from the prior art, it is not entitled patentable weight."). CAFC also considers the analogous context of the prior art, but again dismisses arguments predicated on the unaccepted claim construction.
    • On remand from SCOTUS' decision limiting, but not abandoning, assignor estoppel ("The doctrine applies when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent"; accordingly, "[i]f Hologic’s new claim is materially broader than the ones [Mr.] Truckai assigned, then [Mr.] Truckai could not have warranted its validity in making the assignment."), CAFC (again) finds in this precedential decision that assignor estoppel applies. Specifically, CAFC first confirms that: a) the original claim's validity was warranted by the initial assignment (canceling the claim in a restriction requirement wasn't denying its validity); and b) the asserted claim is not materially broader than that original claim ("the plain claim language" of the original claim was "broad enough to encompass moisture-impermeable devices as well" and CAFC disagreed that the intrinsic record required otherwise).
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 (albeit while mindful of COVID protocols).
  • 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