Patent Litigation

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Like a Tree Falling that No One Hears: AI-generated Disclosures Have the Potential to Block Patentability of Human Ingenuity

The U.S. Patent and Trademark Office continues to seek stakeholder input on AI-generated disclosures and patentability. Earlier this year, USPTO issued a public Request for Comment on the impact of artificial intelligence on prior art, the known understanding of a person of ordinary skill and how this effects patentability, specifically novelty and obviousness of a … Continue Reading

The USPTO’s Proposed Terminal Disclaimer Rule Change: It’s Radical, But Is It Legal?

In a May 10, 2024, Notice of Proposed Rulemaking (NPRM), the USPTO proposed sweeping changes in the rules governing the filing of terminal disclaimers. If the USPTO implements the proposed changes, entire patent families could be wiped out if just one claim of one patent in the family is found invalid over prior art. Patent … Continue Reading

Identifying a Single Biomolecule Means Single-molecule Detection Sensitivity

Every single word matters. Nowhere was this truer than when the Federal Circuit recently held, in an appeal from the Patent Trial and Appeal Board captioned Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., that an apparatus for identifying a single biomolecule meant examining one biomolecule alone and not inferring its identity from … Continue Reading

The USPTO Proposes Steep RCE Fees. Will Patent Prosecution and Appeal Strategies Change?

As discussed in two of our recent blogs (here) and here), the United States Patent and Trademark Office (USPTO or Office) recently proposed substantial patent fee increases for continuing applications and terminal disclaimers. The USPTO is also proposing substantial increases for an applicant to request continued examination of an application whose claims have been rejected, … Continue Reading

The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

Who Invented This? The Continuing Importance of Human Ingenuity in Patenting AI Related Inventions

Artificial Intelligence (AI) systems are becoming an increasingly important part of our lives and are affecting almost every industry. In compliance with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, titled “Safe, Secure, And Trustworthy Development and Use of Artificial Intelligence (AI)”, the US Patent and Trademark Office (USPTO) has issued … Continue Reading

UK Supreme Court rules on AI and Patent Applications

In a much anticipated judgment, the UK Supreme Court delivered on 20 December 2023 its ruling in the case of Thaler v Comptroller-General of Patents, Designs and Trade Marks (Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent) – The Supreme Court) on whether an artificial intelligence (AI) system can be named as the … Continue Reading

A Win for Skinny Labels; Insights for Enforcing Use Patents

Most drugs are covered by multiple patents, with initial patents directed broadly to the compound and later patents directed to increasingly narrower uses of the compound. This provides opportunities for the compound to be approved as a generic drug before expiration of all of the patents, based on a “skinny” label – i.e., a label … Continue Reading

Proactive Strategies in IPRs after Allgenesis

A recent Federal Circuit decision, Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, provides some interesting insights into patent challenge strategies, and their consequences, when a potentially infringing product is not yet on the market. Allgenesis, which has been developing a pterygium treatment product using nintedanib, filed an inter partes review (IPR) petition to try to … Continue Reading

Patent Linkage Litigation in China: A Two-Year Review

On June 1, 2021, the Fourth Amendment to the Chinese Patent Law became effective. An important part of the amendment is the introduction by Article 76 of the patent linkage system in China – a system for litigation of drug patents prior to market entry of generics, similar to that provided by the Hatch Waxman … Continue Reading

Federal Circuit Holds that Software Plaintiff Bears Evidentiary Burden of Copyrightability Where Defendant’s Evidence Shows Some Elements Not Copyrightable

In a case that could have some lasting impact, the Federal Circuit recently affirmed a 2020 ruling by Judge Rodney Gilstrap in the Eastern District of Texas dismissing claims that a competitor infringed non-literal elements of the plaintiff’s software. Because defendant World Programming Limited (“WPL”) had shown that some elements of plaintiff SAS Institute’s (“SAS”) … Continue Reading

District Court Gatekeeping Responsibility for Expert Witness Testimony to Increase Under Proposed Changes to Federal Rule of Evidence 702

Sister blog Global Investigations and Compliance Review posted a very read-worthy recent blog authored by our colleagues Marisa Darden, Ayako Russell and Jay Thomas. Addressing proposed changes to the Federal Rule of Evidence 702 standards regarding the admissibility of expert witness opinions, the post is a must read for anyone involved in or concerned with … Continue Reading

Rulemaking at the US Patent Office: Does Director Guidance On Discretionary Denials of Review Require Opportunity for Public Comment?

The Federal Circuit has refused to uphold the dismissal of a complaint alleging that the Director of the Patent and Trademark Office (PTO) improperly issued instructions to PTAB judges regarding whether to institute requested patent review proceedings. The complaint alleges that the so-called Fintiv factors – initially set forth in two opinions designated by the … Continue Reading

Reining in The Western District of Texas? Recent Developments Affecting That Court’s Status As A Patent Infringement Filing Hotbed

In a unanimous February 1, 2023 Order, a Federal Circuit panel granted Google LLC’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to vacate its order denying transfer of patent infringement claims to the Northern District of California. As discussed here, this precedential decision signals the … Continue Reading

Putting the Appeals of Both Sides to Bed: PTAB Rulings on the Patentability of Systems and Methods for Adjusting Air Pressure in a Mattress Affirmed

The Federal Circuit recently handed down an informative decision in American National v. Sleep Number Corporation affirming the Patent Trial and Appeal Board’s final decisions in two inter partes reviews finding some claims patentable and some claims not patentable. The claims at issue related to the systems and methods for adjusting pressure in an air … Continue Reading

The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal

In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow … Continue Reading

The Alice Test for Patent Ineligibility in Practice: The Federal Circuit Reverses District Court’s Dismissal of an Infringement Case

One of the threshold requirements for obtaining a patent under U.S. law is that the invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” In other words, the subject matter of the invention must be eligible for patenting. Many courts have used this requirement … Continue Reading

Through the Fire? Not Anymore – European Court of Justice strengthens Rights of Patent Owners in Germany

For many years, German courts would, in principle, only grant a preliminary injunction in a patent case, if the patent in suit had “gone through the fire” in the sense of having survived an adversarial opposition or nullity proceeding at first instance. This case law was based on the consideration that it can be extremely … Continue Reading

Hefty Civil Penalties: Another Reason Patent Owners Should Consider Patent Litigation at the ITC

Powerful remedies, particularly General Exclusion Orders, are often cited as a reason why patent owners should consider asserting their patents at the U.S. International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930 instead of, or in addition to, in U.S. District Court. A recent Federal Circuit decision reaffirms another advantage of … Continue Reading

Yes, You Can Bargain Away Your Right to File IPR Petitions

For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure … Continue Reading
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