In a set of astonishing identical Director Review decisions, the Acting USPTO Director discretionarily denied five IPR petitions whose proceedings would have concluded over seven months before the underlying patent infringement suit would have gone to trial. The Acting Director reasoned that the petitioner waited too long to file its IPR petitions because, even though … Continue Reading
Monetary awards in trade secrets cases continue to grab headlines in 2025. As reported in this recent blog post, a Boston jury awarded a medical device company $452M for theft of trade secrets by a competitor, later reduced to $59.4 in exchange for a permanent injunction. Last month, an Arkansas jury found Walmart liable for … Continue Reading
As cyber security continues to make be headline news it is timely that on 7 May 2025 the UK government published a new voluntary Software Security Code of Practice: Software Security Code of Practice – GOV.UK This Code is designed to be complementary to relevant international approaches and existing standards and where possible reflects internationally … Continue Reading
While the current Trump Administration has based its global trade war on trade imbalances stemming from unfair trade practices of foreign countries, its weapon of choice—increased tariffs—is designed to encourage businesses to relocate manufacturing operations to the U.S., thereby boosting American employment and industrial capacity. The U.S. Trade Representative’s 2025 Special 301 Report, issued on … Continue Reading
In Insulet Corporation v. EOFlow Co., Ltd. et al., after a month-long jury trial, a federal court in Boston dropped the hammer on an insulin patch pump producer for misappropriating the trade secrets of its competitor. The jury found that EOFlow, a South Korean company, its U.S. subsidiary, and several individual defendants, including former employees … Continue Reading
In an effort to offer customers better service, the United States Patent and Trademark Office has been modernizing various aspects of their operations. One result of the modernization and efficiency efforts relates to expedited patent issue dates. On April 15th, the Patent Office announced that ― starting on May 13th, 2025 ― it will be … Continue Reading
As provided by statute at 35 U.S.C. § 311(b), a petitioner in an inter partes review (IPR) may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” Does this provision permit IPR challenges based on Applicant Admitted Prior Art (AAPA) ― art identified in the … Continue Reading
If you’re a patent practitioner who works with innovation related to artificial intelligence, you’ll want to consider the Federal Circuit’s recent decision in Recentive Analytics, Inc. v. Fox. Corp. This decision is the first to explicitly consider patent eligibility in the context of the use of artificial intelligence. The Federal Circuit affirmed the district court’s … Continue Reading
In Part I of this set of blogs, we discussed the impact of the rescission of former USPTO Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Patent Trial and Appeal Board. We also discussed Chief Judge Boalick’s Guidance Memorandum on the rescission. In Part II, we examine a … Continue Reading
The recent Federal Circuit decision in AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc. offers valuable lessons related to failed merger attempts, specifically the vast exposure that can result from a party breaching its confidentiality obligations. This protracted case—lasting more than 15 years and involving multiple trials and appeals—also highlights important principles about trade secret … Continue Reading
Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick … Continue Reading
The Federal Circuit has long held that “the general rule” of patent infringement damages law is “a patentee may not claim, as its own damages, the lost profits of a related company.” More than 15 years ago, one patent owner argued that an exception to this general rule should be when a subsidiary’s profits “flow … Continue Reading
Wash World Inc. v. Belanger Inc. raises the question whether lost profit damages for patent infringement can extend to profits related to unpatented products sold with a patented product. As with many legal issues, including the lost profits issue I addressed in my recent post, the answer to the question is “sometimes.” In Wash World, … Continue Reading
Ackerman v. Pink asks how much of a written history can be claimed as proprietary by the author of that history. The answer: Not much. It is black letter that the author of a non-fiction work cannot prevent others from using historical facts in some other work – even if those historical facts are known … Continue Reading
The Supreme Court’s decision in Loper Bright Enterprises v. Raimondo has and will continue to alter the legality and enforceability of federal agency rules and regulations related to ambiguous federal statutes. As a reminder, Loper Bright abolished the Chevron doctrine, which instructed courts to give deference to federal agency interpretations of ambiguous statutes. In Loper Bright, the Supreme … Continue Reading
Lost profit damages are notoriously difficult to recover in patent infringement cases. Lost profits damages are recovered in only a small percentage of cases that go to trial. Among the challenges in recovering lost profits under the Panduit test are that the patent owner must prove the absence of acceptable non-infringing alternatives (Panduit factor 2) … Continue Reading
The authors wish to thank Sumaiyah Razzaq for her contributions to this post. Ever since the emergence of generative AI, a major concern for all participants has been the extent to which copyright works can and should be used in training AI models. The application of UK copyright law for this purpose is disputed, leading … Continue Reading
In what may turn out to be an influential decision, Judge Stephanos Bibas ruled as a matter of law in Thomson Reuters v. Ross Intelligence that creating short summaries of law to train Ross Intelligence’s artificial intelligence legal research application not only infringes Thomson Reuters’ copyrights as a matter of law but that the copying … Continue Reading
In January 2025, the Copyright Office released Part 2 of its anticipated three-part series on copyright and artificial intelligence (AI). The report discusses copyrighting works that include AI-generated content and provides guidance for applicants seeking protection of such work. Part 2 emphasizes the importance of “human authorship,” as works purely generated by AI or works … Continue Reading
In a November 6, 2024 opinion in Certain Computing Devices Utilizing Indexed Search Systems and Components Thereof, the U.S. International Trade Commission (“ITC”) held that statements, disclaimers, and positions taken during the prosecution of a later patent apply to the construction and interpretation of the same term in an earlier related patent. Using this standard, … Continue Reading
Earlier this year, as we discussed here, here, and here, the United States Patent and Trademark Office (USPTO or Office) proposed a number of sweeping changes to the Office’s patent fees, including a very steep set of fees for filing terminal disclaimers, later continuation applications, and three or more requests for continued examination (RCEs). The … Continue Reading
For the first time, the U.S. International Trade Commission (“ITC”) has set forth and applied its legal standard for a theft or conversion claim in a Section 337 of the Tariff Act of 1930 investigation. Section 337 gives the ITC broad powers to investigate and address unfair acts in the importation of articles into the … Continue Reading
Mandatory deference to an agency’s rulemaking may be gone, and numerous commentators fear that the Supreme Court’s decision in Loper Bright Enterprises v. Raimondo will drastically alter the legal landscape surrounding agency decisions. But that does not mean that every agency or agency decision is in peril. We explore here the implications of the Loper … Continue Reading
When a patent application is allowed, the claims may not precisely cover everything that the applicant wants to protect. Rather than add new claims after a notice of allowance and prolong prosecution, applicants will commonly file one or more continuation applications to pursue different claims. The continuation has substantially the same specification and drawings as … Continue Reading
