On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable. The Patent Applications As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the … Continue Reading
In Adapt v. Teva, the Federal Circuit affirmed the district court’s findings that methods of administering a naloxone nasal spray formulation were invalid as obvious. The decision, which the Court notes was a “close case,” reminds us how difficult it is to show non-obviousness of pharmaceutical formulations and their use. The patents at issue relate … Continue Reading
Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. … Continue Reading
In a recent decision, In re: OnePlus Technology (Shenzhen) Co., Ltd., Case. No. 21-165, Dkt. 20, the Federal Circuit denied China-based smartphone maker OnePlus’ petition for mandamus seeking to direct a Western District of Texas court (Judge Alan Albright) to dismiss the five underlying patent infringement actions for insufficient service of process. The Federal Circuit … Continue Reading
On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no. The Patent Applications Plaintiff Stephen Thaler, Ph.D., is the owner of a Device … Continue Reading
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading
Teaching away is an important concept when considering the obviousness of a patent claim. The Federal Circuit’s recent decision in Chemours v. Daikin[1] makes it easier to find that a reference teaches away from an invention, potentially increasing the difficulty of invalidating a patent claim for being obvious. There, the Circuit reversed the Patent Trial … Continue Reading
The U.S. Court of Appeals for the Federal Circuit recently issued a precedential opinion discussing plaintiffs’ attempts to influence venue through reliance on a licensing agreement that purported to limit where a patent infringement suit “might have been brought.” See In re Samsung Electronics Co., Case Nos. 2021-139, 2021-140 (Fed. Cir. June 30, 2021). In … Continue Reading
In the latest round of appellate hot potato, the U.S. Court of Appeals for the Federal Circuit transferred to the U.S. Court of Appeals for the Fifth Circuit an appeal from a decision by the U.S. District Court for the Northern District of Texas regarding antitrust claims associated with enforcement of a patent found unenforceable … Continue Reading
In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s … Continue Reading
2020 was a year of turmoil and unexpected events. While many businesses struggled throughout the year, patent litigation experienced an uptick across the board. According to Docket Navigator, 2020 was the first year to see an increase in the total annual number of patent cases since 2015.[1] Compared to 2018 and 2019, this past year … Continue Reading
The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal … Continue Reading
In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review … Continue Reading
In Vectura, the Federal Circuit recently reiterated that the entire market value of an accused multicomponent product may serve as the royalty base if the patent damages analysis is built on sufficiently comparable licenses. Vectura Limited v. Glaxosmithkline LLC, 981 F.3d 1030, 1040-1042 (Fed. Cir. 2020). Pursuit of the entire market value of a multicomponent … Continue Reading
In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents before opening their checkbooks. Interestingly, a Federal Circuit case from 2018, Voter Verified, Inc. v. Election Systems & Software, invalidated issued … Continue Reading
Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge weak patents, i.e., patents that should not have been issued in view of the Supreme Court’s Bilski … Continue Reading
As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law? From Markman v. … Continue Reading
As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading
As it has almost every industry and business around the world, the COVID-19 pandemic has altered the practice of law. While these unprecedented times present myriad problems, patent attorneys are among the best equipped to adapt and embrace the changes. Because of the global nature of patent law, which often necessitates regular travel to appear … Continue Reading
As researchers at universities and pharmaceutical companies rush to find treatments for COVID-19, new potential patent risks arise. While owners of existing patents that may be useful for COVID-19 treatments may have agreed to free up access to their patent rights through licensing or initiatives like Open COVID Pledge (U.S.) or the Open COVID-19 Declaration, … Continue Reading
The COVID-19 pandemic has caused sweeping changes to our daily lives and the way we interact with one another. Many of these changes have been rather unwelcome. But one pleasant change I have noticed is a significant increase in driveway chalk art. Children across the country now can rest easy knowing they have not infringed … Continue Reading
In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains … Continue Reading
The Federal Reserve has been at the forefront of daily news in connection with its efforts to revive the national economy in the wake of the COVID-19 pandemic. At the same time, the U.S. Court of Appeals for the Federal Circuit in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al. recently ruled … Continue Reading
The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side … Continue Reading