Tag Archives: patent

Federal Circuit: AI Cannot Be a Named ‘Inventor’ Under the Patent Act

Photo of Phillip WolfeBy Phillip Wolfe on Posted in Patent
On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia rulings. The Federal Circuit concluded that the Patent Act requires an “inventor,” … Continue Reading

New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO

Photo of Deborah A. WilcoxPhoto of Megan MischlerBy Deborah A. Wilcox and Megan Mischler on Posted in Intellectual Property
The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal. Prior to this clarification, the Trademark … Continue Reading

Decentralized Domains: Metaverse Land Grab

Photo of Lisa Bollinger GehmanPhoto of Kevin WallacePhoto of Deborah A. WilcoxBy Lisa Bollinger Gehman, Kevin Wallace and Deborah A. Wilcox on Posted in Trademark
As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights. There is a … Continue Reading

Third-Party Complaints Must Shift Liability—Not Defeat It

Photo of James HattenBy James Hatten on Posted in Patents
A party sued for patent infringement may seek to shift some or all of its liability through an indemnification claim. While a patent infringement defendant may seek to implead an indemnitor under Rule 14 of the Federal Rules of Civil Procedure, a recent Eastern District of Kentucky decision is a reminder that third-party complaints are … Continue Reading

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

Photo of Lisa Bollinger GehmanBy Lisa Bollinger Gehman on Posted in Trademark, USPTO, USPTO Litigation
On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading

Reasonable Expectation of Success’ Analysis Must Be Tied to Claim Limitations

Photo of Mark EinsiedelBy Mark Einsiedel on Posted in Federal Circuit, Patent Trial and Appeal Board
One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” … Continue Reading

Podcast: Navigating the Fine Line Between Obviousness and Obviousness-Type Double Patenting

Photo of Stephanie Lodise, Ph.D.Photo of Tracy Palovich, Ph.D.By Stephanie Lodise, Ph.D. and Tracy Palovich, Ph.D. on Posted in Patents, Podcast
Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution strategies how to respond to each type of rejection so as to maximize patent protection Questions & Comments: slodise@bakerlaw.com Listen to the Episode Subscribe to BakerHosts Apple Podcast | Google … Continue Reading

Federal Circuit Requires Definitive Written Description Support for Quantitative Values and Ranges

Photo of Michael Schwartz Ph.D.By Michael Schwartz Ph.D. on Posted in Federal Circuit, Patents
Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention.[1] The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure. In … Continue Reading

Federal Circuit Requires Prior Art Be Analogous for Anticipation of Design Patents

Photo of Jennifer M. KurczBy Jennifer M. Kurcz on Posted in Federal Circuit, Patent, Patents
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

Federal Circuit Hints at Easier Service of Process on Foreign Defendants

Photo of Cory BarnesBy Cory Barnes on Posted in Federal Circuit, Intellectual Property, Patent, Patents
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

Courts Rule That AI Inventorship Can Rust in Peace

Photo of Alaina J. LakawiczBy Alaina J. Lakawicz on Posted in Federal Circuit, Patent, Patents, USPTO
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

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

Photo of Kevin WallacePhoto of Nancy R. FrandsenBy Kevin Wallace and Nancy R. Frandsen on Posted in Music Industry, Patent, Patents, Trademark, USPTO
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

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

Photo of Scott SkilesBy Scott Skiles on Posted in Federal Circuit, Patents, Trademark, USPTO
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

A Brief Overview of the USPTO’s Interim Procedures Implementing Arthrex

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading

Can a Plaintiff in the United States Recover Foreign Patent Damages?

Photo of Michael GannonBy Michael Gannon on Posted in Patent
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 Patent Litigation: Year in Review

Photo of Derek FreitasBy Derek Freitas on Posted in Patent
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

Baked-In Apportionment

Photo of Jared BrandyberryBy Jared Brandyberry on Posted in Patent
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

Election Ballot Verification – A Patent Subject Matter Eligibility Analysis

Photo of Gabriel ApplegateBy Gabriel Applegate on Posted in Patent
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
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