Tag Archives: Patents

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

“Teaching Away” – A Change To This Historically Inconsistent Doctrine

Photo of Phillip WolfeBy Phillip Wolfe on Posted in Patent
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

Bio-Rad Co-ownership Defense Fails at the CAFC

Photo of John HiltenBy John Hilten on Posted in Patents
On April 29, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed an International Trade Commission (ITC) decision holding the importation and sale by Bio-Rad Laboratories, Inc. (Bio-Rad) of certain microfluidic systems and components used for gene sequencing or related analyses infringed certain 10X Genomics Inc. (10X) patent claims and, moreover, … Continue Reading

Supreme Court to Decide Fate of Assignor Estoppel

Photo of Stephanie HatzikyriakouBy Stephanie Hatzikyriakou on Posted in Patents
In Hologic, Inc. v. Minerva Surgical, Inc. (Fed. Cir. April 22, 2020), the Federal Circuit declined the “invitation to ‘abandon the doctrine’ of assignor estoppel” and, after concluding that the district court did not abuse its discretion in applying the doctrine, affirmed the district court’s grant of summary judgment of no invalidity.  Opinion at 16, … Continue Reading

For a Few Facts More

Photo of Scott FeldmannBy Scott Feldmann on Posted in Patents
After TC Heartland tightened up patent venue, Judge Albright’s local patent rules drew plaintiffs wanting a quick courtroom shootout. According to Lex Machina and IP Law360, Judge Albright, by himself, picked up 793 patent litigations last year in the Western District of Texas (WDTex). In just a year, Judge Albright accumulated 20 percent of newly-filed … Continue Reading

Moderna’s IP Vault Paves the Way for COVID-19 Treatments

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents
On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.” Nevertheless, Moderna feels it has a special obligation to allow others access to its patented technologies; accordingly, Moderna indicated that it … Continue Reading

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of an Inability to Respond Due to COVID-19

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents, Trademark, USPTO
To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading

CAFC: Patents Enjoy a Presumption of Subject Matter Eligibility

Photo of Phillip WolfeBy Phillip Wolfe and Michael Stein on Posted in Patent
In Cellspin Soft, Inc. v. Fitbit, Inc.,[1] the Court of Appeals for the Federal Circuit (CAFC) rendered an important decision declaring that the presumption of validity under § 282 includes the presumption that claims are patent eligible under § 101. Claimed Invention and Procedural Posture Cellspin sued several companies for infringing various claims of four … Continue Reading

Update: Patent and Trademark Fees in Venezuela

Photo of John MuellerBy John Mueller on Posted in Trademark
As previously reported on this blog, the issue of payment of fees related to trademark applications/registrations in Venezuela is currently in a state of flux. Specifically, given the current U.S. sanctions generally forbidding U.S. corporations from transacting business with the Venezuelan government, it has been difficult for these U.S. entities to pay fees associated with … Continue Reading

Patent and Trademark Fees in Venezuela

Photo of John MuellerBy John Mueller on Posted in Trademark
On Feb. 1, 2019, the Venezuelan Ministry of National Commerce sent a notification that patent and trademark fees shall be paid in the Venezuelan cryptocurrency “PETRO.” HOWEVER, the United States government, by Executive Order 13827 (March 19, 2018), expressly prohibits such transactions by U.S. persons, including individuals and companies, relating to any digital currency, digital … Continue Reading

Federal Circuit Splits on Approach to Analyzing Graham Factors

Photo of David FarsiouBy Wade Haaland, Allen Sokal and David Farsiou on Posted in Patent
In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent) were obvious despite evidence of commercial success and copying by others. Concerned that the majority’s opinion constituted a shortcut around a proper Graham analysis, Judge … Continue Reading

Visual Memory v. NVIDIA: The Importance of a Robust Written Description

By Michael Stein on Posted in Patent
Introduction In Visual Memory v. NVIDIA (Fed. Cir. 2017), the Federal Circuit reversed the district court’s holding that Visual Memory’s U.S. Patent No. 5,953,740 is drawn to patent-ineligible subject matter. Instead, the court ruled that the ’740 patent claims an improvement to computer memory systems and is not directed to an abstract idea. The ’740 Patent … Continue Reading

A Split Panel of the Federal Circuit Debates the Standards for Definiteness

By Allen Sokal on Posted in Federal Circuit, Patent
In Cox Communications, Inc. v. Sprint Communications Co. LP, Appeal No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the panel, consisting of Chief Judge Prost (authoring the opinion) and Judges Newman and Bryson, unanimously reversed the district court’s summary judgment of invalidity for indefiniteness under 35 U.S.C. § 112, para. 2. But Judge Newman vigorously rejected the … Continue Reading

Supreme Court Denies Sequenom’s Petition for Certiorari

Photo of Ron KernBy Ron Kern on Posted in Uncategorized
On June 27, 2016, the U.S. Supreme Court, without comment, denied Sequenom’s petition for certiorari, leaving in place the Court’s previous rulings prohibiting the patenting of laws of nature and natural phenomenon. Sequenom filed its writ of certiorari with the U.S. Supreme Court on March 21, 2016, asking the Court to provide clarification regarding the … Continue Reading

First Post-Grant Review Written Opinions from PTAB Invalidate Two Patents for Livestock Valuation

By Shannon McCue on Posted in Patent
The Patent Trial and Appeal Board (PTAB) issued its first written opinions based on a trial of the relatively new Post-Grant Review (PGR) proceeeding and genetic factors. American Simmental Association (ASA) brought the petitions for review of the Leachman patents in response to a lawsuit filed by Leachman. ASA is an organization formed in 1968 … Continue Reading

In Re Smith: A Raw Deal for Inventors?

By Michael Stein on Posted in Patent
The recent decision in In re Smith (Fed. Cir. 2016), in which the Federal Circuit affirmed the rejection of claims 1-18 as being ineligible for patent under 35 USC § 101, represents another example of the shrinking scope of patent-eligibility since the Supreme Court’s Alice decision.[1] As discussed below, this case concerned the patent-eligibility of … Continue Reading

Federal Circuit Tasked With Analyzing Evidence For Proof That Defendant Had the State of Mind Necessary For Induced Infringement

Photo of Scott SimpkinsBy Scott Simpkins on Posted in Federal Circuit, Patent
On January 19, 2016, the Supreme Court issued a grant-vacate-remand order in a dispute between rival medical device companies Medtronic and NuVasive. The order directs the Federal Circuit to revisit its decision in light of the Supreme Court’s ruling in Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). Commil clarified that … Continue Reading

What CLS Bank Taketh, Copyright May Giveth Back

Photo of Chad RutkowskiBy Chad Rutkowski on Posted in Copyright, Patents
CLS Bank and Its Impact on Software Patents Courts, commentators and clients will be struggling for some time to assess the impact on software patents of Thursday’s Supreme Court decision in Alice v. CLS Bank.  Interpreted one way, the decision kills patents directed at computer-implemented business methods.  Interpreted another way, it’s business as usual for … Continue Reading

What CLS Bank Taketh, Copyright May Giveth Back

Photo of Chad RutkowskiBy Chad Rutkowski on Posted in Uncategorized
CLS Bank and Its Impact on Software Patents Courts, commentators and clients will be struggling for some time to assess the impact on software patents of Thursday’s Supreme Court decision in Alice v. CLS Bank.  Interpreted one way, the decision kills patents directed at computer-implemented business methods.  Interpreted another way, it’s business as usual for … Continue Reading

Patent Watch: Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc.

By Dr. Lawrence M. Sung on Posted in Uncategorized
[T]here is no “supplier exception” to the on-sale bar, [and] it is of no consequence that the “commercial offer for sale” [was] made by [the patentee’s] own supplier and was made to [the patentee] itself. On August 14, 2013, in Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., the U.S. Court of Appeals for the … Continue Reading

Patent Watch: Aria Diagnostics, Inc. v. Sequenom, Inc.

By Dr. Lawrence M. Sung on Posted in Uncategorized
While the facts may show that damages would be reparable, this assumption is not sufficient [for purposes of a preliminary injunction analysis]. In the face of that kind of universal assumption, patents would lose their character as an exclusive right as articulated by the Constitution and become at best a judicially imposed and monitored compulsory … Continue Reading

Patent Watch: Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.

By Dr. Lawrence M. Sung on Posted in Uncategorized
Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand. On August 6, 2013, in Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Reyna, Davis) affirmed the … Continue Reading

Patent Watch: Apple, Inc. v. Int’l Trade Comm’n

By Dr. Lawrence M. Sung on Posted in Uncategorized
[E]vidence relating to all four Graham factors — including objective evidence of secondary considerations — must be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of invention. On August 7, 2013, in Apple, Inc. v. Int’l Trade Comm’n, the U.S. Court of … Continue Reading
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