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The Intellectual Property Strategist
Federal Judge Blasts Patent Trolls
Rob Maier
A recent order from Chief Judge Colm Connolly in the U.S. District Court for the District of Delaware may serve as a warning for “patent trolls” — the derogatory term used to describe companies whose sole function is to acquire and then assert patents, often in cases that are questionable on the merits — against filing cases in Delaware going forward.
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The Intellectual Property Strategist
Recent Patent Trial and Appeal Board Approaches to Patent Claims on Medical Technology Implementing AI
Jim Soong
Each decision involves reversal of a prior art rejection and contrasts with the other decisions on subject matter eligibility, revealing different PTAB approaches and results that can inform prosecution and appeal strategies.
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The Intellectual Property Strategist
Can Artificial Intelligence Patents Overcome §112 Requirements?, Part 2
Mark Liang, Paige Hardy and Grace McFee
Part Two of a Two-Part article
While the last decade has seen a dramatic increase in the number of AI patents, such patents face difficulty in overcoming the patent-eligibility challenges under §101 and Alice. Section 101, however, is not the only hurdles AI patents must overcome. Section 112, with its written description, enablement, and definiteness requirements, presents additional obstacles.
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The Intellectual Property Strategist
How Patent Owners Can Leverage Climate Change Programs In Their IP Strategies
Gregory D. Len and Rachel Sullivan
The USPTO has created or expanded several programs to promote the development of sustainable energy. For patent owners and inventors in the energy sector, these programs can provide a financial and administrative edge for the development and protection of their intellectual property, as well as play a beneficial role their overall IP strategy.
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The Intellectual Property Strategist
Can Artificial Intelligence Patents Survive Alice?
Mark Liang. Paige Hardy and Grace McFee
Part One of a Two-Part Article
Under the current Alice framework, those attempting to patent AI innovations face an uphill battle. But, as the caselaw demonstrates, inventors and patent drafters can take steps to reduce the risk of AI patent claims being invalidated as abstract ideas.
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The Intellectual Property Strategist
IP News
Sarah Brand
Federal Circuit: PTAB Did Not Err In Finding That It Retained Authority to Issue Final Written Decision After Deadline Passed
Federal Circuit: District Court Did Not Err In Finding That an Abbreviated New Drug Application Is Limited to the Uses Described Therein
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The Intellectual Property Strategist
Director Vidal’s Impact On the PTAB: Big Changes and More On the Way
Jennifer Bush
Perhaps the largest impact that Director Vidal has had upon the PTAB is has been via Director Reviews. The U.S. Supreme Court mandated Director Reviews to correct procedural defects in the way that administrative patent judges are appointed to the PTAB.
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The Intellectual Property Strategist
Designing the Future: Protecting AR/VR Innovations With Design Patents
By Zachary D. Cleary, Jose J. Jimenez and Taryn A. Elliott
The future is only redesigned every so often, so it is worth asking, what will this new technology look like, and how can pioneers protect their user-facing innovations that will define this emerging space? Design patents are the answer.
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Cybersecurity Law & Strategy
Protecting Artificial Intelligence Inventions: Takeaways from 'IBM v. Zillow' from a Patent Drafting Perspective
Amir Kashani, Xuechen (Rebecca) Ding and Aseet Patel
Part Two of a Two-Part Article
In Part One, we discussed the IBM v. Zillow case, where IBM sued Zillow for infringing on seven IBM’s patents directed to artificial intelligence (AI) algorithms for estimating property value. The focus was on the difficulties in establishing patent infringement on specific AI algorithms, as well as the strategic advantages of including additional patent claims that target ancillary features of an AI system. In this segment, we will analyze the claims made in the IBM v. Zillow case and present some tips for drafting AI-related claims from the perspective of patent infringement.
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The Intellectual Property Strategist
Federal Circuit Imperils Term-Adjusted Patents
Sandip H. Patel
The Federal Circuit recently upheld the Patent Office's decision to reject claims in four separate reexamination cases due to obviousness-type double patenting (ODP).
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and George Soussou
Federal Circuit: The Comparison Prior Art Has to be Within the Proper Scope
Federal Circuit: More Than Describing Trial and Error Is Needed for Enablement
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The Intellectual Property Strategist
A Diverse Patent Portfolio Better Protects Artificial Intelligence Inventions
Amir Kashani, Xuechen (Rebecca) Ding and Aseet Patel
Takeaways from 'IBM v. Zillow' from a Patent Drafting Perspective
Part Two of a Two-Part Article
In Part One of this article we discussed the IBM v. Zillow case, where IBM sued Zillow for infringing on seven IBM’s patents directed to artificial intelligence (AI) algorithms for estimating property value. The focus was on the difficulties in establishing patent infringement on specific AI algorithms, as well as the strategic advantages of including additional patent claims that target ancillary features of an AI system. In this segment, we analyze the claims made in the Zillow case and present some tips for drafting AI-related claims from the perspective of patent infringement.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Joyce L. Nadipuram
Federal Circuit Clarifies Motivation to Combine to Achieve the Claimed Invention and Holds IPR Petitioner Must Be Given Opportunity to Reply Where Patent Owner First Proposes Claim Construction In a Response
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The Intellectual Property Strategist
A Diverse Patent Portfolio Better Protects Artificial Intelligence Inventions
Xuechen (Rebecca) Ding and Aseet Patel
Takeaways from 'IBM v. Zillow' from A Patent Drafting Perspective
Part One of a Two-Part Article
This two-part article sheds light on several important aspects of patents on AI technology. In Part One, we provide a general overview of the IBM v. Zillow lawsuit and discuss strategies to diversify patent portfolios to maximize protection on AI-related technology.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and J. Jay Cho
Federal Circuit Examines the Analogous Art Test
Federal Circuit Affirms PTAB’s Finding of Prior Invention
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The Intellectual Property Strategist
Generative AI and Patent Considerations
James W. Soong
A patent strategy informed by the unique considerations raised by generative AI will optimize protections for innovations in the field. Patent strategies should reflect the current legal landscape as well as anticipate potential future legal developments.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Affirms the Board’s Finding of Anticipation Because Prior Art Patent and References Incorporated Therein Inherently Meet the Disputed Claim Limitations
Federal Circuit Affirms a Finding of Infringement Because the District Court Correctly Construed “a” and “said” and Rejects Anticipation Argument on Waiver Grounds
Federal Circuit Vacates Judgment of Non-Infringement Because the Underlying Stipulation Failed to Provide Sufficient Detail for the Court to Resolve Certain Claim Construction Issues
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The Intellectual Property Strategist
IP News
Matthew Weiss
Federal Circuit: Prosecution Laches Applies to Patent Claiming 1987 Priority Date
Federal Circuit: Appellate Court Lacks Jurisdiction Over Interlocutory Appeal of Protective Order Dispute
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Patent Infringement and Trade Dress In the Ninth Circuit
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Ryan J. Sheehan
Federal Circuit: Unpatentability Ruling In First IPR Estops Patentee In Second IPR of Related Patent
Federal Circuit: A Disclaimer Made In a Pending IPR Is Not Binding In That Proceeding, But Is Binding In a Subsequent One
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and George Soussou
Federal Circuit: No Patent Term Adjustments When Claims Change
Federal Circuit: Proceeding Need Not Be Terminated Upon Request
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The Intellectual Property Strategist
Duty of Candor and Good Faith With the USPTO Covers Non-Inventors and Non-Practitioners
George Chen, Cory Smith and Ryan Fitzpatrick
Practitioners and non-practitioners that are associated with the examination of patents and patent applications should be vigilant about information that may be material to patentability to avoid having an issued patent be deemed unenforceable.
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The Intellectual Property Strategist
Protecting a Trademark Licensor’s Rights In Its Licensee’s Bankruptcy Case
Alfred S. Lurey
A recent bankruptcy case from the District of Delaware underscores the need for a trademark licensor to be alert to filings made in its licensee’s bankruptcy case that may require prompt action by the licensor to protect its valuable rights under a license agreement.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Affirms District Court’s Decision That an Artificial Intelligence Software System Cannot Be Listed as an Inventor on a Patent Application
Federal Circuit Affirms District Court’s Partial Award of Attorney’s Fees
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The Intellectual Property Strategist
Federal Circuit Analyzes Specification and Prosecution History Claim Language Usage
Matthew Siegal
University of Massachusetts v. L’Oréal
Absent an express disclaimer or special definition of how a term is to be interpreted, it can be frustrating to get a court to reject the plain and ordinary meaning of claim language read in a vacuum, based on the subtleties of how a term is used in a patent or its prosecution history.
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The Intellectual Property Strategist
UPDATE: Did the Supreme Court's 'Arthrex’ Decision Open Pandora’s Box?
Robert E. Browne, Jr. and Ryan C. Deck
In June 2021, the Supreme Court ruled in U.S. v. Arthrex that the statutory scheme appointing Patent Trial and Appeal Board administrative patent judges to adjudicate IPRs violates the appointments clause of the U.S. Constitution. Specifically, the Court concluded that because APJ decisions in IPR proceedings are not reviewable by a presidentially appointed and Senate-confirmed officer, such determinations are not compatible with the powers of inferior officers. The PTO later decided that it would not accept requests for director review of institution decisions. This policy is now also being questioned in Arthrex’s wake.
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The Intellectual Property Strategist
Recommendations for Evolving Patent Eligibility of Hardware
Hanchel Cheng
Regardless of whether a patent practitioner’s clients favor a stricter or more lenient eligibility regime, patent eligibility decisions continue to evolve. We need a line drawn for what practitioners expect to be clearer. Hardware inventions are facing patent eligibility challenges that would have seemed more likely in software inventions. Recent court decisions have shown that what once made a hardware invention eligible may no longer fly.
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The Intellectual Property Strategist
Fishing for Joint Patent Ownership Under 'BASF v. CSIRO'
Richard S.J. Hung, Jacob N. Nagy and Evangeline T. Phang
A recent Federal Circuit opinion sheds light on the process for settling co-ownership disputes pursuant to an underlying agreement. Although the precedential opinion does not change the rules of contract interpretation, it suggests considerations when drafting ownership agreements.
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Federal Circuit: Agreement Between Patent Owner and Third Party Was Not Insulated from The On-Sale Bar
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Affirms Precedential Opinion Panel Decision Limiting the Circumstances In Which the Board Should Raise Sua Sponte Patentability Issues Against Proposed Substitute Claims
Federal Circuit Rejects District Court’s Claim Construction As Being Too Narrow
Federal Circuit Rejects District Court’s Claim Construction Because It Is Not Supported by the Intrinsic Evidence, and Leaves Dependent Claims Without Scope
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Federal Circuit: District Court Abused Discretion By Attributing Inconsistent Position to Plaintiff
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The Intellectual Property Strategist
Litigating Redesigns At the ITC
Frank Liu, Dustin Ferzacca and Gwen Tawresey
An overview of redesigns at the ITC, a discussion of the ITC’s recent determination in Certain Audio Players and Controllers, and identifies some considerations to keep in mind when litigating redesigns at the ITC.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Ryan J. Sheehan
Federal Circuit: Applicant Admitted Prior Art Cannot Provide a “Basis” for a Ground of Unpatentability in an IPR, But Can be Cited for Other Purposes
Federal Circuit: After SAS, IPR Estoppel Extends to Prior-Art Grounds That Reasonably Could Have Been Raised in the Petition
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Evolusion Concepts, Inc. v. HOC Events, Inc.
Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc.
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The Intellectual Property Strategist
NFTs and Virtual Patent Marking
Willem Klein
Patent marking is an important step in the patent lifecycle as it is generally required to seek damages from infringers prior to the date the suit is filed. While virtual marking has somewhat reduced the overhead of marking, it suffers from the same problems all Internet-based evidence runs into in court: websites are ephemeral and have intermittent accessibility, as well as poor public logging of when information existed where, and for how long. NFTs on a digital blockchain could potentially overcome these hurdles, while still providing the benefits of virtual marking via websites.
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The Intellectual Property Strategist
IP News
Joshua R. Stein and Jeffrey S. Ginsberg
Pair of Federal Circuit Decisions Address Standing to Appeal Adverse IPR Decision
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The Intellectual Property Strategist
UPDATE: The Supreme Court 'Arthrex’s' Decision In Action
Ryan C. Deck and Robert E. Browne
Although several direct appeals for PTAB review or rehearing were made by parties who had received adverse outcomes at PTAB hearings after the Arthrex decision, on November 3, the first rehearing was granted by the PTO acting director.
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The Intellectual Property Strategist
Influence of Lost Profits Damages In Patent Cases
Eric Alan Stone and Catherine Nyarady
In two recent decisions, the Federal Circuit and a Delaware district court took account of the underlying economic conditions that permit and prevent awards of lost profits, and looked at the implications of those conditions on otherwise unrelated areas of law.
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
District Court: Exceptionality Found and Attorney Fees Awarded When Patent Owner Pursued Litigation With a Fraudulently Obtained Patent
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The Intellectual Property Strategist
Creative vs. Corporate: Patent Infringement Awards Respawn the Debate over Patenting Video Games
Mark D. Simpson and Paul Leicht
Patents can provide the broadest and strongest form of protection in the video game field. They can protect the methods and processes performed by the game software, and they can protect the hardware components of the game system, both in function and aesthetic design.
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Cybersecurity Law & Strategy
Artificial Intelligence and Subject Matter Eligibility In U.S. Patent Office Appeals
James W. Soong
For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Clarifies Pleading Requirements for Patent Cases and Affirms Grant of Summary Judgment of Invalidity under 35 U.S.C. §101
Federal Circuit Holds that Pendency of Motions Unrelated to Interlocutory Judgment Does Not Toll 30-Day Limit to File Notice of Appeal
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The Intellectual Property Strategist
Artificial Intelligence and Subject Matter Eligibility In U.S. Patent Office Appeals
James W. Soong
For the foreseeable future, patent applications involving artificial intelligence technologies will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.
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The Intellectual Property Strategist
U.S. Supreme Court Narrows Assignor Estoppel Doctrine In Continuation Patent Case
John Bowler and Kristie Butler
Nearly a century after endorsing the doctrine of assignor estoppel, the Court concluded that it applies “when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.”
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The Intellectual Property Strategist
Supreme Court Looking to Resolve Federal Circuit Split In Patent Act §101 Case
Eric Alan Stone and Catherine Nyarady
The Supreme Court is considering a petition in a §101 case, in which the Federal Circuit split six-to-six in denying rehearing en banc, and in which the Supreme Court recently called for the views of the Solicitor General.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit, Citing Forum-Shopping, Transfers Patent Cases to California
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The Intellectual Property Strategist
U.S. Supreme Court Largely Upholds IPR Proceedings In 'Arthrex'
Robert E. Browne, Jr. and Ryan C. Deck
In a decision authored by Chief Justice Roberts, the Supreme Court ruled that the statutory scheme appointing PTAB administrative patent judges (APJs) to adjudicate IPRs violates the appointments clause of the U.S. Constitution.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Rejects Theory of Infringement Based on Oversimplified Claim Interpretation and Finds That the ITC Correctly Required Proof of Substantial Non-infringing Use Based on Real-World Evidence
Federal Circuit Reverses District Court’s Decision Dismissing a Declaratory Judgment Action for Lack of Personal Jurisdiction Because the Patent Owner Directed Extensive Communications to the Judicial District
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The Intellectual Property Strategist
Admissibility of Evidence from Post-Grant Proceedings In District Court Trials
Richard S.J. Hung, Alex S. Yap and Stephen J.H. Liu
Courts are increasingly excluding all evidence relating to post-grant proceedings before the PTAB, except when it is used for impeachment. This article reviews recent decisions on this issue from some of the nation’s busiest patent districts.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit Invalidates Parts of VoIP Patent
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