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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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The Intellectual Property Strategist
IP News
Jeffrey Ginsberg and Matthew Weiss
Federal Circuit: The Doctrine of Equivalents Is Not a Binary Choice
Federal Circuit: No Estoppel for Party That Joined IPR
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The Intellectual Property Strategist
Implications of 'Amgen v. Sanofi' On the State of Enablement Law
Bruce M. Wexler, Aaron P. Selikson, Ashley N. Mays-Williams and Susan S. Hwang
The decision appears to take steps to harmonize the prior cases that appropriately were guided by the Wands factors with the cases discussing the “full scope” of enablement that have engendered some confusion in the law.
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The Intellectual Property Strategist
Equity In Broad and Flexible Fashion
Kelvin Han
Federal Circuit Wasn’t Chicken to Grant Equitable Intervening Right in Poultry Processing Equipment Case
A dispute between the two titans in the poultry processing equipment market led the U.S. Court of Appeals for the Federal Circuit to construe the term “protection of investments” in 35 U.S.C. §252.
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The Intellectual Property Strategist
A Unique Solution to COVID-19-Related Delays At the U.S. International Trade Commission
Robert Angle and Brittanee Petrik
In the wake of the COVID-19 pandemic, the ITC was forced to suspend in-person hearings and halt its fast-paced schedules while it explored existing technological resources and reliable and secure options available for video conferencing that would protect parties’ confidential business information (CBI).
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The Intellectual Property Strategist
Patent Litigation Growth In 2020 Points to Sustained Activity In 2021
Rob Maier
Despite the recession — or partly as a result of it — 2020 was also a year of growth for patent litigation in the United States. This article provides a look back at patent litigation filing statistics in recent years across district courts in the United States, with an eye toward current trends that in all likelihood will continue deep into 2021.
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The Intellectual Property Strategist
IP News
Jeffrey Ginsberg and Ryan J. Sheehan
Federal Circuit: Texas Court Abused Its Discretion By Delaying On Venue Transfer Motion While Proceeding With the Merits of the Case
Federal Circuit: PTAB Violates the APA When It Sua Sponte Adopts a New Claim Construction to Support New Theory of Invalidity for First Time
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen J. Patel
PTAB to Follow Nautilus Standard of Definiteness
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The Intellectual Property Strategist
Exercising Restraint: Federal Circuit Affirms Dismissal of Declaratory Judgment Action Under Abstention Doctrine
Rudy Kim and James Hancock
The Federal Circuit affirmed the dismissal of a declaratory judgment action based on the “abstention doctrine,” despite the declaratory judgment plaintiff’s insistence that the underlying contract dispute required resolution of patent validity and claim scope that were within the federal courts’ exclusive purview.
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The Intellectual Property Strategist
USPTO Sets Precedent on Collective Patent Defense Groups with RPX Ruling
Scott Graham
It took two years and a last-minute substitution of judges for the U.S. Patent and Trademark Office (USPTO) to rule that RPX Corp. was too close to a dues-paying member to bring a patent validity challenge.
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The Intellectual Property Strategist
IP News
Joshua R. Stein and Jeff Ginsberg
Federal Circuit: Post-Employment Assignment Clause Void Under California Law
Federal Circuit No New Trial for Improper “Pennies on the Dollar” Rhetoric
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The Intellectual Property Strategist
Recently Introduced Bill Would Limit ITC 'Domestic Industry by Subpoena'
Robert Maier
Patent infringement disputes in the United States are not only heard in district courts. The U.S. International Trade Commission (ITC) also decides high-stakes intellectual property disputes — with the remedy for the IP rights holder not being damages, but rather an exclusion order that can block a competitor’s importation of infringing articles into the U.S. That remedy can be incredibly powerful for companies engaged in stiff competition in the U.S. market.
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