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.
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.
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.
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.
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
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.
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.
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.
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).
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