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.
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
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.
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.
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.
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.
Howard Shire and Stephanie Remy
Federal Circuit: Agreement Between Patent Owner and Third Party Was Not Insulated from The On-Sale Bar
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
Howard Shire and Stephanie Remy
Federal Circuit: District Court Abused Discretion By Attributing Inconsistent Position to Plaintiff
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.