On May 28, the Federal Circuit reversed a PTAB inter partes review (“IPR”) decision that held Baxter Corporation Englewood’s (“Baxter’s”) claims were not invalid under 35 U.S.C. § 103(a) obviousness based on three prior art...more
U.S. Supreme Court holds that Google's use of a small fraction of Oracle's Java SE API code for its Android platform is a fair use under copyright law.
On April 5, 2021, the U.S. Supreme Court ended a more than 10-year...more
According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable...more
The Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) finding that certain claims related to genetic inheritance data analysis are patent ineligible. The claims at issue sought to protect applying a...more
AI is becoming ubiquitous across all industries. AI systems and services are embedded in everyday products and services, including Amazon's Alexa, Netflix streaming services, and Nest smart thermostats. AI systems are also...more
On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204,...more
In a recently designated precedential decision, the Patent Trials and Appeals Board (“PTAB”) considered challenges to claims covering autonomous robotic cleaning devices. SharkNinja Operating LLC v. iRobot Corp.,...more
A recent case in the Northern District of Illinois addressed the issue of collateral estoppel in connection with patents that were similar to those previously cancelled by the PTAB: In Think Prods., Inc. v. Acco Brands...more
On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA). Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more
In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more
6/19/2020
/ Appeals ,
Claim Construction ,
Computer-Related Inventions ,
Doctrine of Prosecution Disclaimer ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
The Situation: Artificial intelligence ("AI") is being used to develop new inventions without human aid. As AI capabilities increase, patent offices around the globe are being confronted with difficult questions about whether...more
The emergence of artificial intelligence-related technology as a means of innovation has led to uncertainties for companies across industries, primarily because U.S. patent law has historically held that intellectual property...more
4/20/2020
/ Artificial Intelligence ,
Computer-Related Inventions ,
Copyright ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventors ,
Patents ,
Popular ,
Trade Secrets ,
Trademarks ,
USPTO
As was previously noted, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
The Situation: Artificial intelligence ("AI") is emerging as a key driver of innovation in the biopharmaceutical industry, which uses AI in research and development ("R&D") to analyze big data.
The Result: AI is already...more
12/20/2019
/ Artificial Intelligence ,
Biopharmaceutical ,
Biotechnology ,
Clinical Trials ,
Intellectual Property Protection ,
Life Sciences ,
Machine Learning ,
Patent-Eligible Subject Matter ,
Pharmaceutical Industry ,
Popular ,
Public Comment ,
R&D ,
Research and Development ,
USPTO
The Situation: Advances in artificial intelligence ("AI") are providing the ability to automatically create and design innovations without human assistance. AI's impact on patent, copyright, trademark, trade secret, and other...more
11/26/2019
/ Artificial Intelligence ,
Authorship ,
Comment Period ,
Computer-Related Inventions ,
Copyright ,
Copyright Office ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Public Comment ,
Trade Secrets ,
Trademarks ,
USPTO
When patent owners appeal PTAB decisions to the Federal Circuit, 67% of subsequent opinions are one-line Federal Circuit Rule 36 (“Rule 36”) summary affirmance orders, but when petitioners appeal, that number is a mere 18%. ...more
Two recent patent applications seek protection for inventions that were created autonomously by artificial intelligence without a human inventor. The applicants want the AI to be deemed the inventor and the AI's owners to...more
On November 21, 2017, Petitioner Infiltrator Water Technologies, LLC, filed a Petition for inter partes review (IPR) of claims 8–12 of U.S. Patent No. 8,815,094 B2. In its Preliminary Response, filed on March 7, 2018, Patent...more
The Situation: Artificial intelligence ("AI") is growing more powerful and gaining application in many areas. AI can now create new innovation on its own, without a human inventor—a capability that will only expand as...more
9/9/2019
/ Artificial Intelligence ,
Computer-Related Inventions ,
Corporate Counsel ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Patent Applications ,
Patents ,
Popular ,
Public Comment ,
USPTO ,
Young Lawyers
Patent procurement activity is increasing to protect embedded artificial intelligence ("AI") technologies in a variety of digital healthcare solutions. The United States Patent and Trademark Office ("USPTO") has issued the...more
8/19/2019
/ Artificial Intelligence ,
CLS Bank v Alice Corp ,
Digital Health ,
Healthcare ,
Life Sciences ,
Medical Devices ,
New Guidance ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Technology ,
USPTO
The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This...more
The Situation: There have been numerous reports that computer algorithms used in artificial intelligence ("AI") systems have created or contributed to biased and discriminatory outcomes. To reduce such bias and...more
6/27/2019
/ Algorithms ,
Artificial Intelligence ,
Cybersecurity ,
Data Protection ,
Disparate Treatment ,
Federal Trade Commission (FTC) ,
Popular ,
Predictive Analytics ,
Proposed Legislation ,
Technology Sector ,
Title VII
The PTAB’s Precedential Opinion Panel (POP) will consider, at the behest of 360Heros, whether a complaint alleging patent infringement made by a party other than the patent owner of the patent triggers the § 315(b) time bar....more
5/20/2019
/ § 315(b) ,
Amicus Briefs ,
Inter Partes Review (IPR) Proceeding ,
Legislative History ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Real Party in Interest ,
Standing ,
Time-Barred Claims
On March 7, 2019, the PTAB issued a new precedential order that helps to clarify a petitioner’s briefing rights in view of a recent update to the AIA Trial Practice Guide....more