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USPTO Issues Patent Eligible Subject Matter Guidance for AI Inventions

The Situation: Concerns that uncertain and unpredictable patent subject matter eligibility jurisprudence thwarts U.S. economic and technological advancements are especially acute in the fast advancing AI space. Stakeholders...more

Another Bite? CAFC Allows Expansion of Arguments in Reply

In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Fintiv Factor 3 Centers on Degree of Investment, Not Substantive Arguments

In a recent decision, the PTAB granted institution of an IPR despite multiple parallel district court proceedings involving the same patent, and flatly rejected the Patent Owner’s argument that the Petitioner’s “conflicting”...more

Section 285 Did Not Allow For IPR Fees

The Patent Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. In a recent denial of a motion for attorney fees pursuant to § 285, an Ohio...more

PTAB Will Not Hear AAPA-Basis Grounds

In a recent decision invalidating numerous claims of a patent related to cochlear implants for hearing loss, the PTAB found that Petitioner improperly relied on applicant admitted prior art (AAPA) as the “basis” for one...more

Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row

The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more

Update: Does § 315(e)(2) Say What It Means and Mean What It Says?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

Does § 315(e)(2) Mean What It Says and Says What It Means?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute

A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more

Is the Government a “Person” Who May Institute PTAB Trials?

The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more

Protecting Artificial Intelligence IP: Patents, Trade Secrets, or Copyrights?

The Situation: Artificial intelligence ("AI") technology is exploding across virtually all industries. Technology companies are innovating at warp speed, and even companies that do not principally identify as "technology...more

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