| Previous revision |
| — | start [2026/06/08 05:33] (current) – len |
|---|
| | ~~NOTOC~~ |
| | ====== Patent News ====== |
| | |
| | |
| | ===== Supreme Court Narrows Inducement: Affirmative steps required (posted 06/08/26) ===== |
| | |
| | In //{{ :legal:infringement:inducement:hickma_24-889_s.ct.pdf |Hikma Pharmaceuticals USA, Inc. v. Amarin Pharama, Inc.}}//, the Supreme Court sharply limited when a generic drug manufacturer can be accused of inducing infringement after using a “skinny label” to carve out a patented method of use. The Court rejected the Federal Circuit’s more permissive approach, holding that it is not enough that doctors could read a generic manufacturer’s label, website, or press releases as encouraging a patented use. Instead, the patent owner must plausibly allege affirmative, active steps by the generic manufacturer to encourage infringement. |
| | |
| | For Hatch-Waxman practice, the decision gives generic manufacturers more breathing room when marketing an FDA-approved generic for non-patented uses, especially where their statements reflect legal compliance, FDA-required labeling sameness, ordinary “generic equivalent” language, or standard industry practice. At the same time, the Court did not say skinny-label inducement claims are impossible; it emphasized that inducement can be express or implicit, but it must be clear, affirmative, and directed toward encouraging the patented use. The practical effect is to make induced-infringement claims harder to plead at the motion-to-dismiss stage when they rest on omissions, vague marketing language, AB-rating references, or speculation about how physicians might interpret a generic’s communications. |
| | |
| | * [[lex>library/detail.aspx?g=963b8f94-609a-448d-90f5-08ad6ce71b32|Background and summary]] |
| | * See also: //Cox Communications v. Sony Music Entertainment//, 146 S. Ct. 959 (2026) |
| | |
| | ===== USPTO Guidance on subject matter eligibility declarations (SMEDs) (posted 02/09/26) ===== |
| | |
| | On December 4, 2025, the USPTO released a {{ :legal:eligible_subject_matter:start:smeds-applicants-practitioners.pdf |memo regarding best practices for submitting SMED declarations}} and a {{ :legal:eligible_subject_matter:start:smeds-corps.pdf |separate internal memo for Examiners regarding treatment of SMEDs}}. The memo clarifies key practices for practitioners navigating § 101 requirements. SMEDs are voluntary, claim-specific declarations under 37 C.F.R. § 1.132 and must present //objective facts demonstrating eligibility// (e.g., technical improvements in computational performance, data storage, or AI architecture) without introducing new disclosure. |
| | |
| | ++++ Read more | |
| | |
| | Practitioners are advised to submit SMEDs separately from other evidence to ensure focused review and avoid conflating issues. Examiners must evaluate SMEDs under a preponderance standard and explain outcomes in subsequent office actions. The guidance emphasizes aligning claims and specifications with tangible technical advancements, as highlighted in the precedential Desjardins decision, to establish eligibility for AI innovations. Practitioners should prioritize clear, evidence-based SMEDs supported by robust testing data and ensure specifications explicitly disclose improvements, as SMEDs cannot rectify inadequate disclosure. The memos reinforce a structured approach to demonstrating eligibility while underscoring the importance of consistent application of the preponderance standard and adherence to procedural clarity. |
| | |
| | ++++ |
| | |
| | * [[lex>library/detail.aspx?g=d038b036-e001-43b8-a1d3-df38843084cf|Summary]] |
| | * [[pd>2025/12/08/uspto-issues-memoranda-on-subject-matter-eligibility/|Summary and opinion]] |
| | * [[mofo>resources/insights/251209-uspto-puts-subject-matter-eligibility-declarations-in-the-spotlight|Summary and analysis]] |
| | |
| | |
| | ===== 2025 Precedential CAFC Rulings ===== |
| | |
| | ==== Categories ==== |
| | |
| | ++++ 101 Eligibility | |
| | |
| | {{page>precedential:2025:101_eligibility&nofooter&inline}} |
| | |
| | ++++ |
| | |
| | ++++ 102 Anticipation | |
| | {{page>precedential:2025:102_anticipation&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ 103 Obviousness | |
| | {{page>precedential:2025:103_obviousness&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ 102 Prior Art | |
| | {{page>precedential:2025:prior_art&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ 112 Enablement and Written Description | |
| | {{page>precedential:2025:112_enablement&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ 112 Indefiniteness | |
| | {{page>precedential:2025:112_indefiniteness&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ 112(f) - Means + Function | |
| | {{page>precedential:2025:112_means_function&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ Claim Construction | |
| | {{page>precedential:2025:claim_construction&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ Claim Construction - Intrinsic Evidence | |
| | {{page>precedential:2025:claim_construction_-_intrinsic_evidence&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ Claim Construction - Disclaimer | |
| | {{page>precedential:2025:claim_construction_-_disclaimer&nofooter&inline}} |
| | ++++ |
| | |
| | ++++ Claim Construction - Intrinsic Evidence | |
| | {{page>precedential:2025:claim_construction_-_intrinsic_evidence&nofooter&inline}} |
| | ++++ |
| | |
| | |
| | ===== IPR reality check (posted 11/25/25) ===== |
| | |
| | Kilpatrick recently [[kt>en/insights/perspectives/2025/11/5 key takeaways discretionary denials in iprs new framework navigating the evolving landscape strategies for survival|posted]] about a briefing recently made to industry leaders by attorneys Justin Krieger and Nicki Kennedy on how discretionary denials have surged under recent leadership. They noted that institution rates, once around 75%, have plummeted, with former Acting Director Stewart’s net rate dropping to roughly 32% and Director Squires recording **zero institutions out of 34 petitions to date**. |
| | |
| | The briefing highlighted: |
| | |
| | * **Increased scrutiny on the timing of filings**, especially for older patents or situations where a challenger is viewed as having long been aware of the invention. |
| | * **A new two-track briefing process** that separates discretionary issues from the merits while offering little transparency into how decisions are made. |
| | * **[[pto>subscription-center/2025/uspto-advances-proposed-rule-governing-inter-partes-review|Proposed rule changes]]** that would significantly limit petitioners’ strategic options and recent decisions signaling stricter requirements around disclosures and consistency across forums. |
| | |
| | Overall, they emphasized that the IPR system is experiencing its most significant shift in years, with petitioners facing unprecedented front-end hurdles and patent owners seeing dramatically higher survival rates. It is clear from the Kilpatrick post that the IPR framework is **no longer functioning as a neutral, predictable alternative to district court validity litigation**. Instead, it is operating as a discretionary, policy-driven filter that strongly favors patent owners and dramatically limits the circumstances in which petitioners can obtain PTAB review: |
| | |
| | * **An institution rate of 0/34 under the current Director is not subtle**; it suggests that policy priorities outweigh the traditional merits-based inquiry. |
| | * **Front-end procedural filters are now more influential than substantive prior-art arguments.** The emphasis on timing, “settled expectations,” knowledge of the patent, multi-step briefing, and disclosure requirements means the process determines outcomes before the PTAB ever considers obviousness or anticipation. |
| | * **Predictability and transparency have decreased.** Bulk denials without explanation and a process that masks which judges participate make it harder for practitioners to understand the standards being applied. |
| | * **The system appears designed to sharply curtail IPR usage.** Proposed rules, like **[[lex>library/detail.aspx?g=afc47439-4df0-481f-b992-1a46fbfc8c91|mandatory stipulations]]** preventing petitioners from raising any prior-art invalidity grounds elsewhere, indicate a deliberate policy shift to discourage or even deter IPR filings in parallel with district court litigation. |
| | * **Appeal rights are shrinking.** The Director can {{ :legal:procedural:ipr:discretionary_denials:revvo_ipr25-00632_qpdfd.pdf |vacate a Final Written Decision after the fact}}((Revvo Technologies, Inc. v Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20)), [[ipw>2016/10/28/section-314d-bars-appellate-review-decision-to-institute/|without judicial review]]. |
| | |
| | * [[kt>en/insights/perspectives/2025/11/5 key takeaways discretionary denials in iprs new framework navigating the evolving landscape strategies for survival|Read the full post]] |
| | * [[fin>en/insights/blogs/at-the-ptab-blog/revvo-v-cerebrum-sensor-in-precedential-decision-director-vacates-institution-because-petitioner-adopted-patent-owners-district-court-claim-constructions-without-sufficient-explanation.html|Director Squires sua sponte vacates institution decision]] |
| | |
| | ===== Federal Circuit construes Pre-AIA 102(a) and 102(e) "by another" in precedential ruling (posted 11/02/25) ===== |
| | |
| | In //{{ :legal:validity:prior_art:merck_25-1210.pdf |Merck Serono S.A. v. Hopewell Pharma Ventures, Inc.}}//(( (Fed. Cir. Oct. 30, 2025) )), The court affirmed the Board, holding that under pre-AIA 35 U.S.C. § 102(a) and (e), a reference counts as work “by another” unless the inventive entity is identical to that of the patent at issue. A disclosure made by only a subset of the named inventors—or by some inventors plus others not named on the later patent—remains prior art. |
| | |
| | ===== USPTO's Automated Search Pilot Program ===== |
| | |
| | On October 20, the USPTO launched a [[redreg>documents/2025/10/08/2025-19493/automated-search-pilot-program|pilot program]] enabling applicants early access to relevant prior art listed in an AI-generated pre-examination search report. Under the program, applicants filing new, noncontinuing utility applications may petition to receive an Automated Search Results Notice (ASRN)—a listing of up to ten potentially relevant prior-art references identified by a USPTO-developed AI system—before any examiner reviews the case. The automated search uses the application’s classification and content to identify similar documents across U.S. and foreign patent databases, ranking them by relevance. |
| | |
| | ===== The USPTO's Streamlined Claim Set Pilot Program is live (posted 11/02/25)===== |
| | |
| | On October 27, 2025, the USPTO [[fedreg>documents/2025/10/27/2025-19669/streamlined-claim-set-pilot-program|announced]] a new pilot program enabling applicants to obtain streamlined prosecution for new patent applications with a limited set of claims. |
| | |
| | === Participation requirements: === |
| | |
| | * **Confirm application eligibility:** |
| | * The application is an original, noncontinuing utility application. |
| | * The application was filed before October 27, 2025. |
| | * The application has not yet been assigned to an examiner. |
| | * The application was filed electronically in DOCX format. |
| | * The application will be published (file a rescission if a non-pub request was submitted). |
| | * No inventor on the application was named on more than three other pilot petitions |
| | * **Confirm claim-set compliance** (a preliminary amendment may be submitted simultaneously with the below petition to meet these requirements): |
| | * No more than 1 independent claim and 10 total claims, no multiply-dependent claims. |
| | * Each dependent claim refers to the a previous claim in the preamble and are in the same statutory class. The preamble requirement is strict; refer to the [[fedreg>documents/2025/10/27/2025-19669/streamlined-claim-set-pilot-program|Notice]] for details. |
| | * **Electronically file petition** (with non-refundable fee undder 37 C.F.R. § 1.17(h)) using form PTO/SB/472, including certification statements and agreement to maintain streamlined claim limits through pendency |
| | |
| | * [[lex>library/detail.aspx?g=f3278b30-98ba-4b35-8f8d-3942d4e1246f|Summary of program and discussion]] |
| | * [[fin>en/insights/ip-updates/another-new-uspto-program-the-uspto-streamlined-claim-set-pilot-program-a-possible-fast-track-to-issued-patents.html|Summary and comment]] |
| | |
| | |
| | |
| | ===== CAFC: Using mobile device to deposit checks is abstract (posted 11/02/25) ===== |
| | |
| | In //{{ :legal:eligible_subject_matter:start:pnc_bank_23-1639.pdf |United Services Automobile Association, v. PNC Bank}},// the Federal Circuit reversed the Eastern District of Texas’s summary-judgment ruling that [[gp>US10402638|U.S. Patent No. 10,402,638]] was patent-eligible under 35 U.S.C. § 101. The panel applied the //Alice// two-step framework and held that the asserted claim, directed to using a handheld mobile device to remote deposit a check, was drawn to the abstract idea of depositing a check and lacked any inventive concept that could transform that idea into patent-eligible subject matter. |
| | |
| | ++++ Click here to read more | |
| | |
| | In //Alice// step one, the court concluded that the claim merely automated conventional human and banking activities such as photographing, recognizing, and verifying check data, implemented through generic mobile-device functions. The specification’s discussion of optical character recognition and error checking did not supply a technological improvement because the claim failed to specify how those operations were performed. The court distinguished //Enfish// and //McRO//, emphasizing that the claim recited results, not the specific rules or algorithms that would make the process non-abstract. In //Alice// step 2, the court found no inventive concept in the ordered combination of elements. Use of routine components (mobile phones, OCR, and wireless networks) to carry out known data-capture and transmission functions was conventional and insufficient to confer eligibility. The court rejected arguments that factual disputes over conventionality precluded summary judgment, noting that OCR and mobile capture systems were well known in the art. |
| | |
| | Because all asserted patents in the consolidated appeals had been found unpatentable or ineligible, the panel dismissed the remaining cross-appeal on damages as moot and entered judgment reversing the district court and invalidating the ’638 patent under § 101. |
| | |
| | ++++ |
| | |
| | * [[lex>library/detail.aspx?g=fa335a21-1a84-4a99-82c5-2445d4d8a571|Summary]] |
| | * Oral Arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1639_11062024.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2024:united_services_automobile_association_v._pnc_bank_n.a._23-1639.txt|AICT]] (substantive arguments begin at 23:52) |
| | |
| | |
| | ===== Polarized - Proposed IPR Rule Analysis (posted 10/22/25) ===== |
| | |
| | The [[pto>subscription-center/2025/uspto-advances-proposed-rule-governing-inter-partes-review|USPTO's proposed IPR rulemaking]] has been very polarizing among patent experts. |
| | |
| | In one view, the proposed IPR rulemaking would substantially restrict access to post-grant review, prioritizing administrative efficiency and “quiet title” over patent quality and fairness to accused infringers. By converting prior, possibly flawed challenges into de facto final determinations of validity, the rules risk insulating questionable patents from further scrutiny, empowering non-practicing entities, and shifting the burden and cost of validity disputes back to district courts. While the goal of reducing duplicative proceedings is understandable, the proposal would foreclosing legitimate, later-arising challenges and undermine the corrective purpose that Congress intended the IPR system to serve. |
| | |
| | On the other side, patent rights advocates, such as IPWatchdog’s Gene Quinn, see the proposed rule as a long-overdue correction to what they view as an over-weaponized IPR system that eroded confidence in patent rights and encouraged serial “death-by-a-thousand-cuts” challenges. They argue the proposed rule restores the balance Congress intended by forcing challengers to pick a single forum and by strengthening the presumption of validity for patents that have already withstood scrutiny. |
| | |
| | * [[https://www.intellectualpropertylawblog.com/archives/usptos-proposed-one-and-done-ipr-rule-rethinking-finality-fairness-and-efficiency|Critical analysis [Sheppard Mullin] ]] ([[lex>library/detail.aspx?g=afc47439-4df0-481f-b992-1a46fbfc8c91|cross-post]]) |
| | * [[ipw>https://ipwatchdog.com/2025/10/16/uspto-issues-nprm-ipr-practice-withdraws-vidal-era-proposal/|Supportive analysis]] |
| | * [[lex>library/detail.aspx?g=f01915a9-562f-47aa-add2-198a8f6d53bd|Cautionary]] |
| | |
| | |
| | ===== ARP reverses PTAB panel on AI ineligibility (posted 10/02/25) ===== |
| | |
| | In //{{ :legal:eligible_subject_matter:ex_parte_desjardins_24-000567.pdf |Ex parte Desjardins}}// ((Appeal 2024-000567)), the USPTO’s Appeals Review Panel (ARP) reversed a PTAB panel’s new § 101 rejection of claims directed to methods for training machine learning models to avoid catastrophic forgetting. While the panel accepted that the claims recite some abstract mathematical concepts, it held that, viewed as a whole, they integrate those concepts into a “practical application” — specifically, improving how machine learning models are trained to sequentially learn multiple tasks while preserving prior knowledge, reducing storage requirements, and lowering system complexity. The ARP emphasized that innovations improving the functioning of the machine learning model itself can be patent-eligible under //Enfish// and related cases, and cautioned against categorically dismissing AI advancements as mere “algorithms.” |
| | |
| | <div indent> |
| | ++++ Click here to read more | |
| | |
| | **Stated the Panel:** |
| | * //Enfish// ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, //Enfish// recognized that '[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.' 822 F.3d at 1339. Moreover, because '[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,' the Federal Circuit held that the eligibility determination should turn on whether "the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Id. at 1336. |
| | * Paragraph 21 of the Specification, which the Appellant cites, identifies improvements in training the machine learning model itself. Of course, such an assertion in the Specification alone is insufficient to support a patent eligibility determination, absent a subsequent determination that the claim itself reflects the disclosed improvement. See MPEP § 2106.05(a) (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016)). Here, however, we are persuaded that the claims reflect such an improvement. For example, one improvement identified in the Specification is to 'effectively learn new tasks in succession whilst protecting knowledge about previous tasks.' Spec. ,r 21. The Specification also recites that the claimed improvement allows artificial intelligence (AI) systems to 'us[e] less of their storage capacity' and enables 'reduced system complexity.' Id. When evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the improvement: 'adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task.' We are persuaded that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation. |
| | |
| | ++++ |
| | </div> |
| | |
| | ~UPDATE~ On December 5, 2025, the USPTO issued a {{ :legal:eligible_subject_matter:memo-desjardins.pdf |memo}} outlining upcoming changes to the MPEP based on the //Desjardins// decision. |
| | |
| | |
| | * [[ipw>2025/10/20/squires-application-section-101-ex-parte-desjardins-bodes-well-ai-patents/|Analysis]] |
| | * [[slw>uspto-leadership-reins-in-ptab-on-ai-eligibility/|Summary and analysis]] |
| | * [[pto>sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf|Official USPTO link to decision]] |
| | |
| | |
| | ===== Federal Circuit implicitly rejected reasoning in Schulhauser (posted 09/05/25) ===== |
| | |
| | On March 10, 2025, the Federal Circuit, in //{{ :legal:construction:sierra_wireless_23-1059.pdf |Sierra Wireless v. Sisvel}}//,((Sierra Wireless v. Sisvel S.P.A., Appeals 2023-1059, -1085, -1089, -1125 (Fed. Cir. Mar. 10, 2025) )) clarified how claims with alternative conditions must be construed. The Board had treated alternative method claim limitations as mutually exclusive and therefore satisfied if the prior art disclosed either one. The Federal Circuit rejected that reasoning, holding instead that where a claim recites multiple steps in the conjunctive, **//a method must perform both steps when their respective conditions arise//**. The court emphasized that conditional or alternative outcomes do not relieve the claim of requiring each recited step; they operate together when their triggering conditions apply. **This opinion effectively supersedes the PTAB's precedential ruling in //Ex Parte Schulhauser//.** |
| | |
| | The opinion also reinforces procedural rigor at the PTAB: expert testimony on anticipation and obviousness must come from at least a person of ordinary skill in the art as defined by the Board. Because the Board credited testimony from a declarant who lacked the required qualifications without making a specific finding that his experience sufficed, the Federal Circuit vacated the decision for abuse of discretion. |
| | |
| | ++++ Click here for court holdings: | |
| | |
| | **On alternative conditions:** |
| | |
| | * “We reject the Board’s conclusion because the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations . . . where their preconditions apply.” |
| | * “The Board held limitations 1[c] and 1[d] are mutually exclusive. . . . On that basis, the Board held the prior art need only disclose . . . 1[c] or . . . 1[d] to anticipate claim 1. That conclusion does not follow from the premise.” |
| | |
| | **On expert testimony:** |
| | * “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” |
| | * “The Board abused its discretion by relying on Mr. Bates’ testimony where he does not satisfy the requirements for an ordinarily skilled artisan and the Board made no finding that his years of experience were sufficient to establish that he was at least an ordinarily skilled artisan.” |
| | |
| | ++++ |
| | |
| | * [[ptabw>2025/03/fed-cir-provides-insight-on-conditional-features/|Summary and analysis]] |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1059_11072024.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2024:sierra_wireless_ulc_v._sisvel_s.p.a._23-1059.txt|AICT]] |
| | |
| | ===== POPA Sues Trump (posted 09/03/25) ===== |
| | |
| | On September 2, 2025, the Patent Office Professional Association, representing nearly 9,000 patent examiners, along with the National Weather Service Employees Organization, sued the Trump administration for declaratory and injunctive relief in opposition to the President's August 28th executive order stripping the National Weather Service, the National Environmental Satellite, Data and Information Service, and the U.S. Patent and trademark Office employees of their collective bargaining rights under the Federal Service Labor Management Relations Statute. The {{ :pto:trump_admin:2025-09-02_popa_complaint.pdf |Complaint}} seeks to overturn multiple Executive Orders as unlawful and ultra vires, restore collective bargaining rights and agreements, and stop the administration from retaliating against them for exercising their First Amendment rights to petition and advocate on behalf of their members. |
| | |
| | * [[http://popa.org/blog/press-release-unions-sue-to-restore-contracts/|POPA's press release]] |
| | * [[ipw>2025/09/03/popa-complaint-alleges-trump-executive-order-retaliatory-reasoning-spurious/id=191857/|Summary and analysis]] |
| | |
| | ===== CAFC opines on derivations (posted 08/26/25) ===== |
| | |
| | In //{{ :legal:procedural:derivation:global_health_23-2009.pdf |Global Health Solutions LLC v. Selner}}//, the CAFC issued its first precedential opinion on derivation proceedings under the America Invents Act, clarifying their distinct role in the first-to-file regime. The court emphasized that AIA derivation is not a replay of pre-AIA interferences; rather, the inquiry centers on whether the first-filer’s conception was independent or derived from another. The panel also confirmed that an inventor may prove conception without actual reduction to practice, provided the invention is defined with sufficient clarity. |
| | |
| | ++++ Click here for holdings: | |
| | |
| | * “Judges must take care not to allow interference proceedings to be inadvertently revived through AIA derivation proceedings.” |
| | * “Accordingly, to meet its prima facie burden in an AIA derivation proceeding, the petitioner must produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to respondent’s filing of that patent application.” |
| | * “To prevail in [an AIA derivation proceeding], a first-to-file respondent need only prove that his conception was independent.” |
| | * “Actual reduction to practice was not required for complete conception of the Invention.” |
| | |
| | ++++ |
| | |
| | * [[ptabw>2025/08/federal-circuit-decides-first-derivation-appeal/|Analysis]] |
| | * Oral Argument: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2009_02052025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:global_health_solutions_llc_v._selner_23-2009.txt | AICT]] |
| | |
| | |
| | ===== CAFC holds that a mechanical apparatus is non-abstract, reversing district judge (posted 08/20/25) ===== |
| | |
| | In //{{ legal:eligible_subject_matter:start:powerblock_24-1177.pdf |PowerBlock Holdings, Inc. v. iFit Inc.}}//, the Federal Circuit reversed the district court’s dismissal of PowerBlock’s claims under § 101, holding that claims directed to selectorized dumbbells with motorized weight selection were not abstract ideas. The court emphasized that claim 1 recited a specific mechanical configuration—nested weight plates, a movable selector, and an electric motor physically coupled to move the selector—that constituted a “technological improvement” rather than a result-oriented abstraction. Unlike prior cases involving “do it on a computer” patents, the claims here were directed to a concrete machine with defined structural limitations. The court also rejected iFit’s argument that conventional dumbbell components should be ignored, clarifying that § 101 does not allow old elements to be read out of the eligibility inquiry. Because the claims as a whole recited a specific implementation of a mechanical improvement, they were patent-eligible at Alice step one. |
| | |
| | ++++ Court holdings | |
| | |
| | * **On specificity of mechanical inventions:** “In the context of this rather simple mechanical invention, we conclude that claim 1 goes beyond claiming the ‘broad concept’ of automating a known technique and provides a sufficiently ‘specific manner of performing’ automated weight stacking.” |
| | |
| | * **On considering all claim limitations:** “We decline iFit’s invitation to read out or ignore limitations in claim 1 here merely because they can be found in the prior art. Considering claim 1 in its entirety, we conclude that it is directed to a sufficiently specific mechanical invention that, as a whole, advantageously automates selectorized dumbbell weight stacking.” |
| | |
| | * **On distinguishing abstract automation from mechanical machines:** “Claim 1 is directed to an eligible mechanical invention—an improved ‘machine,’ i.e., ‘a concrete thing, consisting of parts, or of certain devices and combination of devices.’” |
| | |
| | ++++ |
| | |
| | * [[ipw>2025/08/12/federal-circuit-delivers-101-victory-patent-owner-dumbbell-patent-case/id=191085/|Summary]] |
| | * [[nlr>article/powerblock-holdings-inc-v-ifit-inc-rare-patent-eligibility-opinion|Summary and takeaways]] |
| | * [[lex>library/detail.aspx?g=9651fb18-2d77-49cc-a7e7-bcb55907ce0e|Summary]] |
| | * Oral Arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=24-1177_05072025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:powerblock_holdings_inc._v._ifit_inc._24-1177.txt|AICT]] |
| | |
| | |
| | ===== Deputy Comm. for Patents issues memo on AI eligibility (posted 08/13/25) ===== |
| | |
| | The Patent Office released an {{ :legal:eligible_subject_matter:start:memo-101-20250804.pdf |internal memo}} reminding examiners that "a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s)" and further "[c]laim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within [the mental process] grouping." With respect to Step 2A prong 2, the memo reminds examiners that "Step 2A Prong Two considers claims **//as a whole//**" (emphasis in original). |
| | |
| | * [[mofot>topics/uspto-internal-memo-suggests-that-patenting-ai-inventions-may-become-easier|Summary and analysis, takeaways]] |
| | * [[ipw>2025/09/02/patent-eligibility-rejections-new-uspto-memo/id=191789/|Decoding the memo]] |
| | * [[nlr>article/uspto-ss101-memo-key-signals-aisoftware-claims|Analysis]] |
| | |
| | ===== Precedential CAFC opinion specifies necessary evidence for 35 U.S.C. § 112(a) rejection (posted 08/11/25) ===== |
| | |
| | In //{{ :legal:validity:written_descr:mondis_23-2117.pdf |Mondis Technology Ltd. v. LG Electronics Inc.}}//, the Federal Circuit reversed a jury verdict upholding the validity of U.S. Patent No. 7,475,180, finding claims 14 and 15 invalid for lack of written description. The court emphasized that when the face of a patent shows the claimed limitation is unsupported—as confirmed by the patentee’s own expert—no reasonable jury could find otherwise, even without contrary expert testimony from the challenger. It also rejected arguments that the presumption of validity allows a patentee to rest without evidence in such a posture, and held that an examiner’s allowance of an amendment does not itself supply substantial evidence of § 112 compliance. The case serves as a caution that unsupported claim amendments and trial omissions can be fatal, regardless of jury findings. |
| | |
| | ++++ Court Holdings: | |
| | |
| | * “A patent also can be held invalid for failure to meet the written description requirement based solely on the face of the patent specification.” |
| | * “There is no evidence the examiner considered whether the specification contained written description support for this amendment. [. . .} This is not substantial evidence that the patent contains written description support.” |
| | * “Even if we assume the jury was free to disregard [the challenger’s] testimony, the only evidence . . . was the patent—which does not disclose the [limitation]—and [the patentee’s] own expert’s testimony that the patent does not disclose [it].” |
| | |
| | ++++ |
| | |
| | * [[ipw>2025/08/10/cafc-delivers-win-lg-reversal-14-million-award-validity-ruling-mondis/id=191038/|Summary]] |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2117_04072025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:mondis_technology_ltd._v._lg_electronics_inc._23-2117.txt|AICT]] |
| | ===== Festoed again: CAFC reverses jury verdict on prosecution history estoppel (posted 07/28/25) ===== |
| | |
| | In //{{ :legal:construction:doe:colibri_23-2153.pdf |Colibri Heart Valve LLC v. Medtronic Corevalve LLC}}//, the CAFC (echoing an earlier decision involving Medtronic, //Cross Medical//) reversed a jury verdict and the trial judge's holding that Colibri's reliance on the doctrine of equivalents was improper under the Supreme Court's //[[wp>Festo_Corp._v._Shoketsu_Kinzoku_Kogyo_Kabushiki_Co.|Festo]]// decision. During prosecution of the '294 patent, the applicant withdrew a claim a claim directed to retracting an outer sheath due to a § 112 written description rejection, even though the Examiner did not reject a similar claim directed to pushing out the valve from the outer sheath. Cancellation of the claim directed to retracting the sheath triggers //Festo//, and therefore barred Colibri from asserting DoE. |
| | |
| | * [[ipu>2025/07/valve-turned-prosecution-history-estoppel-applies-to-closely-related-claims|Summary]] ([[lex>library/detail.aspx?g=b70a9352-7d0d-4144-ab8f-199917b4f948|cross-post]]) |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2153_05052025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:colibri_heart_valve_llc_v._medtronic_corevalve_llc_23-2153.txt|AICT]] |
| | |
| | ===== Fed. Cir. PTAB on prior art enablement (posted 07/20/25) ===== |
| | |
| | In //{{ legal:validity:prior_art:agilent_23-2186.pdf |Agilent Tech. v. Synthego Corp.}}// the Federal Circuit, in a precedential opinion, upheld an IPR ruling that a contested prior art reference was enabling, and therefore valid prior art. |
| | |
| | Stated the court (internal citations omitted): |
| | |
| | <div indent> |
| | * A finding of anticipation “does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. |
| | * Proof of efficacy is not required in order for a reference to be neabled for the purpose of anticipation. |
| | * Enablement of prior art requires that the reference teach a skilled artisan—at the time of filing—to make or carry out what it discloses in relation to the claimed invention without undue experimentation. |
| | * For a prior-art reference to be enabling, it need not enable the [challenged] claim in its entirety, but instead the reference need only enable a single embodiment of the claim. |
| | * Prior art disclosures are presumed enabling. (reaffirming that an anticipating prior art patent is presumptively enabled) |
| | |
| | </div> |
| | |
| | * [[wc>insight-alert/federal-circuit-reinforces-standard-prior-art-enablement-crispr-dispute|Summary with takeaways]] ("Prior art enablement arguments have rarely succeeded . . ."). |
| | * [[ipu>2025/06/crispr-clarity-enablement-is-analyzed-differently-under-§§-102-and-112//|Summary and practice note]]. |
| | * [[pd>2025/06/agilent-technologies-inc-v-synthego-corp-fed-cir-2025.html|Detailed summary]] |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2186_03072025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:agilent_technologies_inc._v._synthego_corp._23-2186.txt|AICT]] |
| | |
| | |
| | ===== Director declines to discretionarily deny based on petitioners "settled expectations" (posted 07/20/25) ===== |
| | |
| | In //{{ :legal:post-grant:posco_ipr2025-00370.pdf |POSCO Co. Ltd., v Arcelormittal}}//, the Acting Director noted that "[t]he fact that the Board previously determined related claims to be unpatentable—prior to the issuance of the cchallenged cliams in this proceeding—tips the balance against discretionary denial." |
| | |
| | * [[fin>en/insights/blogs/at-the-ptab-blog/in-posco-petitioner-prevails-due-to-prior-parental-patent-proceeding.html|Summary and analysis]] ([[lex>library/detail.aspx?g=0baee655-1f67-4650-b173-3c96f8babe97|cross-post)]] |
| | |
| | ===== Fed. Cir. reverses PTAB on basis of prosecution history estoppel (posted 07/10/25) ===== |
| | |
| | In //{{ :legal:construction:eye_therapies_23-2173.pdf |Eye Therapies, LLC v. Slayback Pharma, LLC, the Fec. Cir.}}//, in a precedential opinion, reversed the PTAB's construction of "consisting essentially of," on the basis of prosecution history estoppel in which the applicant had argued the phrase excludes a combination with an unclaimed eomponent. |
| | |
| | ++++ Read more: | |
| | |
| | Stated the court: |
| | |
| | <div indent> |
| | |
| | >"[T]he transitional phrase 'consisting essentially of' generally has long been understood to permit inclusion of components not listed in teh claim, provided they do not materially affect the basic and novel properties of the invention. However, a patentee can alter the that typical meaning; for example, the patentee can make the intended meaning clear in teh specification or disclaim an alternative meaning in the prosecution history. [. . .] We agree with Eye Therapies that the prosecution history informs an atypical meaning of 'consisting essentially of.'" |
| | |
| | </div> |
| | ++++ |
| | |
| | |
| | * [[ipw>2025/07/01/cafc-says-prosecution-history-shows-board-erred-construction-eye-treatment-patent-claim-term/id=189941/|Analysis]] |
| | * [[lex>library/detail.aspx?g=ae55d3c4-0c24-4235-862c-e1358e1c5e0e|Summary]] |
| | * [[schwabe>https://www.schwabe.com/publication/latest-federal-court-cases-eye-therapies-llc-v-slayback-pharma-llc/|Summary]] |
| | * [[mofol>topics/is-your-claim-open-or-closed-claim-construction-takes-on-a-new-meaning-in-eye-therapies-llc-v-slayback-pharma-llc#page=1|Summary and takeaways]] |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2173_05072025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:eye_therapies_llc_v._slayback_pharma_llc_23-2173.txt|AICT]] |
| | |
| | |
| | |
| | ===== Fed. Cir.: Specification must support Jepson preamble (posted 07/09/25) ===== |
| | |
| | In //{{ :legal:patentability:possession:xencor_24-1870.pdf |In re: Xencor, Inc.}}//, the Fed. Cir., in a precedential opinion, upheld the Appeals Review Panel's ruling that § 112 requires that the specification provide support for the admitted prior art preamble to a Jepson claim as well as the novel subject matter recited after the transitional phrase (e.g., "wherein the improvement comprises"). |
| | |
| | * [[ipw>2025/03/13/cafc-prior-art-written-support-jepson-claim/id=187244/|Analysis]] |
| | * [[mofol>topics/a-tip-for-improving-your-improved-jepson-claim-include-written-description-support#_ftn1|Summary]] ([[lex>https://www.lexology.com/library/detail.aspx?g=cbd5464e-2245-4375-8740-860bdb1a57e8|cross-post]]) |
| | * Oral Arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=24-1870_12042024.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2024:in_re_xencor_inc._24-1870.txt|AICT]] |
| | |
| | ===== Fed. Cir., en banc, reverses itself and district court; excludes expert testimony (posted 06/02/25) ===== |
| | |
| | In //{{ :legal:procedural:ecofactor_en_banc_23-1101.pdf |Ecofactor, Inc. v. Google LLC.}}//, J. Moore, writing for a majority of the en banc court, found that the expert witness testimony of David Kennedy to be unreliable and therefore inadmissible. Stated the court: |
| | |
| | <div indent> |
| | >The "whereas" recital of each license provides no indication that the licensees agreed to pay the $X rate or shared EcoFactor's belief that $X constituted a reasonable royalty. The licenses therefore do not, individually or in combination, provide support for Mr. Kennedy's testimony that the licensees agreed to pay the $X rate or that the licensees agreed that $X was a reasonable royalty. This analysis does not usurp the province of the jury, nor does it involve this court deciding disputes of fact. It involves the gatekeeping function of the court to ensure that there are sufficient facts or data for Mr. Kennedy's testimony that the licensees agreed to the $X royalty rate." |
| | </div> |
| | |
| | Judges Reyna and Stark dissented in part, arguing: |
| | |
| | <div indent> |
| | >The en banc court's sudden shift deprives EcoFactor of notice and opportunity to be heard, and avoids what this appeal is really about, i.e., the extent to which district courts have discretion to decide fact-based questions of admissibility under Rule 702 and //Daubert//. And after only finding fault with a narrow point of Mr. Kennedy's testimony on contract interpretation grounds, the en banc court appears to inexplicably rule that Mr. Kennedy's entire testimony should have been excluded." |
| | </div> |
| | |
| | This criticism is answered in footnote 6 of the majority opinion, which sates, "The three licenses Mr. Kennedy interpreted are in fact contracts. The question presented focused on whether Mr. Kennedy's expert opinion about the interpretation of the licenses satisfies rule 702 and //Daubert//. Interpretation of the licenses is fairly included within the question presented." |
| | |
| | ++++ Read more | |
| | |
| | **Oral arguments: Deriving a royalty rate from a lump sum payment amount** |
| | |
| | <div right 300px> |
| | **Oral Arguments:** {{ :legal:damages:ecofactor_23-1101_en_banc_oral_args.txt |AI transcription}} |
| | {{ :legal:damages:ecofactor_23-1101_en_banc_oral_arg.mp3 |}} |
| | </div> |
| | |
| | |
| | The Federal Circuit, //en banc//, held oral arguments in //Ecofactor v. Google LLC//. The case hinges on whether Ecofactor's damages expert, David Kennedy, relied on sufficient facts to support his conclusion of an "$X" "reasonable royalty rate," based on lump-sum payment amounts cited in prior license deals. The prior license deals, in recitals, specified that the lump sum is based on a royalty rate, while in the body of the licenses, which relate to terms to which both parties agreed, states the opposite -- i.e., that the lump sum is not related to a reasonable royalty rate. |
| | |
| | In her arguments, Google's attorney summed it as follows: the approach challenged here allows experts to transform unilateral assertions in the recitals (which the licensee has little incentive to challenge) into authoritative expert testimony that the licensee actually agreed to a particular rate and that this "undermines the jury's ability to reach a fair apportionment verdicts." |
| | |
| | |
| | **Procedural History** |
| | |
| | * At trial, Google raised a //Daubert// {{ :legal:damages:ecofactor_wdtex_6-20-cv-0075-ada_google_daubert.pdf |motion to exclude}} from trial Ecofactor's expert witness, David Kennedy. The jury returned a verdict resulting in a $20M verdict for Ecofactor. Google raised the issue again post-verdict in a motion for a new trial on damages, which was denied from the bench without explanation by Judge Albright. |
| | * On Appeal, the Federal Circuit {{ :legal:damages:ecofactor_23-1101_panel_.pdf |panel majority's opinion}} held that the trial judge did not abuse his discretion in denying Google's Rule 59 motion for a new trial on damages because "Mr. Kennedy's opinion concerning the $X royalty rate was sufficiently reliable for admissibility purposes." Judge Prost dissented, stating: <div> |
| | <div indent> |
| | > On this record, it’s impossible to establish that these lump-sum payments were calculated using any royalty rate, let alone the specific $X rate. The self-serving recitals reflect only EcoFactor’s transparent attempt to manufacture a royalty rate using its “belief.” |
| | </div></div> |
| | |
| | ++++ |
| | |
| | **Blogs:** |
| | |
| | * [[fc>2025/06/02/opinion-summary-ecofactor-inc-v-google-llc/|Summary of en banc and dissenting opinions]] |
| | * [[lex>library/detail.aspx?g=6420f0ff-fc22-475f-ad73-fcfc5beddce7|Nice summary]] |
| | * [[jds>legalnews/federal-circuit-issues-rare-en-banc-6354717/|Summary and takeaway]] |
| | * [[fcb>2025/03/25/argument-recap-ecofactor-inc-v-google-llc/|Summary of arguments]] |
| | * Oral arguments: [[https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1101_03132025.mp3|{{cafc.svg?40}}]] [[aict>_media/fc:2025:ecofactor_inc._v._google_llc_23-1101.txt|AICT]] |
| | |
| | |
| | |
| | |
| | |
| | |
| | ===== USPTO "Turmoil" (posted 05/23/25) ===== |
| | |
| | An increasing volume among patent professionals and USPTO watchers are sounding the alarm that the dismantling of the U.S. government has reached the Patent Office, with big changes occurring now and potentially bigger changes in the near future: |
| | |
| | * Hiring freezes |
| | * Backlog increases |
| | * Low morale among examiners |
| | * Leadership exodus |
| | |
| | President Trump's pick to become the next Director of the USPTO, John Squires, wants to improve efficiency and produce "born strong" patents. At his Senate confirmation hearing on May 21, 2025, Squires stated: |
| | |
| | <div indent> |
| | > <div> |
| | * That nearly 7 in 10 patents are defective. (A USPTO spokesperson told IP Watchdog that they were not sure where the number comes from.) |
| | * That troll practices are exploitative of inventors. |
| | * That PTAB is in need of reform. |
| | |
| | </div> |
| | |
| | </div> |
| | |
| | |
| | * [[ipw>2025/01/23/trump-hiring-freeze-leaves-uspto-backlog-attack-plan-limbo/id=185341/|Discussion of hiring freeze and likely impact on backlogs]] |
| | * [[lex>library/detail.aspx?g=03890e21-2626-4e04-8eb2-d548d62721fc|Summary of changes, practice tips]] |
| | * [[ipw>https://ipwatchdog.com/2025/05/21/squires-calls-born-strong-patents-light-usptos-dire-defective-patent-rate/id=189070/|Review of Squires' Senate Hearing]] |
| | * [[https://www.gerbenlaw.com/blog/doge-threatens-the-stability-of-the-u-s-trademark-system/|DOGE threatens . . . U.S. Trademark System]] |
| | * [[ipw>2025/02/09/raders-ruminations-thoughts-impact-doge-uspto/id=185790/|Thoughts on DOGE by Randall Rader ("a real way forward")]] |
| | * [[fr>insights/thought-leadership/blogs/trump-nominates-john-squires-as-uspto-director-here-is-what-to-watch/|Bio of John Squires]] |
| | |
| | ===== USPTO institutes widespread 5% fee increases, other fee adjustments, and new fees (posted 04/29/25) ===== |
| | |
| | The USPTO implemented significant new and increased fees. Widespread fee increases of 5% or around 5% are included plus targeted fee adjustments in excess thereof. |
| | |
| | * [[pto>about-us/performance-and-planning/fee-setting-and-adjusting?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=|Fee Setting and Adjusting portal]] |
| | * [[fedreg>documents/2024/11/20/2024-26821/setting-and-adjusting-patent-fees-during-fiscal-year-2025|Final Rule]] |
| | ===== Fed. Cir. issues precedential opinion finding AI training to be abstract (posted 05/06/25) ===== |
| | |
| | In //{{ legal:eligible_subject_matter:start:recentive_23-2437.pdf |Recentive Analytics, Inc. v. Fox Corp.}}// the Federal Circuit held that claims that do no more than apply established methods of machine learning to a new data environment are not patent eligible. |
| | |
| | ++++ Read more | |
| | |
| | Recentive argued in its briefs that its application of machine learning is not generic because "Recentive worked out how to make the algorithms function dynamically. . . ." But the court held: |
| | |
| | <div indent> |
| | >Even if Recentive had not conceded the lack of a technological improvement, neither the claims nor the specifications describe how such an improvement was accomplished. That is, the claims do not delineate steps through which the machine learning technology achieves an improvement." |
| | </div> |
| | |
| | Patent Docs (linked below) notes that the Court hints that more detail in the claim and the specification regarding the technical improvement, such as the training process, could avoid a finding of ineligibility. |
| | |
| | ++++ |
| | |
| | * [[pd>2025/04/recentive-analytics-inc-v-fox-corp-fed-cir-2025.html|Analysis and discussion]] |
| | * [[lex>library/detail.aspx?g=cccdee21-3b1e-4ca4-93ad-599143cc857c|Summary]] |
| | * [[aict>_media/fc:2025:recentive_analytics_inc._v._fox_corp._23-2437.txt|Oral arguments]] |
| | |
| | |
| | |
| | |
| | ===== USPTO Announces acceleration of publication processing (posted 04/26/25) ===== |
| | |
| | The USPTO [[pto>about-us/news-updates/uspto-modernization-efforts-successfully-expedite-patent-issuance|announced]] that, effective May 13, 2025, patents will grant in two weeks from the date of Issue Notification, down from a current processing time of an average of about three weeks. |
| | |
| | |
| | |
| | ===== Priority date of prior art reference limited by support in the priority document (posted 04/04/25) ===== |
| | |
| | In //{{ legal:validity:prior_art:riggs_22-1945.pdf |In re Riggs}}//, the Federal Circuit vacated PTAB's assertion that a previously filed patent application qualifies as prior art based on the earlier filing of a provisional application. Stated the court: "to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application." |
| | |
| | * [[aos>Requirements-For-A-Prior-Art-Reference-Entitlement-to-filing-date#page=1|Summary]] ([[lex>library/detail.aspx?g=3af12795-f149-4c0c-acb3-3a4dfb3b4b12|cross-post]] ) |
| | * [[mofot>topics/federal-circuit-clarifies-requirements-for-prior-art-under-pre-aia-35-u-s-c-102-e-|Summary and analysis]] ([[lex>library/detail.aspx?g=6d116913-dd68-4956-83f0-7cbed701777c|cross-post]]) |
| | |
| | |
| | |
| | ===== Discretionary denials since rescission of Vidal's memorandum (posted 03/27/25) ===== |
| | |
| | Kyle W. Kellar of Womble Bond Dickinson [[wbd>us/insights/alerts/usptos-rescission-its-discretionary-denial-memorandum-much-ado-about-nothing|surveyed]] recent PTAB decisions post the [[pto>about-us/news-updates/uspto-rescinds-memorandum-addressing-discretionary-denial-procedures|rescission]] of Vidal's "Interim Guidelines" memorandum by the PTO regarding discretionary denials of IPR petitions. "In short, recission of the Interim Guidelines has had no impact, yet" according to Kellar. |
| | |
| | ++++ Read more | |
| | |
| | Of the four discretionary denial decisions since the Interim Guidelines memo was rescinded, Kellar found the following results: |
| | |
| | {| class="inline" |
| | ! Name !! Result !! Rationale |
| | |- |
| | | //Savant Technologies LLC v. Feit Electric Co., Inc.// |
| | | {{ :legal:procedural:ipr:discretionary_denials:ipr2024-01357_post_cjp_final.pdf |IPR instituted}} |
| | | No trial date set, median time-to-trial statistics suggested a trial would likely occur well after a final written decision would issue. |
| | |- |
| | | //Mobileye Global, Inc. v. Facet Technology Corp.// || {{ :legal:procedural:ipr:discretionary_denials:ipr2024-01110_di.pdf |IPR instituted}} |
| | | Fintiv factors considered without mention of Interim Guidelines |
| | |- |
| | | //Adobe Inc. v. Jaffe// || {{ :legal:procedural:ipr:discretionary_denials:ipr2024-01352_di_circ.pdf |IPR instituted}} |
| | | No trial date set |
| | |- |
| | | //Toyota Motor Corp. v. Emerging Automotive LLC// || {{ :legal:procedural:ipr:discretionary_denials:ipr2024-00785_ddi.pdf |IPR denied}} |
| | | Petitioner failed to establish a reasonable likelihood that it would prevail. |
| | |} |
| | |
| | Kellar notes that the board "at least facially considered median time-to-trial statistics provided by the parties." |
| | |
| | ++++ |
| | **Blogs:** |
| | |
| | * [[wbd>us/insights/alerts/usptos-rescission-its-discretionary-denial-memorandum-much-ado-about-nothing|Survey]] ([[lex>library/detail.aspx?g=d560ccf4-c281-4961-95d7-297f27df67fa|Cross-post]]) |
| | |
| | |
| | |
| | ===== 9th Circuit: Minimum royalty "until the expiry of the last licensed patent" not a Brulotte violation (posted 03/15/25) ===== |
| | |
| | In //{{ :legal:licensing:c._r._bard_23-16020_9th_cir._.pdf |C. R. Bard Inc. v. Atrium Medical Corp.}}//,(( Case No. 23-16020 (9th Cir. Aug. 23, 2024) )) the 9th Circuit found that a provision of a patent license, which requires a $3.75M minimum royalty payment until expiry of the last licensed patent, was not a violation of the //Brulotte// Rule. The //Brulotte// rule originates in the Supreme Court ruling //Brulotte v. Thys Co.//, 379 U.S. 29 (1964), and held that patent holders may not contract for royalties on any use of a patented invention that occurs after the patent has expired. |
| | |
| | ++++ Read more | |
| | |
| | Here, the 9th Circuit determined that the license agreement terms did not violate because the minimum royalty, which was the provision in dispute, was effectively creating a minimum royalty payment for the period that at least one of the U.S. and Canadian patents were in force. The Court explained that the Brulotte rule only concerns royalties for post-expiration use of a U.S. patent--it does not prohibit royalties that are for 'something other than the use of hte expired U.S. patent" which, in this case, is the still-unexpired Canadian patent. |
| | |
| | ++++ |
| | |
| | * [[lex>https://www.lexology.com/library/detail.aspx?g=c2c54fd7-ac41-41cf-b854-6fafffad2778|Summary and implications]] |
| | |
| | |
| | |
| | |
| | |
| | |
| | ===== Düsseldorf Local Division of UPC asserts jurisdiction over (non-EU) UK (posted 02/17/25) ===== |
| | |
| | In //{{ :legal:foreign:fujifilm_corp._26-30_upc-duesseldorf.pdf |Fujifilm Corp. v. Kodak GmbH}}//, before the Düsseldorf Local Division of the UPC, the court held that it has jurisdiction to render infringement and enforcement decisions implicating the UK, which is not a UPC or EU member state, because: |
| | |
| | * "Pursuant to Art. 4(1) Brussels Ibis Regulation, persons domiciled in a Member State [as Kodak is], whatever their nationality, shall be sued in the courts of that Member State. All the Defendants are domiciled in Germany." |
| | * "[I]n relation to claims against defendants domiciled in a Member State, all the bases for jurisdiction contained in Brussels Ibis Regulation also apply to the UPC and the same is true for the applicable case law of the ECJ. [. . .] Under the Brussels Ibis Regulation, the transferring Contracting Member State does indeed have jurisdiction over third state patent infringement actions in accordance with the case law of the ECJ. . . . The jurisdiction of the UPC is therefore not more limited than that of a national patent infringement court, as not all EU Member States have become Members of the UPCA." |
| | |
| | * [[dyc>en/knowledgebank/articles/upc-long-arm-jurisdiction-fujifilm-kodak|Summary and strategic considerations]] ([[lex>library/detail.aspx?g=c6e851e3-e294-4425-b9f7-9d039e1d3a93|Cross-post]]) (**//“[T]his decision provides an opportunity to bring all infringement claims before a single court and obtain a comprehensive relief in a single forum, whether or not the claims in question relate to UPC or non-UPC contracting member states.”//**) |
| | |
| | |
| | |
| | |
| | ===== For written description, "the invention is . . . whatever is now claimed." (02/14/25) ===== |
| | |
| | In //{{ legal:validity:written_descr:novartis_23-2218.pdf |Novartis Pharma. v. Torrent Pharma}}//, the Fed. Cir. reversed the District of Delaware court's finding that the patent at issue failed to meet the written description requirement because it fails to describe the accused product which, while within the scope of the claims, includes improvements not mentioned in the patent. The court reasoned that, "A specification adequately describes an invention when it reasonably conveys . . . that the inventor had possession of the claimed subject matter as of the filing date." The Fed. Cir. also uphold the lower court's finding that the claims were enabled because "enablement is judged as of the priority date." |
| | |
| | * [[akin>en/insights/blogs/ip-newsflash/federal-circuit-written-description-and-enablement-depend-on-what-a-patent-claims-not-what-the-claims-cover|Summary and practice tips]] ([[lex>library/detail.aspx?g=8ff96ded-5b31-4a77-b169-b882c1d73472|Cross-post]]) 8-) |
| | |
| | ===== "Shall be the property of" is not a present assignment of a future interest (posted 02/05/25) ===== |
| | |
| | In //{{ :legal:assignment:omni_medsci_20-1715.pdf |Omni Medsci, Inc. v. Apple Inc.}}// (Aug. 2, 2021), the Federal Circuit held that an employment agreement stating "Patents . . . acquired as a result of or in connection with . . . research, or other educational activities conducted by members of the University staff . . . shall be the property of the University." The majority opinion (with J. Newman dissenting) concluded that the language "is most naturally read as a statement of intended disposition and promise of a potential future assignment, not as a present automatic transfer. |
| | |
| | ++++ Read more | |
| | |
| | In J. Newman's dissent, she finds: |
| | |
| | <div indent> |
| | >This ruling is not correct as a matter of contract interpretation, and overturns decades of unchallenged understanding and implementation of the University's employment agreement and policy documents. Omni does not own these patents and does not have standing to sue for infringement. |
| | </div> |
| | |
| | J. Newman notes that "the plain meaning of 'shall be the property of the University' is that the inventions made during employment and patents thereon **shall belong** to the University. [. . .] According to my colleagues, this fatal flaw . . . could have been avoided simply by using the present tense 'is the property of the University' instead of the future tense 'shall be the property of the University.' However, these documents necessarily apply only to future inventions, for which the future tense is appropriate." |
| | |
| | ++++ |
| | |
| | * [[ap>en/perspectives/advisories/2021/08/ruling-underscores-importance-of-patent-right|Summary and analysis]] |
| | |
| | ===== D. Ariz.: Failure to mark abolishes past damages (posted 01/21/25) ===== |
| | |
| | <div box round right 360px> |
| | **35 U.S.C. § 287(a):** "[. . .] In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice." |
| | </div> |
| | |
| | In //{{ :legal:marking:lighting_defense_d-ariz_1_2-22-cv-01476.pdf |Lighting Defense Group LLC v. Shanghai Sensi Electronic Engineering Co. Ltd. et al.}}// ((2-22-cv-01476 (D. Ariz. Nov. 27, 2024), modified by {{ :legal:marking:lighting_defense_d-ariz_2_2-22-cv-01476.pdf |this order on motion for limited reconsideration}} )), the failure of a licensed third party to mark products as patented triggered 35 U.S.C. § 287. LDG licensed its patent in May of 2020 and argued that opposing party SANSI was liable for infringement prior to that date, i.e., prior any legal requirement to mark. Based on the plain meaning of the statute, the court disagreed. |
| | |
| | ++++ Read more | |
| | |
| | Stated the court: |
| | |
| | <div indent> |
| | >Generally, a patentee who never makes or sells a patented article does not trigger § 287's requirements. However, the federal Circuit has expounded, '[. . .] If, however, a patentee makes or sells a patented article and fails to mark in accordance with § 287, the patentee cannot collect damages until it either begins providing notice or sues the alleged infringer . . . and then only for the period after notification or suit has occurred.' SANSI asks the Court to join its sister court in holding that failure to comply with the marking requirements after attachment cuts off all pre-notice damages, not just those arising after, as consistent with //Arctic Cat II//. LDG asks the Court to reject those cases and follow //Arendi's//, where the Delaware district court concluded //Arctic Cat II// does not preclude recovery of damages for periods before the marking obligation attached. |
| | > [. . .] |
| | > Under a plain reading, § 287(a) precludes recovery after the requirement to mark is triggered until actual notice is given, after which that date then controls the starting date for recovery. Although this is a harsh result, the plain language controls. |
| | </div> |
| | |
| | ++++ |
| | |
| | * [[lex>library/detail.aspx?g=17b8fbf0-1f08-413c-8da8-0802a6b71697|Summary]] |
| | |
| | |
| | |
| | ====== More . . . ===== |
| | |
| | <color #ed1c24>**Additional blurbs are accessible in categorized lists by accessing the [[legal:start|Index]] link on the left (or, for small-format screens, below).**</color> |
| | |
| | |
| |
