Author Info for McDonnell Boehnen Hulbert & Berghoff LLP

Larry Aaronson

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 16, Issue 2

Intelligent Machines - Engines of Intellectual Property Creation? - Recently, artificial intelligence (AI) has become an increasing part of our daily lives. Many of us utilize virtual assistants such as Apple’s Siri and… more

Copyright, Graphical User Interface, Intellectual Property Protection, Patents, Trade Secrets

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YuKai Bao

Why we think AI can be an inventor on a patent application

On April 18, 2023, we submitted a Supreme Court amicus brief expressing our encouragement for the justices to rule on the question of whether it is proper for an artificial intelligence (AI) to be an inventor on a patent… more

Artificial Intelligence, Computer-Related Inventions, Intellectual Property Protection, Inventions, Inventors

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Daniel Boehnen

United States v. Gilead Sciences, Inc.

Last month, the United States government, acting on behalf of its Department of Health and Human Services (HHS), filed suit in Delaware against Gilead Sciences, Inc. and Gilead Sciences Ireland UC for infringing four patents… more

Department of Health and Human Services (HHS), Gilead Sciences, Life Sciences, Patent Infringement, Patents

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Michael Borella Ph.D.

AI News Roundup – AI regulation moratorium pulled from U.S. Senate bill, Cloudflare to block AI web crawlers by default, Apple considers adopting third-party AI tools, and more

To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following… more

AI Act, Artificial Intelligence, Copyright, Copyright Infringement, Music Industry

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Joshua Bosman Ph.D.

The fungal revolution and IP — the next frontier

Healthier and more eco-friendly alternatives to animal-based products are becoming an increasingly popular choice with consumers. Demand is high for animal-free products that can provide a more sustainable protein substitute and… more

Food Manufacturers, Food Supply, Intellectual Property Protection, Startups, Trade Associations

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Brittany Butler

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 4

Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine - The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded… more

Fair Use, Marijuana, Patent Exhaustion, Patent Litigation, Patents

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S. Richard Carden

The IP Owner’s Guide to Brexit: Don’t Panic

By now, everyone has likely heard about the United Kingdom’s vote last week to leave the European Union. Few things are certain at this time, as governments around the world are still making plans to deal with Brexit. Further,… more

Community Designs, EU, European Patent Convention, European Patent Office, Intellectual Property Protection

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John Conour Ph.D.

Why Method of Treatment Patents for Repurposed Drugs Are Worth the Investment

Scientists, clinicians, and other investigators are discovering new uses for drugs previously known for different medical indications. Such “drug repurposing” (also called drug repositioning, profiling, or re-tasking) has great… more

Actavis Inc., Coronavirus/COVID-19, Eli Lilly, Intellectual Property Protection, Investment Opportunities

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Manav Das Ph.D.

The Preemption Doctrine: A Necessary Course Correction After Recentive v. Fox

The landscape of patent law for artificial intelligence (AI) and machine learning (ML) innovations has become fraught with uncertainty. The U.S. Court of Appeals for the Federal Circuit's precedential opinion in Recentive… more

Algorithms, Alice/Mayo, Appeals, Artificial Intelligence, CAFC

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James DeGiulio

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim… more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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Grantland Drutchas

Supreme Court Grants Certiorari on Appointment of PTAB Judges

Today, the Supreme Court granted petitions for a writ of certiorari to review the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc. Last Halloween, a Federal Circuit panel held in Arthrex that the way the U.S… more

Administrative Patent Judges, Appointments Clause, Certiorari, Patent Trial and Appeal Board, Patents

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Diego Freire

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 16, Issue 2

Intelligent Machines - Engines of Intellectual Property Creation? - Recently, artificial intelligence (AI) has become an increasing part of our daily lives. Many of us utilize virtual assistants such as Apple’s Siri and… more

Copyright, Graphical User Interface, Intellectual Property Protection, Patents, Trade Secrets

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Paula Fritsch

Coming Soon: New Claim Construction Standard for Many AIA Trial Proceedings

The U.S. Patent and Trademark Office (USPTO) announced today, Octoer 10, 2018, that it is issuing a final rule that will change the claim construction standard applied during many inter partes review (IPR), post-grant review… more

America Invents Act, Claim Construction, Covered Business Method Patents, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board

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Jori Fuller

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 2

USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways - On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of… more

Cannabidiol (CBD) oil, Controlled Substances Act, Copyright, Design Patent, Due Diligence

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Brandon Furdock

Navigating the Legal Landscape of AI-Generated Code: Ownership and Liability Challenges

Programming is rapidly transforming from a manual, line-by-line exercise into an iterative collaboration between programmers and their large language model (LLM) of choice. Working inside modern integrated development… more

Algorithms, Artificial Intelligence, Authorship, Copyright, Copyright Infringement

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Patrick Gattari

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim… more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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Daniel Gelwicks

Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued… more

Corporate Counsel, Fast Track Process, Intellectual Property Protection, Patent Litigation, Patent Prosecution

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Alexander Georges

Tariffs and IP: An Unintended Collision

Intellectual property (IP)—including patents, trademarks, copyrights, and trade secrets—remains a key driver of innovation and competitive advantage for American businesses. But in today’s global trade environment, especially… more

China, Counterfeiting, Enforcement, Intellectual Property Protection, Risk Management

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Aaron Gin Ph.D.

AI News Roundup – AI regulation moratorium pulled from U.S. Senate bill, Cloudflare to block AI web crawlers by default, Apple considers adopting third-party AI tools, and more

To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following… more

AI Act, Artificial Intelligence, Copyright, Copyright Infringement, Music Industry

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David Grosby

Patent Valuation – Damages Amounts Based on Patent Quality

Damages awarded in a patent infringement lawsuit are one of the most accurate metrics that can be used to value a patent. While other metrics, such as sale price, may be helpful in determining the value of a patent, damages… more

Damages, Patent Infringement, Patent Validity, Patents

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James Gumina

So You Won At The PTAB -- Can You Defend The Final Written Decision On Appeal?

Many people have come to believe that Inter Partes Review (IPR) proceedings in front of the Patent and Trademark Appeal Board (PTAB) are a good substitute for litigation. The reasons for this belief are not without basis. IPRs… more

America Invents Act, Appeals, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board

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Ashley Hatzenbihler

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1] This has resulted in the general understanding that there are "easy" examiners and "tough"… more

Intellectual Property Protection, Patent Applications, Patent Examinations, Patent Litigation, Patent Trial and Appeal Board

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Bryan Helwig Ph.D.

Life Sciences Court Report & COVID-19 Impact on District Court Filings

The COVID-19 pandemic has brought the world economy to a standstill and the U.S. legal industry has not been immune. Firms continue to implement cost-saving measures by reducing salaries, implementing furloughs, and in dire… more

Coronavirus/COVID-19, Court Closures, Court Schedules, Life Sciences, Patent Infringement

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Joseph Herndon

Epic Tech, LLC v. Fusion Skill, Inc. (S.D. Tex. 2021)

Electronic Gaming Patents Found Invalid under § 101 - In the U.S. District Court for the Southern District of Texas (Houston Division), Plaintiff Epic Tech, LLC (a seller of so-called "sweepstakes games") sued Defendants… more

Abstract Ideas, Computer-Related Inventions, Intellectual Property Protection, Patent Litigation, Patent-Eligible Subject Matter

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Gregory Huffman

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Implementing the New Micro Entity Status at the U.S. Patent Office

As part of new rules introduced by the Leahy-Smith America Invents Act (AIA), a new section that defines a “micro entity” was added to Title 35 of the United States Code. As a subset of small entity status, micro entity status… more

America Invents Act, Fees, Micro Entity Status, Patent Applications, Patent Reform

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Chad Kamler

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim… more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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Brandon Kennedy

The Status of Patent Laches after Petrella v. MGM

Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed… more

Copyright, Copyright Infringement, Laches, Lanham Act, Petrella v. MGM

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Luke Koenigsknecht

AI News Roundup – AI regulation moratorium pulled from U.S. Senate bill, Cloudflare to block AI web crawlers by default, Apple considers adopting third-party AI tools, and more

To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following… more

AI Act, Artificial Intelligence, Copyright, Copyright Infringement, Music Industry

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Michael Krasniansky

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 16, Issue 3

Avoiding Common IP Pitfalls: What Every Startup Needs to Know - Startup companies often face significant risk and liability with respect to Intellectual Property (IP) on their path to success. The failure to adequately… more

Artificial Intelligence, Design Patent, Intellectual Property Protection, Patents, Pharmaceutical Industry

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James Lovsin

Supreme Court Upholds PTAB and Clarifies USPTO Director Power Under 35 U.S.C. § 6(c)

In Arthrex v. Smith & Nephew, the Supreme Court determined: (i) whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the… more

Administrative Patent Judges, Appointments Clause, Arthrex Inc v Smith & Nephew Inc, Constitutional Challenges, International Trade Commission (ITC)

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Joshua Lustig

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 2

USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways - On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of… more

Cannabidiol (CBD) oil, Controlled Substances Act, Copyright, Design Patent, Due Diligence

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George Lyons, III

Heavy Uptick in Patent and Trademark Mass Mailers

Mass mailers have been around in the U.S. since at least 1835.i Most are innocuous. “10% off at your local pizzeria.” “Weekly specials on bananas and ground beef at your local grocery.” Rarely do they catch your attention or… more

Intellectual Property Protection, Patents, Trademark Cancellation, Trademarks

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Emily Miao Ph.D.

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 2

USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways - On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of… more

Cannabidiol (CBD) oil, Controlled Substances Act, Copyright, Design Patent, Due Diligence

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Eric Moran

Bette Midler, Generative AI and the Right of Publicity

In part one of this article, we discussed the challenges artists face as they seek to protect their intellectual property from generative AI using copyright law. In part two, we explore a legal approach that may be more… more

Artificial Intelligence, Copyright, Intellectual Property Protection, Jurisdiction, Machine Learning

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Kevin Noonan Ph.D.

Eye Therapies LLC v. Slayback Pharma, LLC (Fed. Cir. 2025)

Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure §… more

CAFC, Claim Construction, Inter Partes Review (IPR) Proceeding, Obviousness, Patent Litigation

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Adnan Obissi

Patent Valuation – Damages Amounts Based on Patent Quality

Damages awarded in a patent infringement lawsuit are one of the most accurate metrics that can be used to value a patent. While other metrics, such as sale price, may be helpful in determining the value of a patent, damages… more

Damages, Patent Infringement, Patent Validity, Patents

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Sherri Oslick Ph.D.

Court Report - September 2016

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Horizon Therapeutics, Inc. v. Lupin Ltd. et al. 1:16-cv-04438; filed July 21, 2016 in the District Court of New Jersey… more

Abbreviated New Drug Application (ANDA), Actavis Inc., Allergan Inc, AstraZeneca, Biotechnology

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Ann Palma

Amgen v. Sandoz – Did the Federal Circuit Just Doom the New Biosimilar Approval Pathway?

Congress passed the Biologics Price Competition and Innovation Act (“BPCIA”) in 2009 in an effort to bring biosimilar drug products to market. The goal was for the BPCIA to mimic for biologic drugs the Hatch-Waxman statute for… more

aBLA, Biologics, Biosimilars, BPCIA, Disclosure Requirements

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Anthoula Pomrening

SCOTUS: Supreme Court Holds Disparagement Clause of the Lanham Act Violates the Free Speech Clause of the First Amendment

On June 19, 2017, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First… more

Disparagement, First Amendment, Free Speech, Lanham Act, Matal v Tam

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Jordan Pringle

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 2

USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways - On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of… more

Cannabidiol (CBD) oil, Controlled Substances Act, Copyright, Design Patent, Due Diligence

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Nicole Reifman

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others… more

Advertising Substantiation, Corporate Social Responsibility, Costco, Federal Trade Commission (FTC), Green Guides

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Joshua Rich

Copywrong: Authors Miss the Mark(et Harm) when Arguing Meta Didn’t Engage in Fair Use

Weighing in just two days after Judge Alsup of the U.S. District Court for the Northern District of California issued his fair use summary judgment opinion in Bartz v. Anthropic, Judge Chhabria (also of the Northern District of… more

Algorithms, Artificial Intelligence, Authorship, Books, Copyright Infringement

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Kurt W. Rohde

MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Conducting Efficient Patent Litigation Discovery, Part 2

The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between inhouse and outside counsel… more

Discovery, Document Coding, Document Productions, Patents, Work-Product Doctrine

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Yuri Levin Schwartz Ph.D

Mapping the Rise in State-Level AI Regulation in the US: September 2024 Review

This year has witnessed a rapid increase in legislation seeking to study and regulate machine learning and artificial intelligence (AI) models. So far in 2024, Congress has doubled the number of proposed bills seeking to study… more

Artificial Intelligence, Corporate Counsel, Disclosure Requirements, Machine Learning, Popular

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Brett Scott

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 3

2019 Patent Trial and Appeal Board Key Practice Updates: A Year in Review - 2019 has been an active year for procedural changes in the Patent Trial and Appeal Board (“PTAB”). These changes include not only the PTAB’s issuance… more

Artificial Intelligence, Cannabis-Related Businesses (CRBs), Farm Bill, FOIA, Patent Ownership

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Lauren Segal Ph.D.

The fungal revolution and IP — the next frontier

Healthier and more eco-friendly alternatives to animal-based products are becoming an increasingly popular choice with consumers. Demand is high for animal-free products that can provide a more sustainable protein substitute and… more

Food Manufacturers, Food Supply, Intellectual Property Protection, Startups, Trade Associations

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Paul Tully

FDA Announces "Purple Book"

The new phone book is here? No, but close. The Food and Drug Administration ("FDA") announced on Friday that it has published its first listing of approved biologic drugs. The list will be supplemented with approved… more

Biologics, Food and Drug Administration (FDA), Patent Litigation, Patents, Pharmaceutical Patents

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Andrew Velzen

Senators Push for U.S. Leadership on Quantum

In 2018, Congress enacted the “National Quantum Initiative Act.” This act set out goals and priorities for the next 10 years, and more importantly, funding for the next five years to accelerate quantum technology in the United… more

China, Department of Energy (DOE), Innovative Technology, National Security, New Legislation

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Margot Wilson

USPTO and Federal Courts Update in Light of Coronavirus / COVID-19

Both the U.S. Patent and Trademark Office (“USPTO”) and Federal courts have issued alerts regarding their response to the COVID-19 pandemic, and the effect of the pandemic on their operations and procedures. In this Alert, we… more

Coronavirus/COVID-19, Court Closures, Court Schedules, Federal Court Litigation, Patent Litigation

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Cato Yang

Supreme Court Reverses Apple’s $400 Million Damage Award Against Samsung

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary… more

Apple, Apple v Samsung, Damages, Design Patent, Patent Infringement

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Donald Zuhn, Jr. Ph.D.

Five Years Ago Today . . .

On March 11, 2020, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," and cautioned that the WHO has "rung the alarm bell loud and clear." At the… more

Coronavirus/COVID-19, Food and Drug Administration (FDA), Healthcare, Intellectual Property Litigation, Intellectual Property Protection

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