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Alston & Bird

Intellectual Property Litigation Newsletter | April 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that written description is required for a preamble, labor or...more

McDermott Will & Emery

Even Jepson Preambles Require Written Description Support

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The US Court of Appeals for the Federal Circuit found a Jepson claim unpatentable where the specification did not provide adequate written description for the portion of the claim purporting to recite what was already well...more

McDermott Will & Emery

Inventor’s Motivation to Combine Does Not Control Obviousness

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The US Court of Appeals for the Federal Circuit affirmed a district court decision rejecting claims of a patent application directed to a dosing regimen for a cancer treatment, finding the claims to be obvious where the...more

Vorys, Sater, Seymour and Pease LLP

The Precendent: U.S. Court of Appeals for the Federal Circuit Reaffirms Standard of Proof for Correcting Inventorship in BearBox...

In this edition of The Precedent, we outline the recent federal circuit decision in BearBox LLC v. Lancium LLC. The United States Court of Appeals for the Federal Circuit recently affirmed that parties seeking correction of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #3

Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Addresses Inventorship and Conversion Claim from Industry Summit

On January 13, in BearBox LLC v. Lancium LLC, the Federal Circuit addressed issues related to inventorship and state law conversion claims that stemmed from exchanges between two individuals, Mr. Storms and Mr. McNamara, at...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

AI IP Year in Review - Patent Law and Generative AI 101

While Artificial Intelligence (AI) solutions, such as predictive AI, have been around for decades, generative AI systems are recent innovations with far reaching implications for patent law. Generative AI, such as ChatGPT,...more

Knobbe Martens

No Patent-Like Claims Under State Law

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Before Chen, Bryson, and Stoll. Appeal from United States District Court for the District of Delaware. Summary: Federal patent laws preempted a state-law conversion claim. Inventorship was properly evaluated using a...more

McDermott Will & Emery

Bit Swap: Motivation to Modify Prior Art Needn’t Be Inventor’s Motivation

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Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board decision, finding that the challenged patent claims were obvious because a person of ordinary skill...more

Axinn, Veltrop & Harkrider LLP

A POSA’s Motivation Is Not Required To Be the Same as the Inventor’s in Evaluating Obviousness

In its first precedential opinion of 2025, Honeywell v. 3G Licensing, No. 2023-1354, the Federal Circuit held that a person of ordinary skill in the art (POSA) needs not to have the same motivation as the inventor in an...more

Fish & Richardson

Protecting Innovation in an AI-Powered Age: Patents

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With the advent of generative artificial intelligence (or “GenAI”), many companies have begun to shift their innovation strategies to incorporate and rely on GenAI tools. These tools can be powerful drivers of technological...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Continued Investment in AI Drug Discovery Points to Potential Future Significance of Inventorship in Biosimilar Litigation

On December 3, 2024, Bristol Myers Squibb announced a collaboration agreement with three-year-old startup AI Proteins. According to its founder, Chris Bahl, PhD, AI Proteins uses “AI, synthetic biology, and laboratory...more

Jones Day

PREVAIL Act Passes Committee

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The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

McDermott Will & Emery

Senate Judiciary Subcommittee Holds Back Two Key Patent Reform Bills

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On November 15, 2024, the US Senate Judiciary Subcommittee on Intellectual Property advanced the Inventor Diversity for Economic Advancement (IDEA) Act, one of three significant bills it considered this year to reform the...more

A&O Shearman

District Court Reinforces High Bar For Applying Patent Prosecution Bar

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In Champion Power Equipment Inc. v. Firman Power Equipment Inc., No. CV-23-02371-PHX-DWL (D. Ariz. Oct. 18, 2024), defendant filed a motion for a protective order seeking two forms of relief: 1. a patent prosecution bar...more

Kilpatrick

Bring Back the Models – Shut Down the Patent Trolls

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Imagine your company is suddenly inundated with dozens of baseless patent infringement lawsuits. This scenario is becoming all too common as corporate America grapples with a post-COVID surge in frivolous patent claims,...more

Jones Day

USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

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The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more

McDermott Will & Emery

Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge

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The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on...more

BakerHostetler

Patent Experts: No Ordinary Skill in the Art at the Time of Invention? No Problem!

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The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent....more

Dinsmore & Shohl LLP

Federal Circuit Reiterates the Urgency of Opting for Patent Protection or Trade Secrecy, as the On-Sale Bar to Patentability Looms

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Under 35 U.S.C. § 102, the “on-sale bar” invalidates a patent if an inventor has sold or made the invention publicly available more than one year before filing the patent application. Recently, the United States Court of...more

Patterson Belknap Webb & Tyler LLP

Assigning Away Standing: Judge Choudhury Concludes that Party Lacks Standing to Correct Inventorship of Inventions Previously...

In an ongoing patent dispute between manufacturers of armored fiber optic cables, Judge Choudhury (E.D.N.Y.) recently resolved competing motions to dismiss on several grounds. In doing so, she ruled that Defendant Point 2...more

WilmerHale

Patent Protection for AI Creations - Landmark decision by the German Federal Court of Justice

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These days, patent courts across the world have to address the question of how to deal with AI-generated inventions. The German Federal Court of Justice ("FCJ") has recently issued a landmark decision (decision of June...more

McDermott Will & Emery

Patent by Secret Process: Perils of Pre-Patent Profiting

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The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission’s (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because products made using...more

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