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Patent Ownership

Perkins Coie

How the Trump Administration May Affect AI Policy on Intellectual Property and Deepfakes

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As President-elect Donald Trump prepares for his second term, his administration is poised to influence the future of policy surrounding artificial intelligence (AI) and intellectual property (IP), including regulations...more

Knobbe Martens

Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success

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CYTIVA BIOPROCESS R&D AB V. JSR CORP. - Before Prost, Taranto, and Hughes.  Appeal from the Patent Trial and Appeal Board. Summary: A claim limitation merely reciting an inherent property or result of an otherwise obvious...more

McDermott Will & Emery

Neck or Nothing? “Quotation” Invalidates On-Sale Bar

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The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act...more

Jones Day

USPTO Withdraws Proposal to Add New Terminal Disclaimer Requirements

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The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements....more

McDermott Will & Emery

A Lesson in Judicial Principles: No Dismissal After Decision

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The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but...more

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

New Information Disclosure Statement Fees Apply to Reexamination and Reissue

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....more

DLA Piper

Delaware Court of Chancery Patent Ownership Dispute Addresses Jurisdiction for Pharmaceutical Companies

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A litigation regarding patent ownership rights is heating up in the Delaware Court of Chancery, a court of equity that is an atypical forum for pharmaceutical company and intellectual property disputes. CyDex Pharmaceuticals,...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

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

USPTO Finalizes Fee Increases for 2025: What to Expect in the New Year and What to do Now

The United States Patent and Trademark Office (USPTO) announced today the finalized fee increases taking effect on January 19, 2025. While applicants can still expect significant increases in certain areas, some proposed fee...more

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

PTAB Finds Another Patent Fails to Pass Muster Under 101

At the end of October, the U.S. Patent Trial and Appeal Board (“PTAB”) issued a final written decision in PGR2023-00023, finding all claims of a patent owned by Halliburton Energy Services unpatentable under 35 U.S.C. § 101....more

McDermott Will & Emery

Equivalence Requires Element-by-Element Proof With Linking Argument

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The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the...more

McDermott Will & Emery

Can’t Stop the FRAND: Navigating SEP Licensing Disputes

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The US Court of Appeals for the Federal Circuit vacated a district court’s decision to deny an antisuit injunction prohibiting a patent owner from enforcing injunctions that it obtained in Columbia and Brazil on standard...more

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

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

How Petitions Affect Reexamination and Reissue Prosecution and Clarification of a Dismissed Petition

This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Cooley LLP

Inventorship in the Age of AI

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Generative artificial intelligence (AI) has become an essential tool in the drug discovery process. Trained with input regarding target engagement and desired pharmacological properties, or prompted to identify compounds that...more

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

Subject Matter Eligibility of AI Innovations—USPTO’s Updated Guidance

This article discusses the July 17, 2024 guidance issued by the United States Patent and Trademark Office (“USPTO”) regarding the subject matter eligibility of patent claims involving artificial intelligence (“AI”). The...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Cellect in View of Supreme Court's "Long Conference" – Part II

In view of the Supreme Court's "long conference" on September 30th, it seems timely to review the arguments, pro, con, and amicus briefs submitted to the Court asking for certiorari over the Federal Circuit's In re...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

Jones Day

Director Vacates Decision Based on Improper Claim Construction

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The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2024 #4

EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. Sept. 25, 2024) The Federal Circuit’s only precedential opinion this week was a rare order that granted en banc review of a prior panel decision. Here, the...more

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

The Dilemma with Patent Owner Statements Post-Reexamination Order

Takeaways: 1. Patent owner statements present both risks and limited opportunities. 2. Waiving the patent owner statement shortens overall reexamination proceeding pendency. Every third party requester ex parte...more

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

Demonstrating Unequivocal Intent to Broaden in Reissue

Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Rejects Timing Requirement for Expert Qualification Under Kyocera

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine...more

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

MarkIt to Market® – September 2024: Expanding Horizons: Potential Expansion of IP Rights for High-THC Cannabis Varieties

In the United States, the intellectual property rights system for plants is multifaceted, encompassing utility patents, plant patents, trademarks, and Plant Variety Protection (PVP) Certificates. These mechanisms offer...more

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