This week in Other Barks and Bites: Members of Congress ask the Government Accountability Office to conduct a study into the impact of President Biden’s proposed framework for exercising march-in rights under the Bayh-Dole Act; the U.S. Supreme Court rules “there is no time limit on monetary recovery” in copyright cases with expired statute of limitations; the Port of Oakland files a countersuit against San Francisco in airport naming dispute; and the U.S. Patent and Trademark Office warns 14,000 trademark filers of address leak.

I was scrolling my LinkedIn feed recently and noticed a former associate had posted that they had achieved certification in “AI ethics” from one of the world’s largest technology companies. I’ve noticed this term becoming more ubiquitous lately, and it’s puzzling. Ethical according to whom? Ethical compared to what? Whose ethical code are we using to determine whether a given technology is ethical? By what standards do we measure whether an AI-generated image, song, article, thought piece, or other assets are “ethical?”

If you have done a search for just about anything using Google, you have no doubt at one time or another stumbled across Reddit, the self-described “home to thousands of communities, endless conversation, and authentic human connection.” Regardless of what you are interested in, there is a community and conversation to be found on Reddit. For those familiar with Reddit and the breadth of topics covered it probably comes as no real surprise that there is a patent examiner Reddit, which has some 4,800 users. What should be surprising—shocking even—is what was recently discussed in one quickly deleted thread within that patent examiner Reddit.

The U.S. Patent and Trademark Office (USPTO) will officially publish a Notice of Proposed Rulemaking (NPRM) tomorrow that would change terminal disclaimer practice related to “non-statutory double patenting.” The judicially-created doctrine of “obviousness-type double patenting”(ODP) has become codified by the USPTO such that the Office will reject claims to more than one patent that vary in only minor ways from one another unless there is a promise by the patentee “not to extend the patent exclusivity term or allow multiple parties to harass an alleged infringer.” This is done via a “terminal disclaimer.”

On May 8, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Zircon Corp. v. International Trade Commission affirming the U.S. International Trade Commission’s (ITC) ruling that Zircon Corp. had failed to meet the domestic industry requirement to prove a violation of 19 U.S.C. § 1337 due to Stanley Black & Decker’s alleged patent infringement. The Federal Circuit agreed with the ITC that Zircon had failed to provide an adequate basis for evaluating its domestic industry investments by aggregating its investments into products that practiced fewer than all patents asserted by Zircon in the ITC’s Section 337 investigation.

The U.S. Supreme Court today issued its decision in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices ruled 6-3 that “the Copyright Act entitles a copyright owner to recover damages for any timely claim,” with no limit preventing recovery for infringement that happened beyond three years. As to the issue of when a claim for infringement “accrues,” the Court said it “assumes without deciding” that accrual occurs upon discovery of the infringement.

The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and potentially the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper. In this month’s podcast episode, we’re talking about costly tales of claim construction fails. This is the final episode in a three-part series focused on the fundamentals of patent claims and claim construction.

In Part I of this two-part article, we reviewed the origins of the judicially-created doctrine of obviousness-type double patenting (ODP) and laid out the background on how the U.S. Court of Appeals for the Federal Circuit arrived at the 2023 In re Cellect decision. Here, we delve deeper into the case law and explain a simple fix for many present-day ODP problems.

Earlier this year, a jury trial was held in the matter of G+ Communications, LLC v. Samsung Electronics Co., Samsung Electronics America, Inc., Case No: 2:22-CV-00078-JRG (E.D. Texas). Pursuant to the jury’s verdict, two of the three patents asserted were found to be infringed by Samsung, and compensation was awarded to G+ in the amount of $45 million for one patent and $22.5 million for the other. The verdict further indicated these amounts were running royalties as opposed to lump sum royalties. Additionally, the jury found G+ had not “breached its [fair, reasonable and non-discriminatory] FRAND obligation by failing to offer a license to the Asserted Patents to Samsung that was fair, reasonable, and non-discriminatory, and by failing to act in good faith regarding negotiations with Samsung as to a FRAND license covering the Asserted Patents.”

Huge datasets and limitless computing power are converging to upend the practice of healthcare, especially the speed and accuracy of detecting major diseases. “We can manage terabytes of data in seconds, then move and store it in the cloud,” explains pioneering physicist, bioengineer, and serial entrepreneur Alan C. Nelson in a new conversation with Bruce Berman on his podcast ‘Understanding IP Matters.’ This capacity is markedly different than thirty years ago when Nelson began using AI to invent new tools to improve health outcomes.

Intellectual property litigation in the 21st century has brought to the fore systems for asserting infringement in which IP owners may be spared some of the huge expense of litigation by “routing” extra-judicial enforcement activities through a third party. They may do so by availing themselves of programs operated by middlemen such as Amazon, which can potentially cripple a competitor with the threat of removal from Amazon.com, while the patentee can claim to be immune from a declaratory judgment suit on the accused infringer’s home turf.

It is hardly an exaggeration to say that pretty much every business of every size possesses information that would qualify for trade secret protection. This is because under federal law the term “trade secret” is defined very broadly to capture virtually all types of tangible or intangible information. Specifically, the Defense of Trade Secrets Act (DTSA), which became law in 2016, defines trade secrets to include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes”

In 1945, American engineer and the first Director of The Office of Scientific Research and Development, Vannevar Bush, published a famous report, Science and The Endless Frontier, which stated that “scientific progress is one essential key to our security as a nation, to our better health, to more jobs, to a higher standard of living, and to our cultural progress.” However, scientific progress could not be achieved until a streamlined patent system that incentivized and rewarded inventors was created. 

On Tuesday, May 7, the U.S. Court of Appeals for the Federal Circuit will hear argument in a long-awaited appeal addressing the inventorship of the Nobel Prize-winning CRISPR technology. The case is the latest in a continuing legal battle between two groups of innovators, each asserting patent rights to key aspects of the groundbreaking technology.

On May 2, the World Intellectual Property Organization (WIPO) issued its most recent biennial report, entitled “Making Innovation Policy Work for Development,” which analyzes patent filing, scientific publications and economic data across the globe over the last two decades to identify innovation policies effective at diversifying national economies. While WIPO’s report underscores the highly concentrated nature of the global innovation economy, it also highlights several countries that have seen significant improvements in their own technological diversification during the study period.