Posts in Courts

Last week, artificial intelligence (AI) systems developer Dr. Stephen Thaler filed a motion for summary judgment in the U.S. District Court for the District of Columbia in a lawsuit over copyright eligibility for artwork created by AI systems. Thaler’s motion for summary judgment argues that AI-generated works are copyrightable under U.S. federal law and that the copyright should vest in Thaler under common law property principles and the work made for hire doctrine.

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier this week shot down a petition for writ of mandamus filed by Amazon.com, Inc. asking the court to vacate an Order by Judge Alan Albright of the U.S. District Court for the Western District of Texas denying Amazon transfer of a case to the Northern District of California. VoIP-Pal sued Amazon in the Western District of Texas, alleging infringement of its patents through the sale of Amazon’s “’communications platform,’ including the server structure, Alexa calling devices, and Alexa software applications running on those devices.” Amazon sought transfer to California, claiming that the middleware of the accused products was developed by employees based there. In its opposition, VoIP-Pal submitted evidence that “[t]echnical documentation relating to the work of the DeviceOS and Echo Platform Software teams is maintained at the Austin offices.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the U.S. District Court for the Southern District of Texas incorrectly found the term “enlarged chamber” indefinite, but affirmed the court’s construction of another claim term. The case stems from Grace Instrument Industries, LLC’s May 19, 2020, suit against Chandler Instruments Company, LLC for infringement of its U.S. Patent No. 7,412,877 through the sale of Chandler’s Model 7600 viscometer. The ‘877 patent is titled “High Pressure Viscometer with Chamber Preventing Sample Contamination.”

One of the panels at last year’s IPWatchdog’s Life Sciences MastersTM Series addressed the thorny problem of patent eligibility.  I moderated the panel, titled Patent Eligibility and the Life Sciences Industry–What Next?, where the speakers, with input from passionate audience members, discussed the impact of section 101 jurisprudence on innovation in the life sciences industry. Do the limits on what is patent-eligible subject matter created by the courts strike the proper balance or do unpredictable court decisions harm investment and research in the life sciences? While the majority view appeared to be that patent-eligibility reform is necessary, both to provide clarity and to incentivize certain type of inventions, the panel also expressed the idea that some form of section 101 jurisprudence is necessary to prevent “discoveries” from being monopolized, which could also harm innovation.

The U.S. International Trade Commission on Tuesday issued a Notice of Final Initial Determination (FID) finding that Apple violated Section 337 of the Tariff Act of 1930 by importing and selling in the United States Apple Watches with light-based pulse oximetry technology that infringed claims 24 and 30 of Masimo’s U.S. Patent No. 10,945,648. According to a Masimo press release, Apple first started selling the Apple Watch with a pulse oximeter sensor in 2020 and has continued to use it in subsequent versions of the product since then. The ITC Notice said it found no violation of the asserted claims of four other patents named in Masimo’s complaint.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential order yesterday granted a petition for writ of mandamus vacating Judge Rodney Gilstrap’s transfer of two cases out of the Eastern District of Texas to California. The petition was brought by Stingray IP Solutions, LLP and was opposed by TP-Link Technologies, a Chinese company, which Stingray accused of patent infringement. Stingray first filed the patent infringement suits in the Eastern District of Texas and TP-Link moved to dismiss for lack of personal jurisdiction or to transfer the cases to the Central District of California pursuant to 28 U.S.C. § 1406. After the Texas court granted transfer under Section 1406, Stingray petitioned the Federal Circuit for mandamus “solely on the issue of whether TP-Link’s unilateral, post-suit consent to personal jurisdiction in another state (California) defeated application of Rule 4(k)(2).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today vacated a Patent Trial and Appeal Board (PTAB) finding that certain claims of Google, LLC’s U.S. Patent Application No. 14/628,093 were obvious. The CAFC opinion, authored by Chief Judge Moore, said the U.S. Patent and Trademark Office’s (USPTO’s) arguments on appeal “cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked.” Google’s patent application has to do with methods for filtering the results of an internet search query such that only age-appropriate results for a user are displayed. At issue were two prior art references: Parthasarathy, which “discloses methods of filtering search results by comparing a “search-query-intent score” to a predetermined safety threshold” and Rose, which is titled “System and Method for Improving the Ranking of Information Retrieval Results for Short Queries.”

Tattoos have been around for millennia, but their popularity is increasing significantly. According to 2021 data, roughly 13% of Baby Boomers had at least one tattoo, compared to 32% of Generation X and 41% of Millennials. Other than disagreements about the appropriateness of visible tattoos in certain workplaces, tattoos generally cause few headaches for their owners, and certainly not legal headaches. That may no longer be the case, however, as tattoos become more common among celebrities and other high-profile individuals whose likenesses are commonly portrayed in digital media. While there has been relatively little litigation concerning tattoo copyrights, 2023 could be the year that changes.

On January 3, a total of 14 amicus briefs and one motion for leave to participate in oral argument were filed with the U.S. Supreme Court on the question presented by Amgen Inc. v. Sanofi, on which the Supreme Court granted certiorari this past November. While organizations representing the most powerful interests in the technology industry supported the Federal Circuit’s holding that Amgen’s patent claims were invalid for lack of enablement, a wide swath of patent stakeholders are urging the Supreme Court to correct the enablement standard to continue the encouragement of genus patent claims. Below is a collection of arguments raised by several of the recent amicus filings from earlier this week.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued two orders denying mandamus relief for petitioners seeking to end the U.S. District Court for the District of Delaware’s “judicial inquisition” concerning disclosure of their owners and third-party litigation funders. Chief Judge Colm Connolly’s standing orders on initial disclosures in patent litigation cases have been the subject of much controversy and are presently being appealed at the CAFC in a separate case. They require up front disclosures from companies in patent cases assigned to Connolly of 1) “the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified”; and 2) the identity of any third-party litigation funders.

The patent world is trained on the upcoming Supreme Court Amgen v. Sanofi case. That case is the first time in over 75 years that the Supreme Court is evaluating the meaning and scope of the enablement requirement of 35 U.S.C. § 112. The case offers the Court an opportunity to correct a negative trend in enablement law that has made it more difficult to protect groundbreaking, pioneering inventions. Waiting in the wings, however, is an equally important Section 112 case: . There, the petitioner sought review on whether “the ‘written description of the invention’ [is] to be measured by the statutory standard of ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same.’” As is apparent, Juno’s written description issue is highly intertwined with the Section 112 enablement issue in Amgen v. Sanofi.

In Plastipak Packaging Inc. v. Premium Waters Inc., Appeal No. 2021-2244, decided December 19, 2022, the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) newest judge threw a curveball on the topic of inventorship. Judge Leonard Stark wrote the precedential opinion, joined by Judges Newman and Stoll, and ultimately reversed and remanded the U.S. District Court for the Western District of Wisconsin’s grant of summary judgment in favor of Premium Waters, Inc. Plastipak’s 12 patents in suit generally had to deal with unfinished plastic bottles as used during manufacturing.

This year was a busy one for the International Trade Commission (ITC) compared to the last few years. As of December 15, 2022, there were 56 complaints filed, compared to 50 in all of 2021. The Commission also instituted more investigations in 2022 than 2021 and has a higher number of active cases compared to last year, according to Docket Navigator as of December 7, 2022. With in-person hearings resuming, it is an exciting time at the ITC. And with the evolving landscape of venue jurisprudence in the district courts, we expect the growth to continue into 2023. This article highlights a few new developments at the ITC over the past year, as well as several important decisions.

The Constitution empowers Congress to enact federal copyright laws because the Founders recognized that the best way to advance the public interest is by enabling creators to pursue their own private interests. The copyright system secures uniform property rights to creators across the nation as a reward for their productive labors and as incentive for them to profit in the marketplace. The incredible selection of creative works available to consumers today, in terms of quantity and quality, shows that copyright law is working well. Of course, that doesn’t stop the detractors from throwing as many monkey wrenches as they can. However, looking back over this past year, there’s good reason to think that the naysayers are becoming less relevant. There’s cause to be hopeful that the plight of all creators, big and small, is improving and will continue to get better in the years to come.

It’s that time again. As 2022 has come and (almost) gone, it’s time to look back at the exciting grants and surprising denials of certiorari petitions involving patent and trademark matters by the Supreme Court of the United States, and what to look forward to from the Court in 2023. In 2022 the Supreme Court docket was relatively light on intellectual property matters. After numerous denials of some highly anticipated patent and trademark cases, the Court kept us in suspense by granting certiorari in new cases in November 2022.