Posts in Guest Contributors

The first week of 2024 was a light one for patent filings. The Patent Trial and Appeal Board (PTAB) had a slightly below average 21 new petitions—all petitions for inter partes review (IPR), while there were only 34 new filings in district court. The PTAB saw new IPRs filed against Advanced Coding (filed by Samsung), XR Communications (filed by Ericsson) and Semiconductor Design (filed by Cadence Design Systems). Four new IPRs challenging three Senko Advanced Components Inc. [associated with Senko Group Holdings Co, Ltd.] patents were filed by US Conec Ltd. After low activity throughout 2023, Askeladden has filed three new IPRs challenging three Calabrese Stemer LLC patents and four new IPRs challenging three Intercurrency Software LLC patents.

In the book / movie “The Shining”, the Overlook hotel is haunted by ghosts involved in past wrongs committed on the property, presumably to make the current inhabitants atone for such sins. Notwithstanding this transcendental precedent, Judge Rodney Gilstrap recently declined to extend such a notion to patents subject to Fair, Reasonable and Non-Discriminatory (FRAND) licensing related obligations.

Last term, the U.S. Supreme Court did something strange: the Court unanimously affirmed a circuit decision, which had unanimously affirmed a trial court decision. Little about the law seemed ripe for dispute or change, nevertheless, in Amgen v. Sanofi the Supreme Court spoke. Seven months later, innovators and patent practitioners are still scratching their heads. What impact, if any, does Amgen have? Is there a sign lower courts are interpreting Amgen as signaling a change in American patent law or did it merely ratify what already existed?

As we enter 2024, major policy initiatives are pending at the United States Patent and Trademark Office (USPTO) and in Congress aimed at overhauling certain aspects of Patent Trial and Appeal Board (PTAB) practice. These initiatives—the Advance Notice of Proposed Rulemaking (ANPRM) and PREVAIL Act, respectively, are at a critical point, with elections less than a year away. This article discusses the current state of both.

The Federal Circuit basically confirmed in In re Cellect that terminal disclaimers can knock out patent term adjustment (PTA). If you have patent term extension (PTE) and you filed a terminal disclaimer to overcome an obviousness-type double patenting (ODP) rejection, you can get the PTE term tacked onto the disclaimed date. However, in the case of PTA, the court says that PTA term gets added to the life of the patent first and then the terminal disclaimer goes into effect so that you have disclaimed the PTA term and any extended term such that the two patents now expire on the same date regardless of the PTA. In effect, terminal disclaimers may knock out PTA term.

Recently, amendments to the Implementing Regulations of the Chinese Patent Law were issued and will take effect from January 20, 2024. The Regulations align with the revisions made to the Patent Law in 2020 and provide further guidance. The main changes to the new Regulations, as compared with the 2010 version of the Regulations,  can be summarized as follows.

On December 8, 2023, provisional agreement was reached between the European Union (EU) Parliament and the EU Council on the basic content of the new AI Regulation (the “AI Act”) to be implemented as legislation in the EU. The text is still not publicly available as it is subject to certain further refinement over the coming weeks. However, there is information available in the public domain (including press releases issued by the European Union) as to the likely format of the AI Act. Additional background on the legislative process towards the AI Act is available here.

Looking back over the final few weeks of 2023, patent filings were typical at the Patent Trial and Appeal Board (PTAB) and slightly above average in district courts, with the last weeks of the year seeing 68 district court complaints filed and 25 new PTAB petitions [December 11-17]; followed by 57 district court complaints filed and 29 new PTAB petitions [December 18-24]; and wrapped up with 24 district court complaints filed and 13 new PTAB petitions [December 25-31].

Recent debates about AI patentability have focused on whether the outputs of an AI system, such as a neural network, can be patented. Such debates have been spurred not only by recent general advances in the power of AI but also by Dr. Stephen Thaler’s “Artificial Inventor” project’s attempts to obtain patents on devices generated using his neural network-based DABUS software. If you thought that whether an AI-generated output can be patented is a cutting-edge question, then consider whether an input to an AI system, such as a prompt to a large language model (LLM), can be patented.

Arbitration, including international arbitration, can be a beneficial tool for the enforcement of patent portfolios, license agreements and infringement disputes. When entering into agreements/licenses (including commercial supplier, distributor and partnership agreements), parties may deem it useful to include an arbitration provision to resolve any disputes arising from those agreements. As such, parties can take advantage of the numerous benefits of international arbitration in the event of a dispute relating to intellectual property, in contrast to relying on district court proceedings.

In Part I of this article, we recapped some of the most notable trade secret cases of the past year that dealt with issues such as proving secrecy and exercising reasonable efforts, as well as the publication of a key judicial resource for trade secret cases. Below, we continue with some of the top trade secret cases and subject matter the courts addressed in 2023.  

Many IP attorneys have expressed concerns about complying with confidentiality duties while using large language models (LLMs). For example, in a recent panel at the U.S. Patent and Trademark Office (USPTO), multiple panelists expressed the opinion that attorneys should not perform LLM queries because LLM queries are stored remotely while Internet searches are not. The goal of this article is to explore, as examples, Google’s and OpenAI’s data retention policies and the intersection of those policies with attorneys’ confidentiality duties.

In Part I of our year end summary of key developments regarding patents subject to a commitment to license on a Fair Reasonable and Non-Discriminatory (FRAND) or Reasonable and Non-Discriminatory (RAND) basis, we looked at various developments involving patent pools and reviewed some interesting damages awards and interlocutory decisions. In this installment, we consider a pair of antitrust cases dismissed in 2023 and explore what may come next on the policy front.

Trade secrets in the United States have a fascinating history, during which courts shaped the common law tort as a way to enforce confidential relationships. Now the legal framework is statutory, with some version of the Uniform Trade Secrets Act (UTSA) in effect in every state except New York, and with uniformity in the federal system thanks to the Defend Trade Secrets Act of 2016 (DTSA). Nevertheless, the law continues to evolve much as it did a century ago—that is, through the opinions of judges deciding individual cases on their facts. What follows is a selection of those decisions, along with other resources, which have come out during the past year and which I believe provide helpful guideposts about important aspects of trade secret law and practice.

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues. Below is a selection of a few of those significant cases from the previous year.