Posts in Podcasts

Generally, artificial intelligence (AI) is an automation of a thing that a human being can do, or the simulation of intelligent human behavior by a machine. In other words, AI performs what a human can but with vastly more data and processing of incoming information. Unfortunately, claiming AI in adherence to its typical definition is akin to asking for a Section 101 subject matter eligibility rejection in the United States. Europe and China have already updated their patent examination procedures for AI. If the United States sustains its current examination procedure of machine intelligence in accordance with the abstract idea doctrine under the Alice and Mayo framework established by the Supreme Court, will we be leaving this industry behind?

Robert Giles took over the Chief IP Counsel role at Qualcomm, the world’s leading wireless technology innovator, in May 2021.  In that role, Giles shepherds a team that is responsible for managing and growing 140,000 IP assets and oversees some of the most high-profile patent disputes in the world. Prior to that, Giles helped lead Qualcomm’s successful efforts in its global litigation with Apple. The litigation blossomed into more than 100 cases around the world before Apple finally agreed to settle.

Did you know that your claim preamble is more likely to be limiting when you’re dealing with a method claim versus an apparatus claim? In Cochlear Bone Anchored v. Oticon Medical AB, Cochlear’s claim recited a hearing aid apparatus “for rehabilitation of unilateral hearing loss” in the preamble. Cochlear was challenged at inter partes review (IPR) where Patent Trial and Appeal Board (PTAB) found the preamble term “for rehabilitation of unilateral hearing loss” did not limit the scope of the claims. The U.S. Court of Appeals for the Federal Circuit upheld the Board’s ruling, expressly finding that the statement of intended use is not limiting because the preamble did not furnish additional structure that was recited in the body of the claims, and provided no antecedent basis for any of the limitations in the body of the claim.

While it may not be common to receive a prior art rejection for a design patent, it certainly can happen, especially if the design is broadly claimed. In utility patents, the issue of obviousness is an analysis of what a person having ordinary skill in the art would find to be obvious in light of the same or similar problem. When it comes to design patents, obviousness rests on the “ordinary observer” test, which is an analysis of the claimed design and its prior art seen as a whole instead of comparing the claimed design to the prior art design element by element. While the ordinary observer test requires a consideration of the design as a whole in the context of its environment features, the claim scope remains very important in terms of how the design will be examined.

IP Goes POP! takes you out to the ball game (and the blockchain) for this episode of the podcast, which looks at the shift from “collectible trading cards” to “collectable NFTs”. Podcast co-hosts, Volpe Koenig Shareholders, and intellectual property lawyers, Michael Snyder and Joseph Gushue round the bases and pull out their most memorable sports cards as they slide home to talk about the intellectual property (IP) of baseball cards, collecting, and non-fungible tokens (NFTs).

Raymond Millien likes to compare himself to Forrest Gump. As someone who pivoted from a programming job at GE Aerospace to a career in intellectual property law, bounced between in-house and outside counsel roles within that space, and even got involved in public policy, he’s definitely a renaissance man. And he’s fallen into many of those jobs by accident. He credits his adventurous and successful career — working as Chief IP Counsel for big-name companies like Volvo, founding his own IP boutique, and now serving as the CEO of Harness IP — to intellectual curiosity and openness. 

A means-plus-function limitation is a functional limitation that claims function without structure. The claimed element presented for prosecution is pure function and not structure. This type of claiming is used often with software patents, which recite function via a series of computer implemented steps to carry out a means.

The 2017 TC Heartland LLC v. Kraft Foods Supreme Court decision led to a major shift in where patent litigation cases are filed in the United States. Before TC Heartland, a patent owner could bring a case in almost any district where an alleged infringer conducted business. Because of its predictable rules and streamlined procedures, the Eastern District of Texas became the most popular forum for such cases; nearly 40% of patent infringement actions were filed there in 2016. When Professor Timothy Hsieh clerked in the Eastern District of Texas, he saw firsthand the benefits – for patent owners and defendants – of experienced judges handling patent cases. TC Heartland changed that by changing the rules regarding where companies can be sued for patent infringement. By 2017, only 15% of patent infringement cases were tried in the Eastern District of Texas. Instead, patent cases became concentrated in Delaware and California.

In the United States, patent prosecution practice is primarily shaped by two governing bodies: 1) the U.S. Patent and Trademark Office (USPTO), which issues procedural practice guidelines, and 2) judicial rulings from the U.S. Court of Appeals for the Federal Circuit. When it comes to the matter of Section 101 subject matter eligibility, the USPTO and the Federal Circuit diverge somewhat in their analysis, specifically in their consideration of what constitutes an “abstract idea.” Our modern-day concept of “abstract idea” is shaped by the Supreme Court’s ruling in Alice v. CLS Bank in 2014. The USPTO and the Federal Circuit both operate under the Alice doctrine of “abstract idea” when it comes to assessing subject matter eligibility, particularly when it comes to software patents. Alice requires that an “abstract idea” has “something more” than what is well-understood, routine and conventional in order to be patent eligible.

Proffered by Senator Thom Tillis (R-NC) in the interest of expediting patent prosecution for those applications that receive Section 101 rejections, under the new Deferred Subject Matter Eligibility (DSMER) program, eligible applicants who receive a subject matter eligibility rejection with prior art rejection(s) or indefiniteness rejection(s) can defer substantively responding to the Section 101 rejection until all other rejections have been withdrawn. This program began on February 1 and will last until July 30 of this year. The U.S. Patent and Trademark Office (USPTO) will notify eligible applicants in the first Office Action on the merits. The applicant can then choose to participate in the program by filling out a form paragraph.

“We solemnly swear we are up to….intellectual property!” From the words that laid out a fictional universe on the page, to a real-world merchandising, film and interactive theme park experience, the Harry Potter universe has become a pop culture staple of the last two decades. In this episode of the IP Goes Pop!® podcast, hosts and Volpe Koenig Shareholders, Michael Snyder and Joseph Gushue, put on their ‘sorting hats’ and pull back the curtain to reveal the intellectual property (IP) of the ‘Wizarding World of Harry Potter’.

Before Phil Warrick began working for Senator Chris Coons (D-Del.), Capitol Hill wasn’t in his career plans. But when an opportunity to work with Coons emerged, he decided to take the leap. For two years, he served as the U.S. Patent and Trademark Office’s (USPTO’s) IP counsel detailee to Coons after Coons helped restart the Senate’s IP Subcommittee, working on bipartisan initiatives like the IDEA Act and legislation to fix the Section 101 patent eligibility mess.  Those efforts were a dramatic departure from Congress’s previous fixation on the “patent troll” narrative.   

The explosion of the non-fungible token (NFT) market and the jaw-dropping prices being paid for digital art — $69 million for a single work and millions for others ­— have made some fast millionaires, while also giving rise to scammers and a widespread debate about the value of intangible goods. For some artists, the market for NFTs has proved to be a huge boon. For example, Chicago-based photographer Brittany Pierre sold over six figures worth of her art on the OpenSea marketplace in 2021 after teaching herself how to mint an NFT, whereas previously she had difficulty paying rent and groceries. For established artists who have curated an online following and understand the value of scarcity, the opportunities presented by NFTs have produced a level of autonomy not previously experienced in their careers. 

This episode of IP Goes POP! traces the development of a brand from its inception to a seminal trademark. No matter the size of a business, it is important to grow your brand and establish goodwill in your name – and for that you need a strong trademark. In this podcast episode, IP Goes Pop! co-hosts, Volpe Koenig Shareholders, and intellectual property lawyers, Michael Snyder and Joseph Gushue, welcome Philadelphia’s own Pete Ciarrocchi, founder of Chickie’s & Pete’s Sports Bar and Crab House.

Gary Michelson isn’t one to back down from a formidable challenge. The prolific inventor’s willingness to tackle seemingly intractable problems in the field of spinal surgery led him to become a successful entrepreneur and eventually, a billionaire. Michelson is frank about his desire to give back to what he describes as the “most robust intellectual property system in the world” — and that starts by educating young people, who are best equipped to change the world. Today, as the founder of Michelson Philanthropies, he directs a wide range of philanthropic efforts, including increasing access to intellectual property education for students. The Michelson Institute for Intellectual Property has differentiated itself by creating a robust portfolio of free, helpful resources that situate intellectual property at the intersection of business and law, including courses and a textbook. In the latest episode of the “Understanding IP Matters” podcast by the Center for Intellectual Property Understanding, he points out to host Bruce Berman that all of the most successful companies in the world today were started by people who were college-aged.