Posts Tagged: "patent"

AI and the Word that’s Been Missing from the Patent Eligibility Case Law

The artificial intelligence (AI) revolution poses new problems for deciding patent eligibility, problems for which the current body of U.S. Court of Appeals for the Federal Circuit case law and U.S. Patent and Trademark Office (USPTO) policy is ill-equipped to address. In particular, Alice Step 2, one of the most misunderstood doctrines in all of patent law, has the potential to become even more muddled when considering AI inventions. This is because the case law, as well as examiner practice, have tended to over-emphasize the importance of the conventionality or genericness of computers recited in the claims or described in the specification.

Amneal, Aided by FTC, Succeeds in Getting Teva Patents Removed from Orange Book

In a significant ruling, the United States District Court for the District of New Jersey has ordered that Teva’s inhaler patents were improperly listed in the Food and Drug Administration’s (FDA) Orange Book, supporting Amneal’s claims that the patents did not cover key drug formulations. The case is centered around Teva’s New Drug Application (NDA) for the ProAir HFA inhaler.

TikTok’s ‘Grossly Insufficient’ Discovery Responses Lead to Motion to Compel in Cellspin Soft Patent Case

On June 6, patent owner Cellspin Soft filed a motion to compel  in the Eastern District of Texas seeking a court order requiring Chinese social media company TikTok to provide additional responses to interrogatories regarding proper venue in the case. Cellspin Soft’s motion charges TikTok with refusing to provide information within the company’s knowledge about several venue-related aspects of the case, including the identity of corporate whistleblowers and the location of servers used by TikTok’s data security initiative known as Project Texas.

USPTO Extends Deadline for AI Inventorship Comments as Some Criticize Pannu Factors

On June 6, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register announcing that the Office would be reopening the public comment period for the development of inventorship guidance surrounding inventions developed by artificial intelligence (AI) systems. Although the USPTO will continue to collect public comments until the middle of June, public comments received from patent industry stakeholders so far are largely urging the agency to adopt inventorship guidance that provides a broad pathway to patentability for AI-assisted inventions.

The Biotechnology Revolution: The Impact of the New WIPO Treaty on Genetic Resources

After 25 years of negotiations, representatives from various countries gathered at a diplomatic conference in Geneva, Switzerland, from May 13 to 24, 2024, resulting in the approval of this historic treaty. The main change brought by the treaty is the mandatory disclosure of the origin of genetic resources and associated traditional knowledge in patent applications.

Lawmakers’ Letter to Department of Commerce Misunderstands the NIST March-In ‘Framework’ and Comments

Last Wednesday, May 29, Senator Elizabeth Warren (D-MA) and Representative Lloyd Doggett (D-TX) jointly called on the Secretary and Under Secretary of the U.S. Department of Commerce to expedite the finalization of a federal proposal aimed at enabling the government to acquire “taxpayer-funded” patents and license them to competitors, which would theoretically result in cheaper products and services. The congress members argued that the proposed “framework” would play a pivotal role in mitigating the exorbitant costs associated with prescription drugs.

Brazilian Congress Debates Regulatory Data Protection for Pharmaceutical Products

In May 2024, the Brazilian Senate Committee on Science, Technology, Innovation, and Informatics hosted two public hearings to discuss implementing Regulatory Data Protection (RDP) for pharmaceutical products of human use. The call for hearings (REQ 27/2023) was presented by Senator Izalci Lucas (Liberal Party). While recognizing that regulatory changes would have significant implications for the local industry, the healthcare system, and consumers, Sen. Lucas expressed concern that a lack of measures could discourage investment in R&D.

Obviousness Evolution: From PHOSITA to THOSITA to AI

The 1952 U.S. Patent Act’s section 103 takes a pass at overcoming hindsight bias by positing a hypothetical Person Having Ordinary Skills In The (relevant) Art, i.e. a PHOSITA. It took 13 years thereafter for the Supreme Court to breathe life into PHOSITA in the Graham v. John Deere, 363 U.S. 1 (1966) Trilogy, and in another 41 years it adjusted the barriers of a U.S. Court of Appeals for the Federal Circuit (CAFC) diversion of teaching, suggestion or motivation (TSM) requirements for detection of non-obviousness in KSR Int’l Co. v. Teleflex, 550, U.S. 398 (Fed. Cir. 2007).

Prost Dissents from CAFC’s Denial of New Trial on Damages for Google

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, June 3, issued a precedential decision affirming a district court’s orders in favor of EcoFactor, Inc. against Google, whose appeal in part asked for a new trial on damages due to prejudicial error. Judge Prost dissented-in-part. EcoFactor sued Google for infringement of its U.S. Patent No. 8,738,327 relating to smart thermostat technology. EcoFactor said Google’s Nest thermostat products in particular were infringing. Google moved for summary judgment that certain claims of the patent were invalid as abstract under Section 101 but the district court denied the motion, and also denied Google’s Daubert motion to exclude the opinion of EcoFactor’s damages expert, Mr. Kennedy, whose testimony Google argued was “unreliable and therefore prejudicial,” according to the CAFC.

The Devil Made Me Do It: When are USPTO Filings ‘Involuntary’?

In Dragon Intellectual Property LLC v. Dish Network LLC, – (Fed. Cir., May 20, 2024), a divided panel of the U. S. Court of Appeals for the Federal Circuit held that a prevailing defendant in an otherwise “exceptional” patent infringement case could not recover attorney fees expended in a parallel inter partes review (IPR) proceeding because the defendant’s initiation of the IPR was “voluntary.” The court ostensibly drew a bright line between Dish’s “voluntary” U.S. Patent and Trademark Office (USPTO) filing and the purportedly “involuntary” filing at issue in a 1988 Federal Circuit case. I respectfully suggest that the earlier case was wrongly decided and that there is no meaningful difference between the fact patterns in the two cases.

A Healthy Patent Family Is A Tree That Continues to Bear Fruit

When the Senate Judiciary Committee convened on May 21 for a hearing on Competition in the Prescription Drug Market, Senators were besieged with an array of tired and superficial arguments against patents for biopharmaceutical innovation. The main premise seemed to be that holding more than a single patent for a single product must be anti-competitive. These arguments fly in the face of technological, economic, and legal reality, where patents cover inventions and discoveries rather than products. The ubiquitous mobile phone by one estimate contains 250,000 patented inventions, each adding a unique capability or solving a technical problem, which collectively enable the whole phone to work as intended.

How the UPC Courts Have Ruled on Security/ Bonds for Initiating Actions

An interesting decision of the Unified Patent Court’s (UPC’s) Munich Local Division, issued on April 23, 2024 (UPC CFI No. 514/2023), confirmed that “the prerequisite for a successful application (for security/bond) would be a demonstration that the financial circumstances of the other party give rise to fears that any claim for reimbursement of costs cannot be satisfied or that, despite sufficient financial resources, enforcement of a decision on costs appears to be impossible or fraught with particular difficulties.”

Former USPTO Officials Urge Vidal to Immediately Withdraw NPRM on Terminal Disclaimers

On May 28, a group of five former Directors, Deputy Directors and Patent Commissioners at the U.S. Patent and Trademark Office (USPTO) sent a letter addressed to current USPTO Director Kathi Vidal in opposition to a rule package on terminal disclaimer practice proposed earlier this month. This group of highly-ranking former government officials join a growing chorus of voices who are concerned by the apparent overreach of the nation’s patent granting agency into substantive rulemaking that would create enforceability issues for companies making use of terminal disclaimers to obtain patent rights.

Winning Strategies at the Federal Circuit

Knowing your way around the U.S. Court of Appeals for the Federal Circuit (CAFC)—the specialized appellate court that has exclusive jurisdiction over patent cases—is essential to success in patent appeals. Founded in 1982, the Federal Circuit is the thirteenth federal court of appeals, and has nationwide jurisdiction over many types of cases, including international trade, government contracts, patents, trademarks, certain monetary claims against the United States government, federal personnel, and veterans’ benefits, among others.

Latest Bid to Review Rule 36 Practice Shot Down by SCOTUS

Following the denial of another petition for certiorari in March, Jodi A. Schwendimann today lost her bid for review at the U.S. Supreme Court on the question of whether it is permissible for the U.S. Court of Appeals for the Federal Circuit (CAFC) to issue a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it isn’t clear which the CAFC has deemed correct.