Posts Tagged: "patents"

This week on IPWatchdog Unleashed, we speak with James Edwards, a property rights advocate, lobbyist and now also the author of the forthcoming book To Invent Is Divine: Creativity and Ownership, which addresses the disconnect between the attributes of creativity and ownership and human innovation, technological progress, and practical benefits from human creativity and ownership in combination. “There’s something much larger and more fundamental about the the existence of creativity and the inherent ownership that normatively connects with each other,” Edwards explains. “Ownership has to come with creativity. If you’ve got creative ability but you don’t have ownership of what you make that doesn’t work.”

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Azurity Pharmaceuticals, Inc. v. Alkem Laboratories Ltd. affirming the District of Delaware’s ruling that Alkem’s generic drinkable antibiotic product did not infringe patent claims owned by Azurity Pharmaceuticals. The Federal Circuit found that the plaintiff clearly and unmistakably disclaimed the presence of propylene glycol from flavoring agents claimed in Azurity’s patents and that prosecution disclaimer was not precluded by pretrial stipulations.

Last month, the United States Court of Appeals for the Federal Circuit held oral argument in Hyatt v. Stewart, which should be on everyone’s radar. Squarely presented in this case is the question of whether prosecution laches is a legitimate doctrine that can render any patent unenforceable if it takes longer than six years to obtain the patent from the United States Patent and Trademark Office (USPTO). As crazy as it sounds, and to the surprise of many patent practitioners who have not paid careful attention to the development of Federal Circuit case law, in 2021 in Hyatt v. Hirshfeld the Federal Circuit ruled—rather improvidently—that a patent is presumed unenforceable if prosecution took longer than six years.

This week on IPWatchdog Unleashed, we present the remarks made during the Award Ceremony at IPWatchdog LIVE 2025 on March 3, 2025. This year we once again presented two awards at IPWatchdog LIVE; the Paul Michel Award and the Pauline Newman Award. These two awards give us a special opportunity for us to do a couple different things. First and most directly, they enable us to recognize the extremely distinguished careers of the recipients of the awards. But second, this gives us an opportunity to recognize the distinguished careers of two people who have been very instrumental in my development as a professional, and who have been instrumental on our development as a company.

This afternoon, United States Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart sent a memorandum to all Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) detailing a new interim process for workload management. To ensure the PTAB can continue to meet its statutory obligations relating to ex parte appeals, the Director will exercise her discretion under 35 U.S.C. 314(a) and 324(a) to determine whether discretionary denial is appropriate for any petition for inter partes review (IPR) or post-grant review (PGR). Under this new interim process, decisions on whether to institute an inter partes review (IPR) or a post-grant review (PGR) will be bifurcated between the discretionary considerations that will be addressed by the Director and the merits and other statutory considerations.

This week on IPWatchdog Unleashed I speak with my friend Jason Harrier, former Chief Patent Counsel at Capital One and current co-founder and General Counsel of artificial intelligence (AI) company IP Copilot. I started our conversation by asking Harrier about invention harvesting, which I know from many conversations with in-house attorneys is one of the more difficult but critical important aspects of their job. We begin with a simple question: Why is invention harvesting so difficult and why are in-house attorneys always talking about in terms of what they tried in the past, what they are currently trying and what they hope to try in the future, sounding a little like Goldilocks looking for what is just right, but always out of reach.

The U.S. Court of Appeals for the Federal Circuit’s precedential decision in Kroy IP Holdings LLC v. Groupon Inc. (Kroy IP) has significant strategic implications for patent litigation and inter partes review (IPR) proceedings. The holding, facts, and procedural aspects of Kroy IP are well covered here. This article focuses on how the decision affects patent litigation and IPR strategies for both patent owners and IPR petitioners.

Lisa Jorgenson is Deputy Director General for Patents and Technology at WIPO. Jorgenson gave a keynote speech at IPWatchdog LIVE 2025 on Monday, March 3. Jorgenson focused primarily on two questions. First, what are the key trends driving global innovation today? Second, what do those key trends mean for the IP community and the innovators and creators? Jorgenson also came with eye-popping facts and figures, pointing out that global intangibles are valued at over $80 trillion, which is more than the world’s five largest economies combined. And she said the world’s leading brands are now worth over $13 trillion, with 45% of the value being located in the United States.

Hopefully, I convinced you in my previous article that ex parte appeals are an underutilized tool when prosecuting patent applications at the U.S. Patent and Trademark Office (USPTO). Over the course of my career, I have filed around 160 appeals and have guidelines that I follow to optimize my chances of winning. None of these tips are as complex as our client’s inventions, but they will increase your chances of success.

The Federal Circuit says that you must disclose and describe the prior art, or your Jepson claim is invalid. Obviously, this means that pretty much every Jepson claim in existence is now invalid. It also ensures that Jepson claims will never be used again. It is also truly a mystery why the Patent Office would ever defend this PTAB decision and advocate in favor of requiring the prior art to be disclosed, discussed and supported. The Office advocating such a nonsensical ruling makes absolutely no sense given the Office prefers Jepson format. Rule 1.75(e) specifically encourages Jepson claim format.

This week on IPWatchdog Unleashed we present my fireside chat with Judge John Holcomb of the United States Federal District Court for the Central District of California, which took place March 4, 2025, at IPWatchdog LIVE. We began our conversation with the story about how John Holcomb the patent litigator went from private practice to becoming Judge John Holcomb of the U.S. Federal District Court for the Central District of California. And then we pivot to discussing patent litigation, the makeup of the Central District of California, advice for litigators, experts, the new Rule 702 and Daubert hearings, the role of the jury and how Judge Holcomb divides time for trial, as well as the number of patents and claims best suited for a single trial. As our conversation wound down, we ended on the topic of his judicial philosophy, where he tells the story of three umpires.

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Restem, LLC v. Jadi Cell LLC affirming the Patent Trial and Appeal Board’s (PTAB) finding that Restem failed to prove the unpatentability of Jadi Cell’s stem cell patent claims. The Federal Circuit found no error with any alleged implicit claim construction employed by the PTAB, and dismissed Restem’s invitation to alter the standard for anticipation for product-by-process patent claims.

The Trump Administration is making major changes to reduce the size of government to address the $37 trillion federal debt, including withdrawing employment offers to patent examiners and firing patent examiners still within their probationary period. Meanwhile, as the number of examiners is being cut, the backlog of unexamined patent applications is at an all-time high, with some sources saying there are now at least 1.2 million unexamined patent applications pending. And against this backdrop the Federal Circuit has developed an unhealthy obsession with the doctrine of prosecution laches, which creates a presumption that patents are unenforceable if it took longer than six years to obtain.

This week on IPWatchdog Unleashed we take a dive into the world of university technology transfer and university innovation with Laura Peter, who is the Executive Director of the University of North Carolina Charlotte Office of Research Commercialization and Partnerships and is a former Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO) during President Trump’s first term. We spend time discussing core patent issues surrounding law, policy and the business of innovation. And our wide-ranging conversation goes on to discuss how other countries engage price control tactics on drugs, which means the United States is subsidizing drugs for the entire world, which is a trade problem and not a patent problem. We proceed to discuss startups, patent eligibility reform, the Patent Trial and Appeal Board and much more.

This week on IPWatchdog Unleashed we take a look at the importance of data transparency and standards for artificial intelligence (AI) and standard essential patents (SEPs) in the telecommunications sector. Our guest is Tim Pohlmann, who is the Managing Director for the Americas at LexisNexis Intellectual Property Solutions. And before he joined LexisNexis, Tim was the founder and CEO of IPLytics. Tim has worked at the intersection of data and standard essential patents for a long time, and the themes of data integrity, data transparency and how data can be used to influence and inform decision-making were the focus of our conversation.