2023 Federal Circuit Case Summaries
Darren Franklin | Intellectual Property Law Blog
by Jesse Salen and James Hurt
2d ago
We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we introduced in Spring 2023, which was very well received. In this report, we have attempted to classify and summarize every precedential opinion or order regarding patent cases issued by the Federal Circuit last year. Click here to read more ..read more
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The USPTO and USCO Delivered a Report to Congress on IP Issues with NFTs – Maintains Existing IP Regime
Darren Franklin | Intellectual Property Law Blog
by James Gatto
1M ago
The United States Patent and Trademark Office (“USPTO”) and the United States Copyright Office (“USCO”) delivered a report to Congress entitled Non-Fungible Tokens and Intellectual Property on March 12, 2024 (“Report”). While the Report is comprehensive, it does not recommend any new action to address IP issues with NFTs. The Report looked at: i) current and future applications of non-fungible tokens (“NFTs”); ii) how intellectual property laws apply to NFTs and assets associated with NFTs; iii) intellectual property-related challenges arising from the use of NFTs; and iv) potential ..read more
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Federal Circuit Weighs in on Temporal Rigidity of the Baye-Dole Act’s Licensing Provisions
Darren Franklin | Intellectual Property Law Blog
by Michael Hopkins and Don Geiger
1M ago
In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically, where a recipient of federal funds subcontracts out work to be performed using those federal funds and the subcontractor reduces an invention to practice, the Government’s license rights can be triggered by that reduction to practice even if no formal subcontractor agreement was in place between the fund recipient and subc ..read more
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Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publication
Darren Franklin | Intellectual Property Law Blog
by Paul Chang and Yu Pan*
1M ago
In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art printed publications based on the public accessibility of the operating manuals. Background In response to an infringement case filed by Provisur, Weber filed two inter partes review (“IPR”) petitions to invalidate two patents owned by Provisur, based on Weber’s operating manuals and additional references, which the Board instituted. Weber, slip op., pp. 2, 6. The two pate ..read more
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AI-Assisted Inventions: Is There a Duty to Disclose the Use of AI?
Darren Franklin | Intellectual Property Law Blog
by Yang Li
1M ago
Inventors and patent practitioners filing patent applications before U.S. Patent and Trademark Office (USPTO) may have an obligation to disclose if artificial intelligence (AI) is used in the innovation process. Everyone involved in the filing and prosecution of a U.S. patent application has a duty to disclose to the USPTO all information which is materially relevant in assessing the patentability of the invention. This duty of disclosure is a serious one: deliberately withholding material information from the USPTO can result in an invalid and unenforceable patent. Under the duty of disc ..read more
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Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions
Darren Franklin | Intellectual Property Law Blog
by Don Geiger
2M ago
ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circu ..read more
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AI-Assisted Inventions: Are They Patentable? Who is the Inventor?
Darren Franklin | Intellectual Property Law Blog
by Yang Li
2M ago
Generative artificial intelligence (AI) may change how we invent: many envision a collaborative approach between human inventors and AI systems that develop novel solutions to problems together. Such AI-assisted inventions present a new set of legal issues under patent law. On February 13, 2024, the U.S. Patent and Trademark Office (USPTO) issued a long-anticipated Inventorship Guidance for AI-Assisted Inventions. The Guidance explains the USPTO’s position on inventorship issues as artificial intelligence systems play a greater role in the innovation process. According to the Guidance, th ..read more
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Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine
Darren Franklin | Intellectual Property Law Blog
by Don Geiger
2M ago
RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges disclosed in the patent specification, and (2) the kind of prior art disclosure language which supports a finding of a motivation to combine for an obviousness rejection. Background and Procedural History RAI Strategic Holdings, Inc. (“RAI”) owned U.S. Patent No. 10,492,542 (the “’542 Patent”), directed to electrically powered smoking articles, i.e., e ..read more
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Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition
Darren Franklin | Intellectual Property Law Blog
by Sofya Asatryan
2M ago
In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex suffici ..read more
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Is 2024 the Year When We Will Finally Know the Scope of IPR Estoppel?
Darren Franklin | Intellectual Property Law Blog
by Chris Ponder
2M ago
This article was originally posted to Law360. The America Invents Act created inter partes review in 2012. Statutory estoppel is one of the features of the statute that balances the interests of patent owners and patent challengers. The statute simply states that an IPR petitioner may not later assert in court that a claim “is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). While there is no dispute that a petition can only be based on prior art patents and printed publications, courts have ..read more
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