Implications for Patent/Trademark Prosecutors and Holders The U.S. Patent and Trademark Office (USPTO) recently issued guidance on the use of artificial intelligence (AI), particularly generative AI, in Intellectual Property (IP) practices involving documents filed at the USPTO. The guidance reiterates long-standing rules and duties of practice in front of the USPTO and aims to highlight any issues or risks for those who may be unaware. The USPTO begins with a review of the duties of candor and good faith, confidentiality, and export regulations. In view of these, practitioners must manage AI ..read more

Damages experts in patent cases have a tough task. They must construct a hypothetical negotiation between the parties that would have taken place just before the alleged infringement started. And the goal of this hypothetical negotiation is to determine a reasonable royalty upon which both parties would have agreed. Over the years, the Federal Circuit has overturned many damages awards. Often, the Court determined that the expert’s opinion was inadmissible because the expert did not adequately tie the royalty to the underlying facts of the case. But every once in a while, a damages case reache ..read more

Ruling in favor of a Miami music producer, Sherman Nealy, over a song by rapper Flo Rida, the Supreme Court held on May 9 that there is no time limit for recovering monetary damages in copyright cases that are otherwise timely filed; therefore, a copyright owner possessing a timely claim for infringement is entitled to past damages, no matter when the infringement occurred. Weighing in on the circuit split as to whether the Supreme Court’s Petrella v. Metro-Goldwyn-Mayer, Inc. decision bars damages for copyright infringements occurring more than three years before a plaintiff files suit ..read more

In IOENGINE, LLC v. Ingenico Inc.,2021-1227 (Fed. Cir. May 3, 2024), the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) determination that certain claim features did not carry patentable weight under the printed matter doctrine. This decision is notable, as it concerns the application of the printed matter doctrine to a digital communication. The claims at issue in the case related to a tunnel client access point capable of making use of the access terminal’s input/output to tunnel data. The particular claim at issue recited the following: “wherein the communication to be tran ..read more

The USPTO published a request for comments (RFC) on April 30th, focusing on how advancements in artificial intelligence (AI) may impact the USPTO’s assessment of patentability governing (i) what may qualify as prior art and (ii) determining the level of skill of a person having ordinary skill in the art (PHOSITA).[1] Accordingly, the USPTO is seeking written comments from the public on or before July 29th, to help evaluate and develop guidance as well as provide technical advice to Congress in considering future legislation.[2] This RFC expands on President Biden’s 2023 executive order (see ht ..read more

The Trademark Trial and Appeal Board’s (Board) precedential decision to uphold a refusal to register a proposed color mark in In re Post Foods, LLC[1] highlights the strategic and technical aspects involved in registering a color trademark as applied to a product. Color marks are considered inherently nondistinctive for the purpose of eligibility for federal trademark registration. In April 2020, Post Foods LLC (Post) applied to register a trademark for the various colors of its Fruity Pebbles cereal in International Class 30 for “breakfast cereals.” On Jan. 4, 2024, the Board upheld a re ..read more

On May 2, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in SnapRays, d/b/a SnapPower v. Lighting Defense Group, discussing personal jurisdiction and – for the first time – Amazon’s “low-cost procedure … ‘[t]o efficiently resolve claims that third-party product listings infringe utility patents,’” called Amazon Patent Evaluation Express, or “APEX.” No. 2023-1184, Doc. 44 at 2 (Fed. Cir. May 2, 2024) (citation omitted). APEX offers utility patent holders the ability to identify allegedly infringing products listed for sale on Amazon via the submi ..read more

IP is again being celebrated this year on April 26, with the World Intellectual Property Organization paying homage to the intersection of IP and the Sustainable Development Goals (SDGs) and “[b]uilding our common future with innovation and creativity.”[1] As a brief history lesson, in 2015, all United Nations Member States adopted the 2030 Agenda for Sustainable Development, which “provides a shared blueprint for peace and prosperity for people and the planet, now and into the future.”[2] The core of the agenda is formed by 17 SDGs, which include important goals such as zero hunger; good ..read more

A major change to the patent landscape is coming. On March 12, 2024, the Judicial Conference of the United States announced that it will change how cases are assigned to judges, which will limit the ability of litigants to choose which judge is assigned to their case. Specifically, patent infringement cases will now be randomly assigned on a district-wide basis. This will have a significant impact on where patent holders file patent cases. The New Policy In most federal district courts, cases are randomly assigned to one of the many judges who sit in a particular court. As the Judicial Confere ..read more

Further to President Biden’s 2023 executive order (EO) on the safe, secure and trustworthy development and use of artificial intelligence (AI) last year (see https://www.bakerlaw.com/insights/white-house-instructs-uspto-to-provide-guidance-on-ai/), the U.S. Patent and Trademark Office (USPTO) released its much anticipated Inventorship Guidance on AI-Assisted Inventions (“Guidance”).[1] The Guidance is retroactive, meaning it applies to all patent applications and issued patents filed before, on or after February 13, 2024. The Guidance strives to ensure balance between protecting and incentiviz ..read more