Supreme Court Affirms 100+ Year Period for Copyright Damages
Harness Dickey | Patent & Intellectual Property Attorneys
by Jocelyn Canan
2w ago
In Warner Chappel Music, Inc., v. Sherman Nealy, [22–1078] (May 9, 2024), the Supreme Court finally clarified copyright’s 3-year statute of limitations (17 U. S. C. §507(b)), holding that a copyright plaintiff who timely brings a copyright infringement claim, can recover damages for the entire period of infringement, and not limited to the three year period before suit was brought. Sherman Nealy and Tony Butler formed Music Specialist, Inc., which recorded and released one album and several singles, including the works at issue. Nealy went to prison, and Butler (unbeknownst to Nealy) ente ..read more
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Routine Optimization Does Not Necessarily Require a Disclosure of Ranges Under the Results-effective Variable Doctrine – Pfizer v. Sanofi, No. 19-1871 (Fed Cir 2024)
Harness Dickey | Patent & Intellectual Property Attorneys
by Jocelyn Canan
2M ago
The results-effective variable doctrine is a caselaw principle where prior art disclosing the “general conditions of a claim” invokes a presumption of obviousness if the particular workable ranges are identifiable through routine experimentation. The presumption can be rebutted with evidence that the given parameter was not recognized as being result-effective. Sanofi Pasteur, Inc. and SK Chemicals Co initiated an IPR (inter partes review) to invalidate U.S. Patent No. 9,492,559 (the “‘559 Patent”) owned by Pfizer based on the routine optimization theory. The ‘559 Patent is directed to composi ..read more
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USPTO Releases Inventorship Guidance for AI-assisted Inventions
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
3M ago
The USPTO released inventorship guidance on February 12, 2024, for inventions assisted by artificial intelligence (AI). The Federal Circuit previously held that an AI system cannot be listed as an inventor in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), and this release provides guidance regarding the open question of human inventorship for inventions developed by a person working with the assistance of an AI system.   At the outset, the USPTO guidance states that inventions developed with assistance from an AI system are still patentable, as long as a human inventor “significantly co ..read more
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Have a Seat Over There — Petitioner Has No Standing to Appeal PTAB Decision
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
3M ago
In Allgenesis Biotherapeutics Inc., v. Cloudbreak Therapeutics, LLC, [2022-1706] (November 7, 2023), the Federal Circuit dismissed the appeal of the PTAB’s final written decision that claims 4 and 5 of U.S. Patent No. 10,149,820 had not been shown to be unpatentable, because Allgenesis has failed to establish an injury in fact sufficient to confer standing to appeal. Although a party does not need Article III standing to file an IPR petition or to obtain a Board decision, the party must establish Article III standing once it seeks review of the Board’s decision in this Court. To ..read more
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USPTO Guidelines on Enablement Requirement published 10 January 2024
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
4M ago
In view of the recent Supreme Court decision in Amgen Inc. et al. v. Sanofi et al., 143 S. Ct. 1243 (2023)(hereinafter Amgen), the USPTO has published guidelines for determining enablement requirement (35 U.S.C. § 112(a)) compliance among all utility patent applications regardless of technology. You can access the published guidelines here. The guidelines are not intended to announce any major change to accessing the enablement requirement, and state that USPTO personnel will continue to use the Wands factors from In re Wands 858 F.2d 731, 737 (Fec. Cir. 1988) to ascertain whether the experime ..read more
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Extrinsic Evidence Needed to Construe Numerical Limitation in the Claims
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
4M ago
Actelion Pharmaceuticals Ltd, v. Mylan Pharmaceuticals Inc., [2022-1889] (November 6, 2023), the Federal Circuit vacated the district court’s claim construction order with respect to the term “a pH of 13 or higher” in U.S. Patent Nos. 8,318,802 and 8,598,227 and the judgment of infringement, and remand for the district court to consider the extrinsic evidence and its impact on claim construction. The patents in suit were directed to improved epoprostenol formulations. The claim required “the bulk solution has a pH of 13 or higher.” Both parties proposed the plain and ordina ..read more
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Co-owned, but Unrelated Application Cited in IDS Does not Inform the Meaning of the Claims
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
4M ago
In Malvern Panalytical Inc., v. TA Instruments-Waters LLC, [2022-1439] (November 1, 2023), because the district court erred in construing “pipette guiding mechanism,” the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent Nos. 8,827,549 (“the ’549 patent”) and 8,449,175 and remanded for further proceedings. These patents both disclose microcalorimeters, which are machines that measure the amount of energy absorbed or released during a chemical reaction between two compounds. Malvern and Waters disputed whether the term “pipette guiding mechanism” encompasses onl ..read more
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“Five Ways to Make Your Global Patent Prosecution Strategies More Efficient,” Today’s General Counsel
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
6M ago
In an article published on December 7, 2023, Harness IP Principal Chris K. Miller provides guidance to legal departments that are responsible for maintaining a global patent portfolio. Summarized in five tips for in-house counsel, Miller looks at ways to maximize patent filings to save time and money. It begins with “universal” patent application disclosures. “Patents are tied to specific national jurisdictions and their rules, so prepare a ‘universal’ application that addresses considerations of all jurisdictions where a company intends to file,” Miller writes. “Information prepared for this ..read more
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Unlocking The Power Of Intellectual Property Of Mid-Size Companies
Harness Dickey | Patent & Intellectual Property Attorneys
by Matthew Burton
6M ago
Podcast with Bryan K. Wheelock and Joseph E. Walsh You can’t “trademark your copyright,” but you can protect your brands and innovations with intellectual property rights. St. Louis based Principals Bryan Wheelock and Joe Walsh recently spoke with Doug Farren at the National Center for the Middle Market, and host of The Market That Moves America podcast, to share insights into patents, trademarks, copyrights, and trade secrets for middle market companies. They discuss the significance of protecting distinct creations, from inventions to brands to original works of authorship, in the competitiv ..read more
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Revised Rule Requiring Use of USPTO Form for IDS Safe Harbor
Harness Dickey | Patent & Intellectual Property Attorneys
by Cait Connor
11M ago
Starting July 17, 2023, to ensure an efficient avoidance of a negative PTA, in certain instances, revised 37 CFR 1.704(d) will include a new paragraph (d)(3) requiring the use of Office form PTO/SB/133 and the appropriate document code (PTA.IDS). The use of the document code PTA.IDS specifically for form PTO/SB/133 is a representation that the applicant is filing form PTO/SB/133 with no alterations to the text of the form. “Safe Harbor” Currently, 37 CFR 1.704(d) provides a “safe harbor,” for (1) a filing containing only an information disclosure statement (IDS) or (2) a request for continued ..read more
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