The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act was introduced on June 22, 2023, with the aim to reform the U.S. Patent Trial and Appeal Board (PTAB). The PREVAIL Act serves as a supplement to the proposed STRONGER Patents Act, introduced in 2019. The drafters have identified three key goals of the PREVAIL Act:[1] Restore fairness to the PTAB to promote innovation and competitiveness. Improve PTAB rules to protect inventors from costly, unnecessary litigation. Ensure UPSTO has resources it needs to administer a patent system that promotes inno ..read more

The food tech industry has grown rapidly in the last ten years due to innovations in the alternative animal product space and a growing customer desire for more sustainable options.[1] With this rapid growth and an increasing number of entrants to the field comes an increased likelihood of intellectual property clashes. In this article, we will discuss the IPR petitions that Motif FoodWorks Inc. (“Motif”) filed against competitor Impossible Foods Inc.’s (“Impossible Foods”) patents and the PTAB’s recent decision to institute inter partes review (IPR) for U.S. Patent No. 9,943,096 B2. Back ..read more

In Intel Corporation v. Pact XPP Schweiz AG, the Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed and remanded the decision of the Patent Trial and Appeal Board (“Board”). In the decision, the Federal Circuit rejected the Board’s rigid application of the “motivation-to-combine” analysis that required an element from one reference must provide an improvement to another reference to justify the combination. Instead, the Federal Circuit held that the “motivation-to-combine” analysis simply required showing that a proposed combination would help resolve an issue and be wi ..read more

It seems as if Netflix and Hulu are continuously pumping out new content in their endless battle to win over more monthly subscribers.  However, when a third-party asserts patents covering streaming technology against both streaming giants, the competitors find themselves on the same side of the line. Such was the case in an inter partes review (IPR) filed by both Netflix and Hulu petitioning U.S. Patent No. 10,225,588 (“the ’588 Patent”), assigned to DivX.  The streaming companies claimed that the ’588 Patent was unpatentable due to obviousness.  Specifically, the petitioners a ..read more

Federal Circuit Rule 36 has been criticized for leaving IP practitioners in the dark as it allows for the court to enter judgment of affirmance without the reasoned analysis of the Court. Generally, the Rule allows for a judgement of affirmance without opinion if one of the enumerated conditions is met and the opinion would not have precedential value. The enumerated conditions are: (1) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous; (2) the evidence supporting the jury’s verdict is sufficient; (3) the record supports ..read more

In a precedential opinion issued last month, the Court of Appeals for the Federal Circuit (“Federal Circuit”) held that when the single issue presented on appeal is whether a prior art reference teaches a particular claim element, that is a factual question that the Federal Circuit reviews for substantial evidence. Addressing only this issue in its decision, the Federal Circuit implicitly held that there is no requirement that it also review the ultimate legal question of obviousness. Judge Newman dissented, disagreeing with the majority’s decision. In Roku, Inc. v. Universal Elecs, Inc., No ..read more

In Intel Corp. v. PACT XPP Schweiz AG, the Federal Circuit held that establishing a motivation to combine prior art for KSR analysis based on the “known-technique” rationale does not require showing that the “known-technique” is an improvement. The Court held that it only requires showing that the “known-technique” is a “suitable option.” PACT XPP Schweiz AG (“PACT”) owns U.S. Patent No. 9,250,908 (“the ’908 patent”). Intel Corp. (“Intel”) petitioned for inter partes review (IPR) of claims 4 and 5 of the ’908 patent, alleging that claims 4 and 5 would have been obvious over the combination of ..read more

The USPTO recently designated CommScope Techs. LLC. v. Dali Wireless, Inc.[1] and Nested Bean, Inc. v. Big Beings Pty Ltd.[2] as precedential PTAB decisions. Both decisions were before the Director of the USPTO, Katherine Vidal. A full list of precedential decisions may be found on the USPTO website. CommScope Techs. LLC. v. Dali Wireless, Inc. IPR2022-01242, Paper 23 (February 27, 2023) In CommScope Techs. LLC. v. Dali Wireless, Inc., Director Vidal clarified the analysis the Patent Trial and Appeal Board (“Board”) must undertake when declining to institute an inter partes review (“IPR”) when ..read more

As the capabilities of Artificial Intelligence (AI) develop[1], the United States Patent and Trademark Office (USPTO) continues to grapple with a key question: Can an AI be an inventor? On February 14, 2023, the USPTO posted a notice on Regulations.gov titled “Request for Comments: Artificial Intelligence and Inventorship[2].” This notice, however, is not the USPTO’s first attempt to understand AI’s ever expanding role in innovation.  The USPTO previously requested public comments on AI inventions in 2019, which it responded to in a publication titled “Public Views on Artificial Intellige ..read more

CyWee Group Ltd. (“CyWee”) has been bouncing between the Federal Circuit and Patent Trial and Appeal Board (“Board”) with its administrative challenges after two inter partes review (“IPR”) proceedings invalidated the claims of its patents. Now, the Federal Circuit has resolved CyWee’s remaining procedural challenges, affirming the Board’s decisions in CyWee Grp. Ltd., v. Google LLC, 59 F.4th 1263 (Fed. Cir. 2023). For some context, a bit of information about the procedural history of the two IPRs at issue may be helpful. Google LLC (“Google”) challenged CyWee’s patents in two IPRs in 2018. Cy ..read more