On December 28, 2021, the Federal Circuit issued another decision addressing an appellant’s standing to appeal inter partes review (“IPR”) decisions from the PTAB. The patent community has seen several opinions over the last couple of years as the Federal Circuit continues to navigate the complicated waters of what is and is not sufficient to
On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) lifted a stay that he issued on May 1, 2020, pausing all activity in PTAB cases that were remanded to PTAB from the Federal Circuit under Arthrex.[1] Within the order lifting the stay,
This week, in United States v. Arthrex, Inc., the Supreme Court vacated and remanded a decision by the Court of Appeals for the Federal Circuit (“the CAFC”), holding that the administrative patent judges (“APJs”) at the Patent Trial and Appeal Board (“the Board”) are unconstitutionally appointed. While the CAFC came to the same conclusion
In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from challenging Kannuu Pty, Ltd.’s (“Kannuu”) patent in an IPR proceeding. The court held IPR petitions did not fall within the scope
The United States Patent and Trademark Office (USPTO) recently published a decision on petition stating that an inventor must be a natural person, and denied Petitioner’s request to name an artificial intelligence entity as the inventor.
The inventor at issue is an artificial intelligence (AI) system named “Device for the Autonomous Bootstrapping of Unified Sentience”
The Court of Appeals for the Federal Circuit issued its decision in Bozeman Financial LLC v. Federal Reserve Bank Of Atlanta, Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) [hereinafter Bozeman], holding that Federal Reserve banks (hereinafter “the Banks”) are people under the AIA, capable of petitioning for post-issuance review. The Court further
In Customedia Techs., LLC v. DISH Network Corp., the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decisions holding that claims 1-6, 8, 17, and 23 of U.S. Pat. No. 8,719,090 (the “’090 Patent”) and claims 1-4, 6-7, 16-19, 23-24, 26-28, 32-36, and 41 of U.S. Pat. No. 9,053, 494
On December 11, 2019, the Patent Trial and Appeal Board (“PTAB”) designated Ex parte Hannun, 2018-003323 (Apr. 1, 2019) as an informative PTAB decision for applying the United States Patent and Trademark Office’s (“USPTO”) 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) to determine patent eligibility under 35 U.S.C. § 101.
As laid
The Federal Circuit recently addressed the requirement for establishing “nexus” for secondary indicia. On December 18, 2019, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) vacated and remanded a PTAB decision of non-obvious, and ultimately raised the bar a patentee needs to meet to invoke secondary considerations of non-obviousness. In Fox Factory, Inc. v. SRAM, LLC, No. 18-2024 (Fed. Cir. Dec. 18, 2019), the Federal Circuit vacated an inter partes review (“IPR”) final decision holding the claims of U.S. Patent No. 9,182,027 as non-obvious due in large part to a finding of commercial success attributed to the claimed invention. On appeal, the Federal Circuit concluded that the PTAB improperly applied the presumption of nexus between the evidence of commercial success and the claims of the patent. The court held that the proper presumption of nexus can only be achieved by proving that the product sold by the patentee is “essentially the claimed invention.” Id. at 12.
Continue Reading Federal Circuit Raises the Standard of Nexus Requirement for Secondary Indicia of Non-Obviousness
Following on the heels of the United States Patent and Trademark Office’s request for comments, the World Intellectual Property Organization (WIPO) recently released an issues paper on artificial intelligence (AI) and intellectual property (IP) policy. Comments may be submitted by February 14, 2020.
Continue Reading World Intellectual Property Organization Weighs in on Artificial Intelligence and Intellectual Property