PODCAST: Williams Mullen's Trending Now: An IP Podcast - Patent Searching
The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more
Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more
Blockchain is becoming central to more FinTech patent portfolios than ever – but it’s harder to obtain protection on blockchain than most other technologies. The US Supreme Court’s decision in Alice v. CLS Bank (2014)...more
The almost-full Federal Circuit (minus two judges) has overturned the Rosen-Durling test for determining design patent obviousness under 35 U.S.C. § 103. Under 35 U.S.C. § 103, A patent for a claimed invention may...more
Before Lourie, Hughes, and Stark. Appeal from the U.S. District Court for the Eastern District of Texas. Summary: An infringement judgment is only sufficiently “final” to be immune from a later finding of unpatentability if...more
In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more
The US Patent and Trademark Office (USPTO) has published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills in the arts are made to determine if an invention is patentable...more
To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following....more
On April 30, 2024, the U.S. Patent and Trademark Office (PTO) issued a Request for Comment on how AI technology could affect the PTO’s evaluation of patentability, particularly with respect to qualifying prior art and the...more
In the 1950’s, Alan Turing famously asked, “Can machines think?” Decades later, artificial intelligence—a term coined after Turing’s death—has become a facet of our everyday lives. Artificial Intelligence (AI) can be used...more
Artificial intelligence (AI) and machine learning (ML) are ushering in a new era in drug discovery. The AlphaFold2 system developed by Google’s Deepmind was able to predict the 3D structures of over 200 million proteins -...more
The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more
The Federal Circuit has affirmed a lower court decision that patent claims for methods and systems for improving how search results are displayed to users are patent-ineligible. The case is IBM Corp. v. Zillow Group, Inc....more
Standards for patenting antibodies have substantially tightened over the last few years restricting scope of antibody claims—or, in some cases, undermining the validity of granted patents. Most recently, Singapore updated...more
A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most...more
The Court of Appeals for the Federal Circuit recently addressed the issue of “analogous prior art,” a patent law doctrine fundamental to the legal determination of whether a patent is invalid as obvious over the prior art....more
On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more
If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also...more
A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and...more
In UCB Inc. v. Actavis Laboratories UT Inc., the Federal Circuit affirmed the district court’s judgement of invalidity on obviousness grounds but reversed the finding of anticipation. In reaching its decision on anticipation,...more
Apple Inc. v. Zipit Wireless, Inc. (IPR2021-01124, -01125, -01126, -01129) - Director Kathi Vidal has issued a new precedential decision sua sponte that impacts the standard for abandonment of contest in inter partes...more
The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings. In American...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more
For investors in innovation, it is a priority to count on legal mechanisms to secure some level of exclusivity in the exploitation of their innovations, to seek a return on their investment. The first legal alternative...more