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Patterson Belknap Webb & Tyler LLP

Third Time’s the Charm: Judge Hellerstein Denies Summary Judgment on Previously Dismissed Patent Claims Against Google

On August 22, 2024, Judge Alvin K. Hellerstein (S.D.N.Y.) denied Google LLC’s motion for summary judgment that (1) it has not infringed two asserted patents; and (2) the two patents are invalid for lack of written...more

Knobbe Martens

Federal Circuit Review | June 2024

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Reliably Determining Reasonable Royalty Rates from Lump Sum Licenses - In Ecofactor, Inc. V. Google LLC, Appeal No. 23-1101, The Federal Circuit held that license agreements containing a lump sum payment “based on” a royalty...more

Fenwick & West LLP

Recent PTAB Decision Involving Wildseed Mobile and Google Includes Rare Dissent

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The Patent Trial and Appeal Board (PTAB) recently made a notable pair of decisions invalidating patents held by Wildseed Mobile LLC as obvious over art asserted by Google. Wildseed Mobile, a mobile technology company,...more

Knobbe Martens

Reliably Determining Reasonable Royalty Rates From Lump-Sum Licenses

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Summary:  License agreements containing a lump-sum payment “based on” a royalty rate may provide reliable evidence of a reasonable royalty rate for the licensed patent. EcoFactor sued Google for patent infringement over...more

Sunstein LLP

Trial Court Ruling Threatens Patent Portfolio Development

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A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against...more

Kilpatrick

4 Key Takeaways - Prosecution Laches: A Potential Threat to Continuation Application Practice

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Kilpatrick’s Darin Gibby and David Hsu presented a session during the firm’s annual “SKI-LE” in Vail, Colorado, exploring prosecution laches and continuation application strategies in light of the recent decision in Sonos v....more

Knobbe Martens

Federal Circuit Review | February 2024

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The Outcome of the PTAB’s Analysis May Determine Whether the PTAB Engaged in Claim Construction - In Google LLC v. Ecofactor, Inc., Appeal No. 22-1750, the Federal Circuit held that the outcome of the PTAB’s analysis of...more

Kilpatrick

PTAB Alert: Implicit Claim Construction and the Standard of Review

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Today, the Federal Circuit issued a precedential decision vacating and remanding a PTAB decision based on an erroneous implicit claim construction. Google v. EcoFactor, Case Nos. 2022-1750, 2022-1767 (Fed. Cir. Feb. 7, 2024)....more

Rothwell, Figg, Ernst & Manbeck, P.C.

“AI-Related” Chip Patents - 1.6 Billion Reasons Why Google May Have Agreed to Settle

Recent headlines have focused on the $1.6 billion damages claim and Google’s possible exposure in Singular Computing’s patent infringement lawsuit involving Google’s “AI-related” chips. $1.6 billion is certainly not chump...more

Holland & Knight LLP

The Coming Shift from Patent to Trade Secret Protection for Generative AI Inventions

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Generative artificial intelligence (AI) has the remarkable ability to develop novel solutions to problems, and patent law has historically protected those solutions. Under current statutes and jurisprudence, however, only...more

Morrison & Foerster LLP

Sonos v. Google Breathes New Life into Prosecution Laches Doctrine

A recent district court decision in Sonos v. Google has set forth a novel application of the prosecution laches doctrine to a patent with a post-1995 priority date. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320...more

Mintz - Intellectual Property Viewpoints

AI-Based Patent Applications: Recent History and the Future

The emergence of artificial intelligence (AI) as a field of technology has correlated with an increase in patent application filings on AI-related inventions over the past two decades. With more filings than ever, businesses...more

Troutman Pepper

EDVA Judge Rules That Geolocation Patents Are Invalid Under 35 U.S.C. § 101

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On September 18, in identical opinions issued in separate cases against Google and Apple, EDVA District Judge Michael Nachmanoff ruled that four patents directed toward geolocation of mobile devices claimed patent-ineligible...more

White & Case LLP

AI Legal News Summer Roundup: Edition 5

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...We round out our series with a summary of several developments around the world that focus on the adequacy of the various jurisdictions' laws in addressing the opportunities and risks arising from generative AI....more

Knobbe Martens

PTAB Need Not Consider Mountain of Evidence Submitted Without a Map

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PARUS HOLDINGS, INC. V. GOOGLE LLC - Before Lourie, Bryson, and Reyna.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary:  PTAB did not err in declining to consider...more

Dorsey & Whitney LLP

The Supreme Court Update - May 18, 2023

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Today, the Supreme Court of the United States issued six decisions: Amgen Inc. v. Sanofi, No. 21-757: This case addressed the Patent Act’s “enablement” requirement—the provision that requires a patent applicant to describe...more

Goodwin

Issue 41: PTAB Trial Tracker

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Derivation Showing Overcome by Evidence of Respondent’s Prior Conception in Rare Derivation Proceeding - The Board issued a decision in a rare derivation proceeding filed by Global Health Solutions LLC (“Petitioner”)...more

WilmerHale

PTAB/USPTO Update - March 2023

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The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Federal Circuit Rejects Additional Challenges to USPTO Authority After Arthrex

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...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Google LLC v. IPA Technologies Inc., 34 F.4th 1081...

Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...more

WilmerHale

Federal Circuit Patent Watch: Prosecution laches is an equitable and flexible doctrine that requires considering the totality of...

WilmerHale on

Precedential Federal Circuit Opinions - 1.  PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. [OPINION]  (2021-2275, 1/20/23) (Reyna, Chen, and Stark) - Reyna, J. Affirming district court’s decision that asserted...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Knobbe Martens

Raise It or Lose It! The Federal Circuit Will Not Address Obviousness Arguments First Raised by the PTO on Appeal

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In Re Google LLC - Before: Moore, Lourie, and Prost. Appeal from the Patent Trial and Appeal Board. Summary: The PTO’s arguments on appeal did not reflect the record below....more

Haug Partners LLP

Google v. Hammond: IPR and Collateral Estoppel

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On December 8 2022, the Federal Circuit in Google LLC v. Hammond Development Int’l, Inc. affirmed in part and reversed in part the PTAB’s final written decision of an IPR holding that Google failed to prove that certain...more

Goodwin

Issue 39: PTAB Trial Tracker

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USPTO Director Considers Changes to Director Review Process - Recently, USPTO Director Kathi Vidal stated that she is rethinking the Director Review process and is considering updating the current guidance on Director...more

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