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Federal Circuit Defines Scope of IPR Estoppel

In Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit defined for the first time the scope of inter partes review (“IPR”) estoppel in district court and International Trade Commission (ITC) proceedings: IPR estoppel applies...more

Section 337 Gets a Makeover: Federal Circuit Expands Economic Domestic Industry Criteria

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) recently issued a landmark decision in Lashify, Inc. v. International Trade Commission, expanding what expenditures count to prove the economic prong of...more

[Webinar] Energy Transition: Leveraging Intellectual Property - September 4th, 12:00 pm - 1:00 pm CT

Join Eric Klein and Paige Wright as they speak on “Energy Transition: Leveraging Intellectual Property.” The energy industry is experiencing massive transformation as incentives grow to invest in green technologies. This...more

Why Energy-transition Innovators Need a Sound Patent Strategy — and How to Build One

Recent investment in clean-energy technologies has been nothing short of extraordinary. Fueled in part by generous government incentives designed to accelerate the transition to a lower-carbon economy, clean-energy projects...more

Checkpoints Ahead: Parsing the AI Risk Environment

Since generative AI burst into the mainstream, companies have raced to capitalize on its extraordinary promise. But as with any technological frontier, this promise does not come without risks, and companies can expect to...more

Re-“Designing” a New Standard: The Federal Circuit Aligns Obviousness Test for Design and Utility Patents

In a considerable shift in the law, the Federal Circuit has discarded the long-standing test for determining whether a design patent is invalid as obvious, in favor of the more flexible obviousness test historically applied...more

Critical IP Issues Surrounding the Energy Transition

A host of questions are arising about the intellectual property rights attached to energy transition projects because of enormous investments in the space and the cutting-edge technologies that follow. Energy transition...more

Federal Circuit Reins in PTAB’s Authority in Trademark Cancellation Proceedings

In Great Concepts, LLC v. Chutter, Inc.,1 the Federal Circuit reversed and remanded the Trademark Trial and Appeal Board’s (“Board”) decision cancelling registration of Great Concepts’ trademark due to the filing of a...more

The Battle of the ‘Trons’: SCOTUS Nixes Extraterritorial Application of the Lanham Act

The Supreme Court of the United States recently considered whether portions of the Lanham Act that relate to trademark infringement can be applied to conduct that takes place outside the United States. Abitron Austria GmbH et...more

The Supreme Court Invalidates Functional Genus Claims

In a unanimous opinion in Amgen Inc. v. Sanofi, the Supreme Court held that two functional genus patent claims were not enabled under 35 U.S.C. § 112(a).1 In doing so, it affirmed both the Federal Circuit’s previous decision...more

Your New AI Coworker: How Working with AI Raises New Patent and Copyright Challenges

The machines aren’t coming for your job — they’re here to help. But when humans work with artificial intelligence (“AI”) assistance, who owns the final product? If a person uses an AI tool to invent, is that person the...more

Forum Selection Clauses in Nondisclosure Agreements Can Forfeit the Right to File an IPR Petition

On February 8, the Federal Circuit held that a forum selection clause in a nondisclosure agreement (“NDA”) forfeited the parties’ right to file petitions for inter partes review (“IPR”) to challenge the validity of patents at...more

Western District Of Texas Sanctions Patent Infringement Defendant For Discovery Abuse And Misconduct

On April 6, 2021, the Western District of Texas ordered that preliminary injunction relief was appropriate to prevent irreparable harm to the plaintiff due to the defendant’s “discovery abuse and related misconduct.”...more

Functional Limitations In Biotechnology Risk Invalidity For Lack Of Enablement

On February 11, 2021, the Federal Circuit issued an opinion that suggests that inventions in fields where outcomes are unpredictable, such as biotechnology and chemistry, are more likely to lack enablement if they contain...more

Federal Circuit Holds That The Term “Computer” Is Indefinite Based On Conflicting Positions Taken During Prosecution

On February 10, 2021, the Federal Circuit held that the term “computer” was indefinite because the prosecution history included arguments distinguishing prior art references that relied on conflicting understandings of the...more

Federal Circuit Decision Barring Appointments Clause Challenges By IPR Petitioners Becomes Precedent

On May 5, 2020, the Federal Circuit reissued a previously nonprecedential opinion as precedential that held that inter partes review (“IPR”) petitioners could not benefit from its earlier Arthrex holding to challenge adverse...more

Federal Circuit Rules That Moving Software To The Cloud Alone Is Obvious

On May 5, 2020, the Federal Circuit ruled that claims directed to software executed on a server are obvious in view of prior art that taught performing the same method on a local device. Uber Technologies, Inc. v. X One,...more

Federal Circuit Throws Shade on Sologamy While Interpreting Section 315(c) Contrary To The Patent Trial And Appeal Board’s...

In case your parlance needs updating, the term sologamy refers to a marriage to yourself. Apparently unaware of this trend, the Federal Circuit recently explained that “[a] statute saying that ‘a person may marry any person...more

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