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Akin Intelligence - November/December 2024

Welcome to the November-December edition of Akin Intelligence. As the end of 2024 approached, the European Union (EU) sustained progress on guidance and supporting materials for its AI Act and international AI Safety...more

District Court: Factual Disputes Preclude Application of Safe Harbor to Gene Editing Technology at the Pleading Stage

The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the...more

Akin Intelligence - September/October 2024

Welcome to the Akin Intelligence September-October recap. Around the one-year anniversary of the AI Executive Order, the White House announced that agencies had carried out their directives. Members of Congress introduced a...more

'Design Impact' and 'Association' Surveys Deemed Admissible in Design Patent Infringement Case

A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the...more

Federal Circuit Rejects Timing Requirement for Expert Qualification Under Kyocera

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine...more

Akin Intelligence - July 2024

Welcome to the July edition of Akin Intelligence. This month, United States agencies released several key pieces of artificial intelligence (AI) guidance, including patent eligibility guidance from the United States Patent...more

Akin Intelligence - June 2024

Welcome to the June edition of Akin Intelligence. This month, the General Services Administration (GSA) launched its first AI-focused cohort of Presidential Innovation Fellows (PIF), bringing together experts from across the...more

Akin Intelligence - April/May 2024

Welcome to the April-May edition of Akin Intelligence. This edition is a double header, covering both months as we prepare for the launch of our new AI Hub—a one-stop resource for AI coverage that will launch soon. Starting...more

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness – USPTO Follows Quickly with Guidance

In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents.  The challenged framework, derived from two cases, In re Rosen, 673 F.2d...more

Akin Intelligence - March 2024

Welcome to the March edition of Akin Intelligence. This month, the EU AI Act was approved by the European Parliament, moving one step closer to becoming the first major AI law. In the U.S., the DOJ brought criminal charges...more

Handshake Agreement to Assign Does Not Provide Basis for Common Ownership to Exclude Prior Art

The Patent Trial and Appeal Board recently found claims directed to a web-based point of sale system and method unpatentable as obvious after conducting a thorough examination of whether a reference with one common inventor...more

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

PTAB: Merely Showing That a Reference Was Available on the Internet Does Not Establish ‘Public Accessibility’

The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more

Akin Intelligence - January 2024

Welcome to the January edition of Akin Intelligence. Artificial Intelligence (AI) remains a key area for state and federal legislators in the new year. State executives and legislators continue to propose AI-related...more

Akin Intelligence - November 2023

Welcome to the November edition of Akin Intelligence. Looking back, October 2023 may be remembered as the month when the U.S. government tried to assume the mantle of global leadership on responsible artificial intelligence...more

Defendant’s Non-Party Status to IPRs Dooms Stay Request, Despite Agreement to Be Bound by IPR Estoppel

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more

Akin Intelligence - October 2023

Welcome to the October edition of Akin Intelligence. We continue to see bipartisan and international interest in artificial intelligence (AI) regulation. In the executive branch, agencies are working towards developing...more

Akin Intelligence - August 2023

Welcome back to Akin Intelligence: Hot AI Summer Edition! This month’s newsletter reflects the ongoing and increasing global activity around artificial intelligence (AI), including more proposed AI legislation and court...more

Akin Intelligence - July 2023

Welcome to the July edition of Akin Intelligence. In this month’s AI news, the U.S. Senate receives member-only briefings on AI, U.S. states continue to debate and legislate on AI issues, the U.S. prepares new AI-related...more

Akin Intelligence - June 2023

Welcome back to Akin Intelligence! May featured major congressional hearings and state action in the United States, calls from industry and lawmakers for artificial intelligence (AI) regulation, and significant...more

Generic’s Conversion from Paragraph IV to Section viii Upends Subject Matter Jurisdiction on Declaratory Judgment Counterclaims

The District Court of Delaware dismissed a generic drug company’s declaratory judgment counterclaims of non-infringement and invalidity, finding that the court no longer had subject matter jurisdiction after the generic...more

PTAB Applies Director’s Guidance and Holds that Compelling Evidence of Unpatentability Precludes Fintiv Denial

In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more

Federal Circuit Confirms “Inventor” Must Be Human, Not AI

Key Points - On August 5, 2022, the Federal Circuit held in Thaler v. Vidal that the term “inventor” under the United States Patent Act must be a human being. This ruling precludes patent protection for inventions...more

USPTO: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more

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