News & Analysis as of

Inventions Patent Litigation

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

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On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...more

White & Case LLP

Federal Circuit Clarifies Standard for Patent Conception in Ongoing CRISPR Dispute

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On May 12, 2025, the U.S. Court of Appeals for the Federal Circuit issued a long-awaited decision in Regents of the University of California v. Broad Institute (Nos. 22-1594, 22-1653) addressing priority for disputed...more

Irwin IP LLP

CAFC Cleaves ‘Conception’ from ‘Reduction to Practice’: Conception Requires Neither Certainty Invention Will Work Nor Successful...

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Regents of the Univ. of California v. Broad Inst., Inc., No. 2022-1594, 2025 WL 1363125 (Fed. Cir. May 12, 2025) - On May 12, 2025, the U.S. Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeals...more

McDermott Will & Emery

Take That Conception Out of the Oven – It’s CRISPR Even If the Cook Doesn’t Know

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Addressing the distinction between conception and reduction to practice and the requirement for written description in the unpredictable arts, the US Court of Appeals for the Federal Circuit explained that proof of conception...more

Alston & Bird

Patent Case Summaries | Week Ending May 16, 2025

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The Regents of the University of California, et al. v. The Broad Institute, Inc., et al., Nos. 2022-1594, -1653 (Fed. Cir. (PTAB) May 12, 2025). Opinion by Reyna, joined by Hughes and Cunningham....more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Revives CRISPR-Cas9 Patent Priority Dispute

The CRISPR-Cas9 patent landscape remains complex and unsettled. The Federal Circuit’s latest decision in University of California v. Broad Institute1 revived the high-stakes dispute between UC2 and Broad3 over foundational...more

BakerHostetler

[Podcast] Make It Plain: Clarity Regarding Obviousness-Type Double Patenting

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In a year defined by landmark decisions, impactful announcements and new standards, clarity in the patent world comes as a welcome relief. It arrived via a federal circuit court decision in August 2024 that settled certain...more

Maynard Nexsen

Patenting Microbial Products: Pitfalls, Value, and Special Concerns

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The use of microorganisms in human industry is ancient, but has increased markedly in recent years. The modern recognition of the role of microbial communities in the human body has intensified innovation in fields like...more

McCarter & English, LLP

Court Short-Circuits Artificial Intelligence Patents: Federal Circuit Tightens Standards for Patent Eligibility

What does it take to patent an invention on artificial intelligence or machine learning? According to a recent federal appeals court decision, it takes more than just applying a known technique to new data. Rather, the patent...more

Baker Botts L.L.P.

Federal Circuit Refines Section 101 Eligibility of Machine Learning Inventions

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On April 18, 2025, the United States Court of Appeals for the Federal Circuit ("Federal Circuit") issued a significant decision in Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Apr. 18, 2025), affirming...more

Hudnell Law Group

Federal Circuit Issues First Word on AI Patent Eligibility

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On April 18, 2025, the United States Court of Appeals for the Federal Circuit affirmed the dismissal of a patent infringement suit brought by Recentive Analytics, Inc. against Fox Corporation. See Recentive Analytics, Inc. v....more

Lowenstein Sandler LLP

Federal Circuit Tightens Standards for AI-related Patent Eligibility

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Summary: In Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437 (Fed. Cir. Apr. 18, 2025), the Federal Circuit delivered a clear warning: simply applying generic AI-based models to new environments is not enough to secure...more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

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Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more

Jones Day

PTAB Pendulum Swings in Favor of Discretionary Denial

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Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings.  ...more

Sunstein LLP

Trade Secret Rights May be Lost Because of A Failure to Review a Competitor’s Prior Art Patent Applications

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A recent decision from a California federal district court should make patent prosecutors and their clients more alert when looking at recent prior art references: they may refer to patent applications filed by competitors...more

IR Global

A Guide to SEP: Standard Essential Patents for Tech Startups

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Join Katherine Evans from Mirkwood Evans Vincent, as she sits down with IR Global’s Expertise Unlocked podcast host Jennifer Riggins to discuss everything you need to know about Standard Essential Patents (SEPs), and the...more

BakerHostetler

If a Claim Limitation Is Inherent, There Is No Question of a Reasonable Expectation of Success in Achieving It

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Does a claim that merely recites an inherent property of an otherwise obvious claim require an additional analysis to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success...more

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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

Miller Canfield

A New Alice Plot Twist - Can a Composition of Matter Be an Abstract Idea?

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The patent world tends to think that the Supreme Court’s framework in Alice is a template for determining the eligibility of software and business method inventions. Under 35 U.S.C. § 101, abstract ideas are not eligible for...more

Hogan Lovells

Japan: Supreme Court Decision — Closing a loophole for patent infringements in cross-border network systems

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On March 3, 2025, the Supreme Court of Japan upheld the original judgment that found patent infringement in respect of the acts performed on a server located outside Japan, virtually affirming the extraterritorial application...more

Smart & Biggar

Avoiding a finding of ambiguity and ensuring patent validity: the importance of a comprehensive disclosure and defining coined...

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On June 7, 2024, the Federal Court issued its Judgment and Reasons in Tekna Plasma Systems Inc v AP&C Advanced Powders & Coatings Inc ( 2024 FC 871), finding all claims of the Defendant’s Canadian Patent No 3,003,502 (502...more

Volpe Koenig

The Obvious Choice? Why Result-Effective Variables Matter in Patent Law

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Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a...more

McDonnell Boehnen Hulbert & Berghoff LLP

One of the Early Appeal Decisions in Quantum Computing Represents a Positive Datapoint

As reported by Quantum Insider, this past week, the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) overturned an examiner's rejections of an application directed to a quantum...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

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While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more

Smart & Biggar

Navigating unity of invention and double patenting issues: practical strategies for patent protection in Canada

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Unity of invention and double patenting law and practice in Canada can create challenges for patent applicants. For example, applicants may not expect a unity of invention objection to be raised, requiring claims to be...more

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