IP(DC) Podcast: Patent Battles – New Patent Initiatives on the Hill & Notable CAFC/SCOTUS Decisions
Podcast: Patentable Subject Matter in 2019
The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under §...more
This Federal Circuit opinion analyzes the “very demanding standard” of judicial correction of erroneous wording of a patent claim. Background - Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent...more
In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d)....more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious....more
In a recent patent infringement case, Judge J. Paul Oetken (S.D.N.Y.) awarded attorneys’ fees under the Patent Act because the case was “exceptional,” but denied fees under 28 U.S.C. § 1927 and the court’s inherent authority...more
Welcome to TC’s IP Corner® Halloween edition. We are excited to share this quarterly newsletter with our clients, colleagues, and friends as we examine hot topics, interesting cases, and weird yet entertaining happenings in...more
On October 17, 2025, almost one month after being sworn in as the Director of the USPTO, John Squires returned institution authority for proceedings under the America Invents Act (“AIA”) to himself. Previous Directors had...more
In the first proposed rulemaking issued under Director Squires, the USPTO proposes to modify the rules of practice relating to discretionary denials to institute Inter Partes Review (IPR) proceedings. The proposed rules...more
The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the...more
A recent decision from the Canadian Federal Court of Appeal (FCA) underscores the importance of implementing multi-layered patent docketing systems to prevent the loss of rights due to unpaid maintenance fees. ...more
On September 5, 2025, the Federal Court of Appeal (FCA) set aside the decision of the Federal Court (FC) in Matco Tools Corporation v Canada (Attorney General), 2025 FC 118, and restored a decision of the Commissioner of...more
Patent diligence in the context of M&A and other types of commercial transactions typically involves confirmation of a patent’s chain-of-title ownership, from initial inventors through to the current assignee-owner. The...more
Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more
Whether AI can be an “inventor” was the key issue in an important recent ruling of the Canadian Patent Appeal Board (the “PAB”). In Thaler, Stephen L. (Re), 2025 CACP 8, the PAB had to decide whether Canadian Patent...more
In this edition of The Precedent, we outline the decision in Steuben Foods Inc. v. Shibuya Hoppmann Corp. This case addresses whether the reverse doctrine of equivalents (RDOE) is a viable defense to patent infringement....more
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
In Matco Tools Corporation v Canada (Attorney General), 2025 FC 118 (Matco Tools), the Federal Court found that a decision by the Commissioner of Patents to refuse to reinstate a patent application following the failure to...more
On January 24, in Steuben Foods, Inc v. Shibuya Hoppman Corporation, the Federal Circuit found that Steuben had made a compelling argument that the common law Reverse Doctrine of Equivalents (RDOE) did not survive the 1952...more
Steuben Foods, Inc. v. Shibuya Hoppman Corp., Appeal No. 2023-1790 (Fed. Cir. Jan. 24, 2025) In its only precedential patent decision this week, the Federal Circuit addressed an “anachronistic exception, long mentioned but...more
As companies—and more recently, courts—have struggled to address the role of artificial intelligence (AI) in innovation, legislators are embroiled in a struggle of their own. Over the past two years, the Senate and House have...more
The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more
Roughly half the world’s population menstruates at some point in their lives. While menstruation is essential for human life and a critical indicator of health, it is plagued with stigma. Around the world people who...more
The utilization of artificial intelligence (“AI”) is becoming ubiquitous across a wide range of industry sectors. The biotech industry is no exception. AI-driven platforms have become increasingly useful to biotech...more
The Federal Circuit determined that if a company misleads consumers about the nature of a product by making false patent marking claims, it can be held liable under the Lanham Act. False marking claims under the Lanham Act...more