Imagine That IP Law Blog

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

The U.S. Patent and Trademark Office (USPTO) recently announced on December 2, 2023 the Semiconductor Technology Pilot Program (STPP), which is designed to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 by expediting the examination of patent applications related to semiconductor technology.  More specifically, the STPP is designed to encourage research, development, and innovation in semiconductor manufacturing.

Under the STPP, an applicant must file a timely “petition to make special” using the required petition form (Form ... Read More ›

The recent September 2023 Federal Circuit decision in Elekta Ltd. v. Zap Surgical Systems, Inc., Case No. 21-1985 (Fed. Cir. 2023) shows that patent applicants should give consideration to formally addressing – on the record during prosecution - the relevance of the prior art references disclosed in their information disclosure statements (“IDSs”) to avoid later misinterpretation by tribunals in potential future Inter Partes Review (IPR) proceedings and court decisions.  Such misinterpretation may lead a tribunal to combine IDS references from irrelevant fields and ... Read More ›

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including ... Read More ›

In the case of In re Cellect, the Federal Circuit upheld a United States Patent and Trademark Office (USPTO) decision that the patentee’s (Cellect’s) patents were unpatentable due to Obviousness-type Double Patenting (ODP). In reaching its decision, the Court ruled that Patent Term Adjustments (PTA) and Patent Term Extensions (PTE) should be treated differently when considering ODP.

In particular, the Court held that when different patent family members have different expiration dates based on PTA, the patent family members that expire on an earlier date can be relied upon ... Read More ›

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a ... Read More ›

The Federal Circuit issued a decision in In re Cellect on August 28, 2023 which may have far-reaching consequences during the assertion of one or more patents that are related members in a patent family, and that include claims that may be subject to an argument for invalidity for obviousness-type double patenting (ODP). The Federal Circuit found that when two or more related family member patents in a patent family cover similar enough or overlapping inventions, ODP can be applied to invalidate one of the patents where the related family member patents expire at different times due to ... Read More ›

AI-generated images have taken the internet by storm. From (occasionally terrifying) “deep fakes” to whimsical images of King Charles breakdancing, AI-generated images have entered the mainstream.

On August 18^th, in the case Thaler v. Perlmutter et al., Case No. 1:22-cv-01564 (U.S. District Court for the District of Columbia), Judge Howell of the DC Circuit held that artificial intelligence cannot be an author under U.S. Copyright Law.

The copyright application before the Court claimed that a particular artificial intelligence (“AI”) system was the “author” and ... Read More ›

In an Inter Partes Review (IPR), the burden of proof and persuasion lies with the petitioner to demonstrate "unpatentability by a preponderance of the evidence" under 35 U.S.C. § 316(e). “[T]hat burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Accordingly, to invalidate a claim in an IPR, the petitioner must establish by a preponderance of the evidence, that a claim in a patent is unpatentable.

To prove that a claim is unpatentable for violating “obviousness” requirements under 35 U.S.C §103, a ... Read More ›