Imagine That IP Law Blog

UPDATE:  On September 30, 2024 The United States Patent and Trademark Office  announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. See The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened ... Read More ›

The case of Contour IP Holding LLC v. GoPro, Inc. is the first time since October 2021’s Cosmokey Sols. GMBH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091  where the U.S. Court of Appeals for the Federal Circuit has reversed a district court holding of ineligibility under 35 U.S.C. § 101. Accordingly, the Federal Circuit’s September 9, 2024 decision provides valuable insights into how patent eligibility is assessed, particularly for innovations related to video technology.

Background of the Case
Contour IP Holding LLC (“Contour”) filed suit against GoPro, Inc. (“GoPro”) for ... Read More ›

On September 3, 2024, the United States Court of Appeals for the Federal Circuit rendered a significant decision in Broadband iTV, Inc. v. Amazon.com, Inc., which reaffirms the stringent approach towards patent eligibility under 35 U.S.C. § 101. The case concerned five patents owned by Broadband iTV (BBiTV), all related to video-on-demand technology and electronic program guides. BBiTV accused Amazon of infringing these patents, but Amazon successfully moved for summary judgment on the grounds that the patents claimed ineligible subject matter. The Federal Circuit affirmed ... Read More ›

In the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd., the Federal Circuit addressed the issue of obviousness-type double patenting (ODP) concerning claim 40 of U.S. Patent No. 7,741,356 (the '356 patent). This patent was challenged based on the assertion that it was invalid due to ODP over two related patents, U.S. Patent Nos. 8,344,011 (the '011 patent) and 8,609,709 (the '709 patent). The district court initially ruled in favor of invalidity, determining that because the '356 patent expired after the '011 and '709 patents—despite sharing a common priority ... Read More ›

Software development has become a driving force behind innovation and progress across many industries. A key factor in this development is open source software, which has transformed the way technology is created and shared. In this article, we’ll discuss open source software, the risks associated with using such software and strategic insights for corporations who use open source software.

What is Open Source Software?
Open source software (OSS) is computer software that is licensed in a way that allows its source code to be publicly available. This allows anyone to view ... Read More ›

On Tuesday, the Federal Circuit issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, case number 21-2348 (Fed. Cir. May 21, 2024) (en banc) overruling decades long precedent for challenging design patents based on obviousness under 35. U.S.C. § 103.

The prior test, known as Rosen-Durling, required as a primary reference an earlier design that had "basically the same" visual impression as the patented design, to which features could be added from additional prior art designs that are "so related" to it that the appearance of features in one design ... Read More ›

Artificial Intelligence (AI) is all the rage and grabs the public’s attention for its almost instantaneous song writing feats to creating deep fakes of all sorts. The possibility of having an almost instantaneous answer to a problem may prompt an employee to seek the answer AI can provide. Even if your company’s employee understands that the initial AI answer may be refined by follow up questions, this does not mean that the final result is not an intellectual property problem for your organization. Many companies believe their operations are such that the risk of IP infringement ... Read More ›

At times, corporate stakeholders may consider IP due diligence as slowing down business instead of creating and preserving value. However, pro-active trademark portfolio development and management can often streamline business resources, help jumpstart new brand initiatives, generate added asset valuations, and minimize downtime when expanding into new territories. This article discusses important trademark basics as well as common questions and issues in-house counsel often encounter during due diligence or IP audits.

What is a Trademark?
At a very high level, a ... Read More ›

In 2022, when asked whether an artificial intelligence could be an inventor on a patent, the United States Court of Appeals for the Federal Circuit definitively answered “no.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). But does this mean that inventions made with AI systems are completely ineligible for patenting? In a new memo published Tuesday in the Federal Register, the United States Patent and Trademark Office (USPTO) also says “no.”  “Inventorship Guidance for AI-assisted Inventions,” 89 FR 10043 (USPTO, February 13, 2024).

In Thaler v. Vidal, the ... Read More ›

When drafting method claims, a strategic patent practitioner must keep in mind whether any portion of the claim language will be interpreted by a Patent Examiner, PTAB tribunal, or Federal Circuit as conditional. Initial considerations may include whether conditional claim language will even serve the objective of protecting an invention and what types of claim terms may explicitly or implicitly invoke a conditional limitation. If claims include a conditional limitation, how might that affect an Examiner’s prior art search, and what would be required for infringement? A ... Read More ›