Imagine That IP Law Blog

Part 1 in a 2 Part Series

In the age of creative machines and artificial intelligence, intellectual property law is facing new challenges and questions. As we continue to push the boundaries of what machines can create, the questions of ownership and authorship become more and more complex. An AI that can produce patentable inventions could also be used to pre-empt competitors’ use of the patent system by flooding the space with artificially generated prior art. Courts have yet to address this possibility. Judging by Dr. Stephen Thaler’s description of his DABUS system, the time ... Read More ›

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how ... Read More ›

Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242.  In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous ... Read More ›

On January 12, the United States Court of Appeals for the Federal Circuit (Appeals Court) issued its decision in Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC. The case was an appeal from the United States District Court for the Southern District of Texas (District Court). Grace v. Chandler teaches us that care should be taken to avoid indefinite claim terms when possible. However, when a claim term is questioned, its meaning is ultimately determined in how it is explained in the specification and how it is discussed during prosecution.

In May 2020, Grace sued ... Read More ›

The Director of the USPTO, Kathi Vidal, issued a decision this week raising the likelihood that the Patent Trials and Appeals Board (PTAB) will exercise its discretion to deny the institution of Inter Partes Review (IPR) challenges. Last June, Vidal issued guidance on the discretionary denial standard, which was widely interpreted to be the death knell for discretionary denials. The Director’s decision this week will undoubtedly change that view. It appears that the prospects for discretionary denial are alive and well at the PTAB.

In  COMMSCOPE TECHNOLOGIES LLC, v DALI ... Read More ›

Before examining whether a particular invention is patentable over the prior art, there’s an even more fundamental question: who is the inventor? The U.S. Constitution gives Congress the power to grant exclusive patent rights to inventors, but does not define who or what qualifies as an inventor. Previously, this has been a relatively straightforward issue, with the Federal Circuit noting in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V, 734 F.3d 1315, 1323 (Fed. Circ. 2013), that “inventors must be natural persons and cannot be corporations ... Read More ›

ChatGPT has exploded in the media recently with news stories ranging from educators’ concerns over students using ChatGPT to cheat on assessments, to ChatGPT becoming an existential threat to Google’s online advertising dominance, as well as ChatGPT potentially replacing professionals such as software coders and writers, and even the threat that an artificial intelligence (AI) could take and pass exams for doctors and lawyers.

For those not yet exposed to it, ChatGPT is an online “chat bot” from OpenAI, powered by artificial intelligence (AI), that can engage in a ... Read More ›

The advantages of 3D printing in the automotive industry are clear — reduce the overhead spend on standard manufacturing tools and procedures while also increasing speed of production. Computer-aided design (CAD) software, generally provided in the form of an electronic file for use on a computer, is fundamental to the 3D printing manufacturing process in that the end product is based upon the CAD file. While a company’s actual 3D-printed products can be protected by both design and utility patents, securing the intellectual property of the manufacturing process, including ... Read More ›

One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation. Although there are similarities between these types of proceedings, as IPR/PGR proceedings are also adversarial between the petitioner (i.e., the patent challenger) and the patent owner, there are important differences between the two. Besides the differences in legal ... Read More ›

Discussing the technical advantages of an invention, a standard practice in many jurisdictions such as before the European Patent Office, has long been disfavored in the US.  However, recent Federal Circuit case law suggests that there may be significant value to be gained by discussing the advantages of the claimed invention in the context of the prior art in order to establish patent eligibility under 35 U.S.C. §101.

In the recent Federal Circuit Court of Appeals case of Cooperative Entertainment, Inc. v. Kollective Tech, Inc., the Court reaffirmed the importance of the ... Read More ›