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Patenting Artificial Intelligence Inventions
October 8, 2020

Given the recent growth in practical applications of artificial intelligence (AI), it is not surprising that patent filings covering AI inventions have increased dramatically in the past several years.  As reported last year by the World Intellectual Property Organization, more AI patent filings published in the past six years than had published in the prior 50+ years.  Despite this explosive growth in AI patent filings, and despite the present importance of deep learning and other AI techniques to technological advancement, a scarcity of judicial precedent specific to AI-related patents leaves many open questions regarding whether and how best to patent AI inventions. 

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Using Identical Marks Does Not Necessarily Equal Counterfeiting, Says Ninth Circuit
October 7, 2020

On October 1, 2020, the Ninth Circuit joined several other circuits in holding that the Lanham Act requires a specific finding of a likelihood of confusion to support a trademark counterfeiting claim.  The panel affirmed the district court’s summary judgment of no likelihood of confusion despite the use of an identical mark on a competing product.  The case is Arcona, Inc. v. Farmacy Beauty, LLC.

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Federal Circuit Grants Writ Overturning EDTX’s Decision to Keep Patent Case
October 5, 2020

On September 15, 2020, the Federal Circuit granted HP Inc.’s writ of mandamus overriding another attempt by the Eastern District of Texas (EDTX) to hold onto a patent infringement lawsuit with few ties to EDTX.  The Federal Circuit issued its nonprecedential opinion in Largan Precision Co., Ltd. v. HP Inc., et al., Case No. 2020-140 (nonprecedential). 

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Fuzzy Language Dooms Recycling Patent
October 1, 2020

Recycling a car involves separating the valuable stuff from the garbage.  So does patent litigation.  On September 15, 2020, in IQASR LLC v. Wendt Corp., Case No. 19-2227 (nonprecedential), the Federal Circuit affirmed a decision finding that a patent directed to car recycling separation technologies fell into the latter category because the claim term “magnetic fuzz” was indefinite.

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Translation of Foreign Priority Application Does Not Save Claim from Indefiniteness
September 8, 2020

One of the fundamental requirements for a patent is that the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected.  This is also known as the “definiteness” requirement of 35 U.S.C. §112.   If this requirement is not  met, the claim is considered indefinite and therefore invalid.  In IBSA Institut BioChimique, S.A., Altergon, S.A., IBSA Pharma Inc., v. Teva Pharmaceuticals USA, Inc., Slip Op. 2019-2400 (Fed. Cir. July 31, 2020), a certified translation of a foreign priority application could not save claims in a US counterpart patent from indefiniteness.   

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Math, Sperm Sorting, and Subject Matter Eligibility
August 27, 2020

In XY, LLC et al. v. Trans Ova Genetics, LC, 2020 WL 4378028 (Fed. Cir. July 31, 2020), the Federal Circuit addresses a familiar problem:  If the “inventive” part of a claimed invention resides purely in its math, can routine and conventional physical steps taken in conjunction with that math make the invention subject-matter eligible?  The court answers “yes, at least in some circumstances.” 

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Federal Circuit Issues New Decision on Doctrine of Equivalents
August 10, 2020

On August 3, the Federal Circuit issued a decision addressing, among other things, the doctrine of equivalents (the “DOE”).  The case, Bio-Rad Laboratories, Inc., et al. v. 10X Genomics Inc, provided an opportunity for the Federal Circuit to address long-established DOE principles that it has visited less frequently in recent years than during the 1990s and early 2000s.     

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Res Judicata and Kessler – The Impact of Dismissals with Prejudice on Later Suits Against Customers
August 5, 2020

In In re PersonalWeb Techs. LLC, 2020 WL 3261168 (Fed. Cir. June 17, 2020), the Federal Circuit addresses an issue that we all studied in law school, but that remains tricky when we encounter it in practice:  the preclusive effect of a dismissal with prejudice.  In particular, PersonalWeb discusses both the familiar doctrine of claim preclusion (or, res judicata), and the less familiar Kessler doctrine (which is unique to patent law).  Patent litigators should keep these doctrines in mind whenever they resolve cases.

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“Exceptional Case” Analysis Can Include Other Cases From an Enforcement Campaign
July 9, 2020

The Federal Circuit continues to develop its case law regarding “exceptional” cases under 35 U.S.C. § 285.  Last week, the court held that it was an abuse of discretion for a district court not to consider an unsuccessful plaintiff’s “manner of litigation.”  Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 2020 WL 3551988 (Fed. Cir. July 1, 2020) (“ECT”).

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Federal Circuit Issues New Decision on Indefiniteness
July 8, 2020

On June 30, the Federal Circuit issued a decision invalidating a patent claim on the ground of indefiniteness.  The decision is Pacific Coast Building Products, Inc. v. CertainTeed Gypsum, Inc., et al., Case No. 2019-1524 (Fed. Cir. June 30, 2020) (non-precedential).

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