The rapid rise of AI used with advertising, marketing and other consumer facing applications has caused the FTC to continue to take notice and issues guidance. For example, the FTC is concerned about false or unsubstantiated claims about an AI product’s efficacy. It has issued AI-related guidance in the past. The following is some recent FTC guidance to consider when referencing AI in your advertising. This guidance is not necessarily new, but the fact that it is being reiterated should be a signal that the FTC continues to focus on this area and that actions may be forthcoming. In fact, the recent guidance states: “AI is important, and so are the claims you make about it. You don’t need a machine to predict what the FTC might do when those claims are unsupported.”…

Continue Reading You Don’t Need a Machine to Predict What the FTC Might Do About Unsupported AI Claims

As patent litigators are well-aware, the Western District of Texas and the District of Delaware, the two most popular venues for patent litigation, each issued orders regulating litigation in their districts in 2022. So as of early 2023, what effect have those orders had on patent filings?…

Continue Reading Early 2023 Update: Where Are Plaintiffs Filing Patent Cases Now?

Mask Work Infringement

In analogizing semiconductor chips to traditional areas of copyright law, the legislative history notes that, just as a plagiarist who copies only one chapter of a book may be held liable for infringement, a person may be liable for copying a part of a mask work if it is a qualitatively important portion that results in substantial similarity.…

Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part II (Infringement and Defense)

Understanding Mask Work

Mask work is a type of intellectual property protection designed to protect layout designs (topographies) of integrated circuits. It is authorized by the federal Semiconductor Chip Protection Act of 1984 (SCPA).…

Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part I (Registration and Inspection)

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners continue to work in the Artificial Intelligence (AI) technology space. A summary of these reminders (and links to more information) are provided herein.…

Continue Reading Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.…

Continue Reading Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part Two of Three

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.…

Continue Reading Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that any validity challenge was required to be brought in that court and that Sarepta’s IPR petitions filed with the Patent Trial and Appeal (“the Board”)  contravened the plain language of the forum selection clause.
Continue Reading Forum Selection Clause Can Preclude PTO Validity Challenges

UPDATE: On Feb. 22, 2022, the Federal Circuit issued an errata to the original decision clarifying that the IPR estoppel only applies to challenged claims. The corrected language reads, in relevant part, that “estoppel applies […] to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” This errata alleviated concerns that the ruling might be interpreted to extend IPR estoppel to unchallenged claims.
…
Continue Reading Recent Expansion of IPR Estoppel Scope Viewed As Victory for Patent Owners

I. Introduction

This is the second article of the multi-part series discussing benefits of prosecuting patents under Patent Prosecution Highway or PPH. The first article can be accessed here. To recap, PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows participating patent offices to share information and to benefit from work performed by other participating patent offices, thereby reducing examination workload and improving quality of patents. Interested readers are invited to read the first article through the link provided.…

Continue Reading Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan