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Federal Circuit Tells Patent Office to Limit Scope of Design Patents, Overturning Patent Office Precedent

Federal Circuit Tells Patent Office to Limit Scope of Design Patents, Overturning Patent Office Precedent

On October 4, 2021, the Court of Appeals for the Federal Circuit told the Patent Office that the way it has been reviewing design patent applications is wrong, and that a design patent claim must be limited to the article of manufacture identified in the claim. In re: SurgiSil, L.L.P., et al, No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021). SurgiSil filed a design patent application claiming an “ornamental design for a lip implant as shown and described.” The Patent Office rejected the claim as anticipated, or not novel, in light of an art tool called a stump. Images of the claimed lip implant design (first image) and the art tool stump (second image) are shown below. In making the rejection, the Patent Office cited its own Manual of Patent Examining Procedure, MPEP § 1504.02, and a 1956 Court of Customs and Patent Appeals case, In re: Glavas, 230 F.2d… Continue Reading

Protecting IP in Autonomous Driving

Protecting IP in Autonomous Driving

Modern autonomous driving technology often entails applications of Artificial Intelligence (AI) to facilitate navigation and safety. For example, autonomous vehicles can often be equipped with multiple sensors around the vehicle, such as LiDAR, radar, cameras, thermometer, accelerometer GPS, Wi-Fi modules, and/or the like, which are configured to capture data reflecting the environment where the vehicle is located. The captured sensor data can then be fed into an AI system that blends the various sensor data to generate a navigation command that autonomously control the movement of the vehicle with little or no human intervention. One example of AI technology used in autonomous driving includes automotive radar technology. An autonomous vehicle can be equipped with a radar platform, which utilizes analog or digital antennas operating at millimeter wave frequencies (e.g., 77GHz) to obtain radar data for long-range sensing, in particular in difficult weather. This type of radar system can be particularly… Continue Reading

What Are Standard Essential Patents and Why Do I Need to Know About Them?

What Are Standard Essential Patents and Why Do I Need to Know About Them?

When you woke up this morning, you probably unplugged your cell phone from its charger, looked at it, and saw a Wi-Fi icon at the top. Maybe over breakfast, you watched a couple of clips from the news. Just like that, without even thinking about it, you have used multiple technologies covered by standards, and those everyday actions implicated hundreds of standard essential patents, or SEPs. Broadly speaking, a standard is a document or a technology that is defined by a standards body in a standard-setting process. Standards are often the result of many meetings over many years by industry representatives who work together to come to a consensus on a new technology. Of course, these companies also work separately to develop their own technologies, but the goal of working on a standard together is interoperability. Some commonly-known standards are USB, LTE, Wi-Fi, and others. Standards are developed to make… Continue Reading

Brave New World: How AI Tools Are Used in the Legal Sector

Brave New World: How AI Tools Are Used in the Legal Sector

From hiring to contracts, AI’s use in legal departments is increasing. But that also means planning for new types of risks. In our previous article, we explored several legal implications that artificial intelligence will have on patent law, and the availability of patent protection for AI inventions. In this article, we explore the impact of AI in the legal industry, including new AI tools for legal departments, and how to plan for risk when using these AI tools. AI in the Legal Sector Machine learning is an application of AI in which AI’s algorithms learn from past experiences and then apply this knowledge to predict future outcomes. Because there are many similarities between the law and machine learning, the law is conducive to AI and its machine learning applications. For example, both the law and AI machine learning infer rules from historical examples to apply to new situations. Legal rulings… Continue Reading

Obviousness by Resort to Common Sense—Practice Tips for 2020

I. Introduction In Arendi v. Apple, the Federal Circuit outlined limited circumstances in which reliance on common sense is acceptable in evaluating obviousness of a claimed invention. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361-62 (Fed. Cir. 2016). These limited circumstances are sometimes referred to as the Arendi common sense standard or simply, the Arendi standard. In the first half of 2020, two Federal Circuit cases found patent claims obvious by resort to common sense — Philips v. Google in January 2020[1] and B/E Aerospace v. C&D Zodiac in June 2020.[2] In this article, we look at how the court applied the Arendi standard in these and other cases, and offer practice tips for patent challengers resorting to common sense to establish obviousness.  Likewise, for supporting patentability, practice tips are provided for patent applicants facing obviousness rejections based on common sense.       II. The Arendi Common Sense Standard In… Continue Reading

Fast Tracking Your Ex Parte Patent Appeals May Be Appealing: United States Patent & Trademark Office (USPTO) Announces New Pilot Program

Starting July 2, 2020, ex parte appeals to the Patent Trial and Appeal Board (PTAB) can be expedited under the new Fast-Track Appeals Pilot Program. It currently takes approximately 15 months for the PTAB on a typical appeal when decisions are issued in the order that the appeals are docketed, and this delay is often longer for certain technology centers. The new Pilot Program advances an appeal out of turn, and guarantees that the PTAB will issue a decision within 6 months of the appeal’s entry into the program. Ex parte appeals are available to patent applicants whose claims have been twice rejected during examination, which typically happens when an examiner issues a final rejection. Such appeal requires that the applicant file a Notice of Appeal and Brief on Appeal, as well as pay the Notice of Appeal fee and pay the appeal forwarding fee after the Examiner’s Answer is issued. The applicant… Continue Reading

No Need to Neglect Nexus: Prosecution Lessons from FOX Factory v. SRAM

No Need to Neglect Nexus: Prosecution Lessons from FOX Factory v. SRAM

A. Obviousness analysis: secondary considerations, nexus, and the presumption of nexus On December 18, 2019, in FOX Factory, Inc. v. SRAM, LLC[1] (“Fox Factory“), the Court of Appeals for the Federal Circuit addressed the conditions under which a patent owner is entitled to the presumption of a nexus between a claimed invention and evidence of secondary considerations.  Secondary considerations or objective indicia of non-obviousness, if present, must be considered in determining whether a patent claim is obvious.[2]  Evidence of secondary considerations may help demonstrate that the claim is not obvious, even when the prior art would have suggested that the claim is obvious.[3]  Secondary considerations include long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise.[4]  To be relevant, secondary considerations evidence must be commensurate in scope with the claimed invention.[5]  In that regard, there must be a “nexus,” or sufficient connection, between the claimed… Continue Reading

Logos and the Ordinary Observer Test

Logos and the Ordinary Observer Test

The Federal Circuit recently held in Columbia Sportswear North America, Inc. v Seirus Innovative Accessories, Inc. that logos may be considered in the ordinary observer test.[1]  Seirus Innovative Accessories (“Seirus”) makes and sells cold weather gear, and a lower court had ruled on summary judgment that U.S. Patent No. D657,093 to Snyder was infringed by Seirus’s gloves and glove liners:  The Federal Circuit reversed the summary judgement in part because the lower court improperly disregarded Seirus’s logo in the ordinary observer test. The ordinary observer test is used to determine whether a claimed design is infringed and provides that an accused product infringes a claimed design if the two designs are substantially the same in the eye of an ordinary observer.   In this case, Seirus’s gloves and glove liners included a logo that repeatedly interrupted a wave design, and Seirus argued that?due to the logos?the gloves and glove liners were… Continue Reading

“Consisting Essentially Of” Claims Nixed at Federal Circuit

“Consisting Essentially Of” Claims Nixed at Federal Circuit

In HZNP Medicines LLC v. Actavis Laboratories UT, Inc. (Fed. Cir. 2019)[1], the Federal Circuit affirmed the district court’s holding that the transitional phrase “consisting essentially of” was indefinite as used in several claims of patents owned by HZNP Medicines LLC and Horizon Pharma USA, Inc. (“Horizon”).[2]  Slip Op. at 2, 33.  Horizon’s patents cover its PENNSAID 2% product, which is a Non-Steroidal Anti-Inflammatory Drug (NSAID) and the first FDA-approved twice-daily topical diclofenac sodium formulation for the treatment of pain of osteoarthritis of the knees.  Claim 49 of U.S. Patent No. 8,252,838 (the “‘838 patent”) is illustrative of Horizon’s formulation patents and recites: A topical formulation consisting essentially of: 1-2% w/w diclofenac sodium; 40-50% w/w DMSO; 23-29% w/w ethanol; 10-12% w/w propylene glycol; hydroxypropyl cellulose; and water to make 100% w/w, wherein the topical formulation has a viscosity of 500-5000 centipoise. Prior to the appeal to the Federal Circuit, the… Continue Reading

Did the Federal Circuit Just Raise the Evidentiary Bar for Establishing Obviousness?

Did the Federal Circuit Just Raise the Evidentiary Bar for Establishing Obviousness?

According to the panel in OSI Pharmaceauticals, LLC v. Apotex, Inc., Slip Op. No. 2018-1925 (Fed. Cir. Oct. 4, 2019), the answer to the question posed in this article’s title is a solid no.  But considering the opinion’s precedential nature and the facts in the case, the Federal Circuit may have just given patentees extra ammunition to defeat an obviousness challenge on evidentiary grounds.  The Federal Circuit analyzed whether certain pharmaceutical method claims related to a treatment for lung cancer were obvious and concluded that the lack of efficacy data in asserted prior art showed a person of ordinary skill would not have a reasonable expectation of success in applying their teachings.  This holding reversed an obviousness determination by the PTAB in a preceding IPR of the patent at issue, and shows that for challengers mounting an obviousness challenge, prior art containing data-based evidence may be needed to be successful,… Continue Reading

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