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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

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

Michael Tobin Associate Haynes and Boone, LLP 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… 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

Chevron Deference and the USPTO’s Determination of Applicant Delay in the Calculation of Patent Term Adjustment

Chevron Deference and the USPTO’s Determination of Applicant Delay in the Calculation of Patent Term Adjustment

Angela Oliver, Associate, Haynes and Boone, LLP With administrative law principles becoming increasingly important in patent law, a recent decision from the Federal Circuit highlights the relevance of those principles in patent prosecution.  In Intra-Cellular Therapies, Inc. v. Iancu,[1] the Federal Circuit extended Chevron deference to the USPTO’s determination that an applicant’s failure to submit a proper reply to a final Office action constituted “fail[ure] to engage in reasonable efforts to conclude prosecution of the application” under 35 U.S.C. § 154(b)(2)(C)(i), thus resulting in the accrual of applicant delay for patent term adjustment purposes.  Congress set forth the framework for calculating patent term adjustment (“PTA”) in 35 U.S.C. § 154(b) (“the PTA statute”).  Section 154(b)(1) enumerates the types of Patent Office delay that will lead to PTA accrual, while § 154(b)(2) provides that PTA may be reduced for delays caused by an applicant.  The dispute in Intra-Cellular Therapies pertained to the calculation of… Continue Reading

Section 112 Indefiniteness Is Still a “Lofty” Invalidity Attack

Jason Whitney, Counsel, Haynes and Boone, LLP After the U.S. Supreme Court tightened the requirements of 35 U.S.C. Section 112 in Nautilus, Inc. v. Biosig Instruments, Inc. by holding that claims must describe “the scope of the invention with reasonable certainty,”[1] some envisioned the possibility of a reinvigorated indefiniteness standard standing as a bulwark against overly broad or vaguely drafted patent claims. Indeed, just months after Nautilus, the Court of Appeals for the Federal Circuit hinted at such a future with Interval Licensing LLC v. AOL, Inc., which established the rule that terms of degree “must provide objective boundaries” for claimed inventions.[2] But as the Federal Circuit has continued to define the contours of Nautilus over the following years, indefiniteness attacks have met uneven success and produced inconsistent application of Section 112. The Federal Circuit’s recent opinion in Guangdong Alison Hi-Tech Co. v. ITC,[3] which examined the term of degree… Continue Reading

No Nonce-nse: MTD Products Inc. v. Iancu Untangles Means-Plus-Function Interpretation

    In MTD Products Inc. v. Iancu[1], the U.S. Court of Appeals for the Federal Circuit described how to identify a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6[2].  In particular, the court clarified that the question of whether § 112, ¶ 6 applies is distinct from the determination of what structure corresponds to the means-plus-function limitation[3], and held that the description in the specification of corresponding structure does not determine if § 112, ¶ 6 applies.[4] MTD is a decision on appeal from an inter partes review (“IPR”) of U.S. Patent No. 8,011,458 (“the ’458 patent”)[5], owned by MTD Products.[6]  The ’458 patent describes zero turn radius (“ZTR”) vehicles such as riding lawnmowers[7], and explains how for prior art ZTR steering systems, when a vehicle was moving forward, it turned in the direction the steering wheel was rotated, but when the vehicle was moving in reverse, it turned… Continue Reading

Working Draft Distributed to Members of Well-Known Standard Setting Group Was Not a Publication

Working Draft Distributed to Members of Well-Known Standard Setting Group Was Not a Publication

In Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., the Court of Appeals for the Federal Circuit (“the CAFC”) addressed the legal standard for assessing the public accessibility of prior art documents before a patent’s critical date. Appeal No. 18-2007 (Fed. Cir. July 12, 2019). This case arises from an appeal by Samsung to decisions by the Patent Trial and Appeal Board (“the Board”) in two inter partes review proceedings which upheld all challenged claims of U.S. Patent 8,917,772 (“the ’772 patent”) owned by Infobridge. In each proceeding, the Board found that Samsung failed to show that a certain prior art reference was publicly accessible before the critical date for the ’772 patent, and thus could not be considered prior art. The CAFC vacated the Board’s decision, holding that that the correct standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable… Continue Reading

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