You can’t make applesauce out of oranges — and experts may not cook up opinions with contrary facts. In Lighting Defense, the patent damages expert opined that in a “hypothetical negotiation,” the parties would have agreed to a running per-unit royalty license. The expert based his opinion solely upon actual lump-sum licenses. There were no
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USPTO Set to Raise Fees in early 2025 – How to Reap the Most Benefits from your Patent Budget
Effective Jan. 19, 2025, the U.S. Patent and Trademark Office’s (USPTO) patent fees will see about a 7.5 percent across-the-board increase. 89 Fed. Reg. 91898 (Nov. 20, 2024). Some patent fees will see significantly steeper increases, up to 100 percent of those in the last fee adjustment in October 2020. These adjustments are part of…
Availability of Willfulness and/or Indirect Patent Infringement Claims without Pre-Suit Knowledge: A District Court Survey
Introduction
The tests for willful and indirect (both inducement and contributory) patent infringement require a finding by the court that the alleged infringer had prior knowledge of infringement of the at-issue patent.[1] In many litigations, a patent-owner plaintiff will allege willful and/or indirect patent infringement against an accused defendant without having provided the accused…
USPTO Ending the After Final Consideration Pilot Program
By Chad Eimers
The U.S. Patent and Trademark Office (USPTO) recently announced that it will terminate the After Final Consideration Pilot Program (AFCP 2.0) and that December 14, 2024, will be the last date for applicants to submit requests under that program.[1] This announcement (1) marks the end of a program that gave applicants a way to…
Federal Circuit Rebukes District Court for Patent Eligibility Decision Involving Extended-Release Formulation Patent
The U.S. Court of Appeals for the Federal Circuit[1] admonished the U.S. District Court for the District of Delaware on Wednesday for abuse of its discretion in finding the disputed claims invalid under 35 U.S.C. § 101, “a ground not invoked by [the defendant-appellee].”[2] The claims at issue are directed to a Food…
Federal Circuit Reverses Ineligibility Finding on POV Cameras and Processing
On September 9, the Court of Appeals for the Federal Circuit reversed a finding by the District Court for the Northern District of California that point-of-view camera claims were ineligible.[1] While this decision did not break new ground on eligibility, it reinforces how patent drafters and owners must cast their claims to demonstrate an…
Patent Experts: No Ordinary Skill in the Art at the Time of Invention? No Problem!
The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent. For issues of claim construction, infringement, and validity, a technical expert in a patent case must be able to offer testimony from…
The Obviousness-Type Double Patenting Saga Continues!
A later-filed, later-issued, earlier-expiring child patent cannot be used as an obviousness-type double patenting (ODP) reference against its first-filed, first-issued, later-expiring parent patent having a common priority date. That was the holding from the Federal Circuit in its recent decision in Allergan USA, Inc. v. MSN Lab’ys Priv. Ltd., No. 2024-1061, 2024 WL 3763599…
USTPO AI Examination Update Provides New Example Cases Analyzing Subject Matter Eligibility Under §101
In a July 16 press release,[1] The U.S. Patent and Trademark Office (USPTO) announced that it issued a guidance update[2] on “patent subject matter eligibility to address innovation in critical emerging technologies including artificial intelligence (AI).” According to the press release, this latest update (which went into effect on July 17) “builds…
Key Points from the USPTO’s New Guidance on AI Use
By Site Admin
Implications for Patent/Trademark Prosecutors and Holders
The U.S. Patent and Trademark Office (USPTO) recently issued guidance on the use of artificial intelligence (AI), particularly generative AI, in Intellectual Property (IP) practices involving documents filed at the USPTO. The guidance reiterates long-standing rules and duties of practice in front of the USPTO and aims to highlight…