The Supreme Court seemed, at least to a small degree, interested in evaluating the subject matter eligibility of diagnostic claims when it requested that the respondents (Natera Inc. and Eurofins Viracor Inc.) respond to a petition for writ of certiorari filed by CareDx Inc. and the Board of Trustees of the Leland Stanford Junior University
IP Intelligence
Insight on Intellectual Property
Latest from IP Intelligence - Page 7
Claim Construction: The Difference Between Using “The” and “A”
Patent attorneys regularly use indefinite articles (i.e., “a” or “an”) in claim drafting to introduce patent limitations. In Apple Inc. v. Corephotonics, Ltd., however, the Federal Circuit made a ruling that may require practitioners to think twice about using such articles, particularly when they could be used to later broaden the claims during an invalidity…
Federal Circuit Affirms Lack of Enablement of Functional Antibody Claims
In its recent decision in Baxalta Inc. v. Genentech, Inc., No. 2022-1461, 2023 WL 6135930 (Fed. Cir. Sept. 20, 2023), the Federal Circuit applied the Supreme Court’s decision in Amgen Inc. v. Sanofi to affirm the District of Delaware’s grant of summary judgment of lack of enablement for broad antibody claims that specify what the…
Everyone Should Pay Attention to the USCO’s AI NOI
There will be no special rules for your industry. What gets decided in the next six months to a year about artificial intelligence (AI) legislation, and regulatory action on copyrights and AI, will apply with equal force to AI uses in healthcare, energy and other industries as it does to a consumer using Midjourney to…
Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge? Time To Update Your Playbook in the Wake of In re Cellect
Here’s a familiar scenario. An applicant files a first patent application with medium-to-narrow claim coverage. The first patent application issues with some or substantial patent term adjustment (PTA) caused by one or more delays at the U.S. Patent and Trademark Office (e.g., Patent A – earlier-filed and later-expiring patent). The applicant subsequently files a second…
Current Patent Litigation Trends
Copyright and AI-Generated Content: Establishing Scope Requires More Than Registration
U.S. copyright law protects human-authored expression, not works generated purely by generative AI. When a human author uses generative AI tools to create their work, the scope of copyright protection extends to the human-authored aspects of the work, not the AI-generated material within that work. The ability to separate out AI-generated content from the human…
Method of Treatment Claims Are Not Invalid for Lacking Written Description or Enablement Simply Because the Treatment Is Not Safe or Efficacious in Some Patients
By Ron Kern
The Federal Circuit’s recent decision in United Therapeutics Corp. v. Liquidia Techs., Inc., No. 2022-2217, 2023 WL 4695903 (Fed. Cir. July 24, 2023), provides an interesting discussion on the written description and enablement of method of treatment claims where treatment of a subset of patients may not be safe or efficacious. Claim 1 of U.S. Patent…
FTC Launches Anticipated Investigation of OpenAI Inc.
It was only a matter of time before the Federal Trade Commission (FTC) initiated a law enforcement investigation focusing on artificial intelligence (AI). It is not an exaggeration to say that the FTC has been hinting at, and sometimes outright foreshadowing, such actions for years. The frequency of these communications has only increased over…
Extraterritorial Reach of the Lanham Act
The Supreme Court recently ruled in Abitron Austria GmbH v. Hetronic International, Inc. that Lanham Act (Act) remedies for trademark infringement do not extend to infringing conduct that takes place outside the United States, regardless of whether the activity creates a likelihood of confusion within the United States — and in the process vacated $96…