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,
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Early 2023 Update: Where Are Plaintiffs Filing Patent Cases Now?
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?
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Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part II (Infringement and Defense)
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.
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Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part I (Registration and Inspection)
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).
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Key Rules and Cases for Patent Practitioners Working on AI Patent Applications
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.
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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 Two of Three
Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One 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
Forum Selection Clause Can Preclude PTO Validity Challenges
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.
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Recent Expansion of IPR Estoppel Scope Viewed As Victory for Patent Owners
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.
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USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response
On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the “DSMER Program”). We provide a brief overview of this program.
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Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan
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.
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Historic $130m+ Patent Infringement Award Against the United States of America
A Sheppard Mullin trial team led by partners Brad Graveline and Laura Burson obtained one of the largest patent infringement damages awards against the United States of America for client SecurityPoint Holdings, Inc (SecurityPoint). Sheppard Mullin partner Don Pelto and associates Kazim Naqvi, Rebecca Mackin, and Tom Carr were also key members of the trial team. In addition, the Sheppard Mullin team included trial specialist Stephanie Limbaugh and legal assistants Dori Dellisanti and Ann Castro.
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Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore
I. Introduction
Patent Prosecution Highway or 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 the participating patent offices to share information and to benefit from work performed by other participating patent offices, and thereby reducing examination workload and improving quality of patents.
Under PPH, prosecution of a patent application previously filed with a participating patent office can be fast-tracked in another participating patent office if the patent application meets certain requirements. This article provides a brief overview of benefits of filing…
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Stakeholders Should Not Miss Congress’s Invitation For Feedback On Patent Eligibility
This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021.
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NFT License Breakdown: Exploring Different Marketplaces and Associated License Issues
At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed. In the attached article, we examine some of the differences between these types of marketplaces and business models, highlight some of the varying license terms of these marketplaces and discuss why IP owners who license their IP for NFTs often are best served by developing their own licenses to be used in connection with sale of their NFTs.
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Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part Three of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies,…
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