Intellectual Property Law Blog

Up-to-date Information on Intellectual Property Law

The use of artificial intelligence (AI) is booming. Investors and companies are pouring cash into the space, and particularly into generative AI (GAI), to seize their share of the market which McKinsey reports could add up to $4.4 trillion annually to the global economy. Some companies are investing tens or hundreds of millions of dollars or more into GAI. Whether companies are building their own AI technology and training their own AI models, or leveraging third party tools, there are significant legal issues and business risks that directors need to consider as part of their fiduciary obligations and corporate governance.
Continue Reading 5 Things Corporate Boards Need to Know About Generative AI Risk Management

This case addresses the validity of patents asserted against a high-density fiber optic equipment importer in violation of § 337. In particular, this case discusses enablement and claim construction as it relates to interpretation of open ended ranges and plural claim language.
Continue Reading FS.COM INC. v. International Trade Commission Corning Optical Communications LLC – Intervenor No. 22-1228 (Fed. Cir. Apr. 20, 2023)

This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider the patent owner’s certain evidence not submitted in compliance with the Board’s rules and in making a determination regarding written description requirements.
Continue Reading Parus Holdings, Inc. v. Google LLC, No. 2022-1269, 2022-1270 (Fed. Cir. Jun. 12, 2023)

This case addresses the legal standard for inherent anticipation.

Background

The ’127 patent is directed to an invention that provides stable nucleic acid-lipid particles (“SNALP”) that have non-lamellar structure and “comprise a nucleic acid … methods of making SNALP, and methods of delivering and/or administering the SNALP.” ’127 patent, Abstract. The ’127 patent states that its purpose is to allow for more efficient methods and compositions for introducing nucleic acids into cells and methods of downregulating gene expression. ’127 patent, col. 2 ll. 54-61. The ’127 patent identifies five formulations of various compositions that can be prepared by either Stepwise
Continue Reading Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc., v. Modernatx, Inc., FKA Moderna Therapeutics, Inc. No. 2020-1183 (Fed. Cir. April 11, 2023)

This case addresses the legal framework for determining whether prior art anticipates a claimed range. The appropriate legal framework applies a different test depending on whether the prior art discloses a point within the claimed range vs. a range overlapping the claimed range.
Continue Reading UCB, Inc. v. Actavis Laboratories UT, Inc. No. 2021-1924, (Fed. Cir. Apr. 12, 2023)

After considering comments from various stakeholders for nearly a year, on July 24, 2023, the USPTO issued the revised interim Director Review Process. Among other changes, the revised process now permits parties to request the Director Review on institution decisions in America Invents Act (AIA) proceedings. This is a significant expansion of the scope of director review, which allows petitioners who had no appeal options to an IPR denial to now have at least one avenue of review of an institution denial.
Continue Reading PTAB Makes Significant Changes to Director Review Process

The Federal Trade Commission (FTC) has been active in enforcements involving various AI-related issues. For an example, see Training AI Models – Just Because It’s “Your” Data Doesn’t Mean You Can Use It and You Don’t Need a Machine to Predict What the FTC Might Do About Unsupported AI Claims. The FTC has also issued a report to Congress (Report) warning about various AI issues. The Report outlines significant concerns that AI tools can be inaccurate, biased, and discriminatory by design and can incentivize relying on increasingly invasive forms of commercial surveillance. Most recently, the FTC instituted an investigation
Continue Reading The Need for Generative AI Development Policies and the FTC’s Investigative Demand to OpenAI