In a per curium order issued under seal May 3, 2023 but recently made public, the Patent Trial and Appeal Board awarded sanctions against Patent Owner, Longhorn Vaccines & Diagnostics, canceling all challenged claims of its five asserted patents for its “egregious abuse of the PTAB process.” Particularly, the Board determined that Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the Board by “selectively and improperly” withholding information material to the patentability of the claims challenged in the IPR proceeding.
Continue Reading “Egregious Abuse” of the PTAB Process Leads to Adverse Decision Sanctions in IPR Proceeding

On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. et al. v. Sanofi, et al., No. 21-757. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly infringing two of its patents in 2014, the Supreme Court held that Amgen’s asserted patents failed to satisfy the enablement requirement under 35 U.S.C. § 112(a), and are thus invalid.
Continue Reading SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

AI-based code generators are a powerful application of generative AI. These tools leverage AI to assist code developers by using AI models to auto-complete or suggest code based on developer inputs or tests. These tools raise at least three types of potential legal issues:…
Continue Reading Solving Open Source Problems with AI Code Generators – Legal Issues and Solutions, Part 2

AI-based code generators are a powerful application of generative AI. These tools leverage AI to assist code developers by using AI models to auto-complete or suggest code based on developer inputs or tests. These tools raise at least three types of potential legal issues:…
Continue Reading Solving Open Source Problems with AI Code Generators – Legal Issues and Solutions, Part 1

Use of AI technology can impact your rights and liabilities in ways that may not even occur to you. And whether you are aware of it or not, your employees and vendors may be using generative AI tools in the performance of their duties in ways that can significantly impact you. The FTC has made clear that ignorance is not bliss when it comes to your liability associated with use of these tools. That is why it is more important now than ever to factor these AI technology legal implications into your company’s governance and risk management, including by updating…
Continue Reading AI Technology – Governance and Risk Management: Why Your Employee Policies and Third-Party Contracts Should be Updated

We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March 31, 2023.
Continue Reading 2023 Federal Circuit Case Summaries

Recent patent cases have made it more difficult to obtain utility patent protection for some of the functional aspects of computer software. One way to, at least partially, overcome this is to consider design patent protection for computer generated icons and certain aspects of the graphical user interface (GUI) elements of a computer program. Strategic use of design patents can be an important part of an overall patent strategy. It should be noted, however, that design patents are not meant as a replacement for utility patents, but rather, as a supplement to them.
Continue Reading Design Patent Protection for Computer Generated Icons and Graphical User Interfaces

The National Telecommunications and Information Administration (NTIA) has issued a Request for Comments (RFC) on Artificial Intelligence (“AI”) system accountability measures and policies to advance its efforts to ensure AI systems work as claimed and without causing harm. The RFC is targeting self-regulatory, regulatory, and other measures and policies to provide reliable evidence that AI systems are legal, effective, ethical, safe, and otherwise trustworthy. It is also seeking policies that can support the development of AI audits, assessments, certifications and other mechanisms to create earned trust in AI systems that they work as claimed (similar to how financial audits create…
Continue Reading Another Federal Agency Issues Request for Comments on AI

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?
Continue Reading Early 2023 Update: Where Are Plaintiffs Filing Patent Cases Now?

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.
Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part II (Infringement and Defense)

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).
Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part I (Registration and Inspection)

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.
Continue Reading Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

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