David Cain

Unified Patent Court Roundup: first PI affirmance, another SEP settlement, #FRAND procedures, joinders, amendments, and more The previous general UPC roundup by ip fray was published two weeks ago. More recently there was a roundup article to discuss several appellate decisions. This roundup contains one appellate decision, but mostly orders and rulings by the Court of First Instance (Central Division, Local Divisions). All of this was previously discussed on LinkedIn, but there's more background particularly to certain FRAND matters. https://lnkd.in/dRsfvBMD

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Discover the nuances of IP enforcement online in AIPLA's next CLE webinar, "The Fine Line Between Battling Online Infringers & Engaging in IP Trolling," presented by Sarah Burstein and Eric Goldman. 🗓️ Date: May 29, 2024 ⏰ Time: 12:30-2:00 PM ET 💻 Format: Virtual 💸 Cost: Free for AIPLA members not requesting CLE credits ➡ Register today: https://lnkd.in/e-KH524e #AIPLA #Webinar #CLE #IP #IPlaw #Intellectualproperty #Intellectualpropertylaw #Law #Legal #Lawprofessional #Register #OnlineTrolling #ProtectYourIP #IPRights #LegalWebinar #Education #Networking #Careergrowth #Lawlife

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Senators Coons and Tillis have introduced two bills addressing critical needs in the tech transfer landscape: the Patent Eligibility Restoration Act (PERA) and the PREVAIL Act. PERA aims to provide clarity on patent eligibility, while PREVAIL seeks to restore fairness to the Patent Trial and Appeal Board (PTAB) process. Learn more about how these legislative initiatives could shape the future of innovation: https://bit.ly/3UCqPLS

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💡 Upcoming Webinar Alert! Join Sarah Burstein and Eric Goldman as they present AIPLA's next CLE webinar: The Fine Line Between Battling Online Infringers & Engaging in IP Trolling 🗓️ Date: May 29, 2024 ⏰ Time: 12:30-2:00pm ET 💻 Virtual 💸 This event is free to AIPLA members who are not requesting CLE! ➡ Register now to secure your spot: https://lnkd.in/e-KH524e #AIPLA #Webinar #CLE #IP #IPlaw #Intellectualproperty #Intellectualpropertylaw #Law #Legal #Lawprofessional #Register #OnlineTrolling #ProtectYourIP #IPRights #LegalWebinar #Education #Networking #Careergrowth #Lawlife

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Catch up on Melissa Patterson, Hector Agdeppa, and Mark Catanese's IP blog, "Key Takeaways from Claim Examples in the 2024 AI Patent Eligibility Guidance: A 3-Part Series," which looks at the examples provided with the 2024 AI SME Update in-depth and provides key takeaways for each of the provided examples. To read more, click here: https://bit.ly/4ePz14A #patents #artificialintelligence

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This article summarizes and discusses the USPTO’s April 11, 2024 guidance on the use of AI tools for prosecuting patent and trademark applications before the USPTO. Read more by Crowell's Andrew Spitzer and William Frankel:

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🚀 The USPTO has just released its 2024 guidance update on patent eligibility for AI-related inventions, marking a significant step forward in the evolving field of artificial intelligence. This update clarifies the criteria for patenting AI innovations, addressing some of the most pressing questions faced by inventors and patent professionals. As AI continues to reshape industries, understanding these guidelines is essential for anyone involved in the patent process. Whether you're developing AI technologies or advising clients on patent strategy, this update could have a profound impact on your work. 💬 What are your thoughts on the new guidance? How do you think it will influence the future of AI patents? Let’s discuss! #AI #patent #patentlaw #future #patentlawyer #patentprofessional

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In this week's The Patent Lawyer newsletter 📢 USPTO updates on AI patent eligibility: key takeaways for practitioners. The USPTO has issued updated guidelines on patent subject matter eligibility, specifically addressing artificial intelligence (AI) inventions under 35 USC 101. These updates, aligned with Executive Order 14110, clarify the evaluation process for AI innovations, ensuring they receive appropriate protection without conflicting with established legal precedents. Read the full news article here 👉 https://lnkd.in/e8EeNRVX Written by Mark G. Bloom, CLP, RTTP, Director of Contracts / Chief IP Counsel, NSABP Foundation, Inc., The Patent Lawyer Editorial Board Member. Subscribe to our newsletter to stay up-to-date with all the most pertinent patent stories and news here https://lnkd.in/eNFGimuS Want to write for The Patent Lawyer newsletter? Email [email protected] #patent #lawyer #news #USPTO #AI #artificialintelligence #patenteligibility #guidelines #IPpractitioners #IPlaw

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I’m confused by business antipathy for regulation. Good rules provide predictability and can help avoid liability. Regulations may sometimes go too far, but that doesn’t make the solution no more rulemaking. Business interests may see the end of the Chevron Doctrine as a rainbow leading to higher profits. That may be true, but maybe not so much for businesses as for lawyers: plaintiff lawyers seeking damages awards for worksite injuries, pollution, and other torts, and public interest lawyers suing businesses under subjective interpretation of laws previosusly clarified by administrative experts. And since this Court has clearly gutted the concept of stare decisis in American law, no reason that any loss should discourage any future lawsuit. The absence of an expert administrative function will generate chaos, legal sclerosis, and workers who are less productive from unsafe conditions and injuries. This seems like a careful what you wish for decision.

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In this week's The Patent Lawyer newsletter 📢 USPTO issues guidance on use of AI tools by patent and trademark practitioners. The USPTO recognizes that practitioners are increasingly using AI tools to prepare and prosecute patent and trademark applications. Therefore, to “cabin the risks” arising from the use of AI, on April 11, 2024, the USPTO issued guidance on the use of AI tools. Read the full news article here 👉 https://lnkd.in/eepbVAxK Written by David McCombs, Partner, Jon Bowser, Partner, Eugene Goryunov, Partner, Haynes and Boone, LLP. Subscribe to our newsletter to stay up-to-date with all the most pertinent patent stories and news here https://lnkd.in/eNFGimuS Want to write for The Patent Lawyer newsletter? Email [email protected] #patent #lawyer #news #USPTO #guidance #AItools #AI #IPpractitioners #applications #prosecute #IPlaw

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💡 Promoting innovation and patent quality is an essential part of BSA's policy foundation. In our newest Patent Policy Agenda, BSA outlines 5️⃣ key recommendations to combat abuse of the US patent system: ◽ Robust efforts to ensure patent quality; ◽ Investment in #AI to improve prior art searching and patent examination; ◽ Inter partes and post-grant review mechanisms before the Patent Trial and Appeal Board; ◽ Initiatives to address the challenge of abusive third-party litigation funding; and ◽ Licensing of standard essential patents on FRAND terms. Learn more about BSA's priorities in the Patent Policy Agenda below: Read the coverage on the Patent Agenda featuring #IP expert and SVP of Global Policy Aaron Cooper here: https://lnkd.in/gvU5P9gg

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📌 The recent NextStep, Inc. v. Comcast Cable Communications decision reinforces the critical importance of precise language in patent litigation, particularly concerning the doctrine of equivalents. The appeals court affirmed the lower court's finding of non-infringement, highlighting significant deficiencies in NextStep's evidentiary presentation. Central to the court's decision was NextStep's expert testimony, which the court found lacking in specificity and proper claim analysis. The district court notably characterized the testimony as "word salad," emphasizing its failure to provide the requisite detailed, element-by-element analysis of the patent claims. While acknowledging that expert witnesses need not mirror exact claim language, the appeals court emphasized that testimony must methodically address each claim element and articulate a clear rationale for how the accused product meets the "function-way-result" test for equivalence. The court explicitly rejected arguments for relaxed evidentiary standards in cases involving simpler technologies. Instead, it maintained that rigorous standards for doctrine of equivalents evidence must apply uniformly across all cases, regardless of technological complexity. Though one judge partially dissented, suggesting the majority's approach might impose overly strict requirements for expert testimony, the court defended its position as consistent with established precedent. This precedent has consistently mandated specific, claim-focused testimony to support equivalency arguments. 📍 This decision underscores that success in doctrine of equivalents cases depends on meticulously crafted language in both expert testimony and legal arguments. The challenge of maintaining such precision becomes even more significant when patent applications require translation for multiple jurisdictions. Shall you need any assistance in patent translations or proofreading please contact us at [email protected] Our experienced specialists are ready to do accurate translations selecting the correct terms. #FrontPageIP #equivalents #patentapplication #translation #patenttranslation #CATtools #patentlitigation

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The USPTO has issued proposed rules on discretionary denial in AIA proceedings and other issues related to PTAB practice. Here, we discuss the implications of the rules for petitioners, patent owners, and post-grant practitioners. https://hubs.li/Q02tGtct0 #FishRichardson #PTAB

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There is a fundamental tension between IPRs, litigation and the Fintiv decision. When you go to trial, there is still a consideration for IPRs, which can lead to forum shopping. While litigation rates have declined overall, it is increasingly complex due to the various tools that can be used strategically in various scenarios. Please join Harper Batts on May 8 for a panel event that will explore developments at the PTAB and share new strategies. Learn more: https://lnkd.in/gctCNccC Speakers: Harper Batts | Sheppard Mullin Kelly C. | Toyota North America Kenneth Jenq | Abnormal Security Deanna K. | Hewlett Packard Enterprise Becky Unruh | EagleView #intellectualproperty #litigation #PTAB

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We are back with this week's latest IP updates from around the globe. The USPTO updated its guidance on patent subject matter eligibility, specifically addressing AI innovations, effective July 17, 2024. It includes examples to help assess whether a claim recites an abstract idea or integrates it into a practical application. https://lnkd.in/eF42t_F9 AIG accused three former executives of using confidential information to start Dellwood Insurance Group, alleging trade secret misappropriation. Dellwood denies the allegations. https://lnkd.in/eRv8A2SZ The U.S. Senate unanimously approved a bill limiting patents biological drug innovators can assert against biosimilar producers to 20, with only 10 filed more than four years post-FDA approval, aiming to lower drug prices. https://lnkd.in/eE9YvEVN The UPC invalidated Amgen's patent on the cholesterol drug Repatha across 17 EU member states, benefiting competitors Regeneron and Sanofi. https://lnkd.in/eM9WUpGp 17&read_more=1&nlsidx=0&nlaidx=2 Advocate General Emiliou of the Court of Justice of the EU (CJEU) issued a non-binding opinion on supplementary protection certificates (SPCs) for combination medicinal products, addressing whether companies can obtain an additional SPC for a combination product when they already hold one for an active ingredient. https://lnkd.in/ePXbiinD Recent judgments by the Singapore High Court highlight the difficulties in enforcing non-compete clauses, especially when they overlap with other restrictive covenants like confidentiality or non-solicitation clauses. These decisions stress the need for precise drafting of such clauses and foreshadow stricter scrutiny by the courts and regulatory bodies like the Ministry of Manpower. https://lnkd.in/ea4E8xx7 We hope you have a great weekend and don't forget to tune back in, next Friday! #ipnews #globalip #intellectualproperty

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🔊 USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure 🔊 Read our latest IP Hot Topic discussing the USPTO’s proposed rule changes to create uniformity across PTAB panels and to enhance fairness, transparency, and efficiency in patent disputes. https://lnkd.in/eutvwbnM Key changes include: • Codifying factors to be addressed when considering parallel petitions and serial petitions, and the Board’s discretion under § 325(d). • Separate briefing process for discretionary institution arguments. • Consistent procedures for terminating pre- and post-institution proceedings. #PTAB #PatentLitigation #USPTO

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🌐 Understanding Patent Eligibility: The July 17 USPTO AI Guidelines 🌐 Following up on our recent discussion about the July 17 USPTO AI Patent Application Guidelines we're diving deeper into the topic. Understanding the nuances of what makes an invention eligible for a patent is crucial for innovators and businesses alike. 📚🔍 In this new article, you’ll find: 🧩 Detailed examples from the USPTO 🔑 Key criteria for patent eligibility 🚀 Insights to help you navigate the patent process Don't forget to check out our previous post on the guidelines. Read more here: https://lnkd.in/gTCf-9NY #Patents #IntellectualProperty #Innovation #USPTO #JonesIPLaw #Inventions #Entrepreneurship #AI

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