Tag Archives: patent law

A New Horizon: Design Patent Practitioner Bar Proposed by USPTO

May 15, 2023Patentdesign patent, intellectual property, notice-and-comment, paid, patent eligibility, patent infringement, patent law, patent litigation, patent prosecution, USPTO, USPTO DirectorDennis Crouch

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Judicial Disability and the “Great Dissenter”

May 11, 2023Patenten banc, Federal Circuit, Federal Circuit En Banc, judicial disability, judicial ethics, judicial workload, Moore, Newman, paid, patent lawDennis Crouch

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Petitioner’s Failure to Argue that Prior Art was Analogous to Challenged Patent Results in Reversal of IPR Decision

May 11, 2023Patentanalogous art, Claim Construction, IPR, obviousness, paid, patent law, PTABHolman

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Comments on USPTO Proposed Fee Changes

May 10, 2023Patentadditional claims, AIA Trials, economic analysis, paid, patent fees, patent law, patent policy, patent prosecution, patent revenue, terminal disclaimer, USPTODennis Crouch

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Can States Legislate in the AI Rights Space?

May 9, 2023Patentartificial intelligence, Bonito Boats, intellectual property, paid, patent eligibility, patent law, patent system, preemption, state law, Supreme Court, USPTODennis Crouch

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Attorney Fees on Undecided Inequitable Conduct Issues

May 8, 2023PatentAffirmed Without Opinion, Damages, en banc, Ethics, Federal Circuit, Inequitable Conduct, paid, patent infringement, patent law, patent litigation, patent prosecutionDennis Crouch

by Dennis Crouch

United Cannabis Corp (UCANN) vs. Pure Hemp Collective, --- F.4th --- (Fed. Cir. 2023)

The UCANN vs. Pure Hemp patent case has come to a close with the Federal Circuit affirming the district court's decision to deny attorney fees to Pure Hemp. The original infringement lawsuit was filed in 2018, with UCANN suing Pure Hemp for infringing US Patent No. 9,730,911, covering various high concentration cannabis and CBD extract formulations. During the litigation, UCANN filed for bankruptcy, causing the case to be stayed, and eventually, the parties stipulated to a dismissal of the infringement claims with prejudice. However, the stipulated dismissal did not include any discussion of attorney fees -- leading to the current appeal.

Following the dismissal, Pure Hemp moved for attorney fees and sanctions, arguing that UCANN's counsel committed inequitable conduct during patent prosecution and that UCANN's litigation counsel had a conflict of interest. The district court sided with UCANN and denied attorney fees, stating (1) that Pure Hemp was not the prevailing party and (2) that Pure Hemp did not prove that the case was exceptional. The Federal Circuit has now affirmed the decision, finding that the district court did not abuse its discretion in finding the case unexceptional. Although district court the district court erred in not finding Pure Hemp to be the prevailing party, the error was harmless.

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An API for the Human Mind

May 6, 2023Patentai, artificial intelligence, brain, fMRI, functional near-infrared spectroscopy, gpt, intellectual property, mind reading, paid, patent law, privacy, softwareDennis Crouch

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Generative AI and Copyright

May 4, 2023Patentartificial intelligence, Copyright, DTSA, intellectual property, Lanham Act, paid, patent law, patent litigation, patent prosecution, trademark lawDennis Crouch

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Bringing Home the Bacon with Joint Inventorship

May 4, 2023PatentClaim Construction, Enablement, Federal Circuit, inventorship, paid, patent infringement, patent law, patent litigation, patent prosecution, Section 102, Section 103Guest Post

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The Split on Pleading Scienter for Inequitable Conduct

May 3, 2023Ethicsen banc, Federal Circuit, Inequitable Conduct, paid, patent law, patent litigation, pleading, Rule 9(b), scienter, Supreme CourtDavid

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The Supreme Court and Patent Protection for Medical Diagnostics: A Closer Look at CareDx and Stanford U v. Eurofins

May 2, 2023PatentCareDx, Federal Circuit, Mayo v. Prometheus, medical diagnostics, obviousness, paid, patent eligibility, patent law, patent litigation, Section 101, Stanford U v. Eurofins, Supreme CourtDennis Crouch

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Supreme Court Holds Over Two Patent Cases, Considers Two More on Patent Eligibility

May 1, 2023PatentAmgen-v-Sanofi, Fall Line Patents v. Unified Patents, Interactive Wearables v. Polar Electro Oy, paid, patent eligibility, patent law, patent litigation, Supreme Court, Teva Pharmaceuticals USA v. GlaxoSmithKline, Tropp v. Travel Sentry, USPTODennis Crouch

by Dennis Crouch

On May 1, the U.S. Supreme Court revealed its decisions from the April 28 conference. Among the three patent cases considered, the court denied certiorari for the pro se case of Wakefield v. Blackboard, while holding over the other two for reconsideration at a later conference. This development increases the likelihood of these two cases being heard by the court, although a grant of certiorari has not yet been announced.

The held-over cases include:

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Professional Liability risks of filing in DOCX

May 1, 2023PatentDOCX, Microsoft Word, paid, patent law, patent prosecution, professional liability, USPTODennis Crouch

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Importance of Due Diligence for Patent Practitioners and the US/China Economic War

April 28, 2023PatentChina, due diligence, economic war, fraud, information disclosure statement, micro entity status, misconduct, paid, patent law, reasonable inquiry, USPTODennis Crouch

by Dennis Crouch

37 C.F.R. § 11.18(b) imposes crucial responsibilities on patent applicants, attorneys, and agents. Documents submitted to the USPTO implicitly certify that:

Statements made are true or are are believed to be true (based upon information and belief) and do not include any attempt to conceal a material fact; and
That a reasonable inquiry was conducted to confirm that: (i) statements have no improper purposes, (ii) legal contentions are supported by existing law or valid arguments for change, (iii) allegations and factual contentions have or are likely to have evidentiary support, and (iv) denials of factual contentions are based on evidence or a reasonable lack of information or belief.

Recent USPTO disciplinary cases underscore the seriousness of these obligations. Examples include filing a micro entity status request without proper investigation and submitting an information disclosure statement (IDS) by a non-practitioner without practitioner review. Rubber stamping is not permitted.

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Functional Claims: Morse, Halliburton & Amgen

April 27, 2023PatentAmgen Inc. v. Sanofi, functional claims, Halliburton Oil Well Cementing Co. v. Walker, O'Reilly v. Morse, paid, patent lawDennis Crouch

by Dennis Crouch

In the patent context, functional limitations describe inventions in terms of their function or intended use, rather than their specific structure or components. Such claims have been subject to much debate and litigation throughout the history of the US patent system. Notable Supreme Court cases like O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) significantly impacted patent practice and the balance between functional and structural claim drafting.

The pending Supreme Court case of Amgen Inc. v. Sanofi, No. 21-757 (2023) is another example, with the potential to further shift the landscape regarding functional claim limitations. The title of my essay on the case following oral arguments, "Bye Bye Functional Claims," hints at my outlook. Although the patentee focused on other issues in its briefing, the Justices repeatedly questioned the permissibility of broad functional claim limitations.