Imagine That IP Law Blog

In Salazar v. AT&T Mobility LLC, the Federal Circuit found that a claim reciting "a microprocesser" that performed several functions was not infringed by a system where the claimed functions were distributed among multiple microprocessors. The Court reasoned that “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”  Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376, 2023 U.S. App. LEXIS 8071, at *15 (Fed. Cir. Apr. 5, 2023). 

The claim in Salazar recited:

1. A communications ...

In Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc. V. Modernatx, Inc., FKA Moderna Therapeutics, Inc. (Fed. Cir. 2020-1183, April 11, 2023), Moderna challenged claims 1–22 of Arbutus’ U.S. Patent No. 9,404,127 (the ’127 Patent) by Inter Partes Review. The Board found all challenged claims anticipated by U.S. Patent 8,058,069 (Yaworski). The Board’s determination of anticipation relied on inherency and the disclosure of documents incorporated by reference by both Yaworski and the ’127 Patent.

The ’127 Patent was directed to compositions of ... Read More ›

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and ... Read More ›

NFTs, or “non-fungible tokens”, are a quickly growing space for artists and investors alike. The rapidly growing interest in NFTs is likely due to the shocking value an NFT can attain and the incorporation of blockchain technology. One piece of NFT artwork, Everydays: The First 5000 Days, sold for a whopping $69 million. $69 million is a lot of money to spend on anything, but this is just one example of many NFTs fetching massive price tags.

In one sentence, an NFT is a non-interchangeable, digital asset that is backed by a certificate of authenticity stored in the blockchain. The name ... Read More ›

Regents of the University of Minnesota v. Gilead Sciences., Inc., CAFC 2021-2168

Gilead Sciences filed a petition for Inter Partes Review (IPR) against the University of Minnesota’s U.S. patent No. 8,815,830 (the ’830 Patent). Gilead challenged claims 1-9, 11-21, and 23-28 of the ’830 Patent, and alleged that they are anticipated by U.S. pre-grant publication No. 2010/0016251 (Sofia). The Patent Trial and Appeal Board (PTAB) held that the Challenged Claims were anticipated, and the University of Minnesota appealed to the Court of Appeals for the Federal Circuit.

The ... Read More ›

In part one of this article, I discussed Dr. Stephen Thaler and his system DABUS, short for “Device for the Autonomous Bootstrapping of Unified Sentience,” and distinctions between this and other artificial intelligence systems. Thaler believes the system is sentient and has the ability to dream and invent.

So what if he is right? The inventorship issue may be moot in a practical sense, as an applicant could simply use their own name on a declaration of inventorship, though Dr. Thaler contends this would be fraud. “I think the way that our lawmakers and courts are steering things ... Read More ›

Just as the U.S. Patent Office has declined to consider patent applications naming an artificial intelligence as an inventor, the U.S. Copyright Office has declared that works authored by artificial intelligent artists or authors are ineligible for copyright protection. In a new notice published in the Federal Register, “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence,” 88 FR 16190 (March 16, 2023), the Copyright Office reiterated that “copyright can protect only material that is the product of human creativity.” ... Read More ›

Part 1 in a 2 Part Series

In the age of creative machines and artificial intelligence, intellectual property law is facing new challenges and questions. As we continue to push the boundaries of what machines can create, the questions of ownership and authorship become more and more complex. An AI that can produce patentable inventions could also be used to pre-empt competitors’ use of the patent system by flooding the space with artificially generated prior art. Courts have yet to address this possibility. Judging by Dr. Stephen Thaler’s description of his DABUS system, the time ... Read More ›

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how ... Read More ›

Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242.  In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous ... Read More ›