Imagine That IP Law Blog

In Sanofi-Aventis Deutschland GMBH v. Mylan Pharmaceuticals Inc., No. 2021-1981, 2023 U.S. App. LEXIS 11311 (Fed. Cir. 2023), the Federal Circuit reversed a decision by the Patent Trial and Appeal Board (“PTAB”) that found all challenged claims of U.S. Patent No. RE47,614 (“the ‘614 patent”) unpatentable in Inter Partes Review (IPR) IPR2019-01657. The Petitioner (Mylan) argued that the combination of three prior art references rendered the claims obvious. In attempting to sustain its burden of establishing obviousness, Mylan appears to have attempted to apply the ... Read More ›

In Amgen v. Sanofi (Case No. No. 21–757), the U.S. Supreme Court affirmed the lower courts’ holdings that Amgen’s patent claims to antibodies were invalid. These claims were claims 19 and 29 of U.S. Patent No. 8,829,165 and claim 7 of U.S. Patent No. 8,859,741.

The ‘traditional manner’ of antibody claim was to recite the epitope to which the antibody binds plus the effect of the binding. This has been the format since at least In Re Wands (858 F.2d 731) in 1988. For example, see claims 1 and 7 of Amgen’s U.S. Patent 8,859,741:

1. An isolated monoclonal antibody that binds to ... Read More ›

In last week’s precedential decision in HIP, Inc. v. Hormel Foods Corp, the Federal Circuit reversed a decision by the District Court of Delaware holding that an inventor, David Howard, should be added as a joint inventor on U.S. Patent 9,980,498 (“’498 Patent”). The Federal Circuit reasoned that the inventor failed to satisfy the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344,1351, because his contribution to the claims of the ‘498 Patent was “insignificant in quality.” HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 U.S. App. LEXIS ... Read More ›

On May 2, 2023, the Writers Guild of America (WGA) went on strike, initiating yet another standoff in the entertainment industry. One of the primary issues in the WGA’s contract dispute with the Alliance of Motion Picture and Television Producers (AMPTP) is the use of artificial intelligence and creative machines such as GPT-4 in union projects, which the WGA sought to prevent. In an interview with Vice, John August, screenwriter of Charlie’s Angels and Big Fish, stated, “these large language models are progressing at an incredible rate. AI-generated material isn't ... Read More ›

Newly developed artificial intelligence systems have been used to generate new inventions (e.g. Dr. Stephen Thaler’s “Device for the Autonomous Bootstrapping of Unified Sentience” or DABUS), works of authorship (e.g. Alice and Sparkle, created by Ammaar Reshi using the ChatGPT large language model), and works of art (e.g. Zarya of the Dawn, created by Kristina Kashtanova using the Midjourney image generator). The U.S. Patent and Trademark Office and the U.S. Copyright Office have each held that artificial intelligence systems cannot qualify as inventors or authors for ... Read More ›

Last week’s non-precedential decision by the Federal Circuit Court of Appeals in Cioffi v. Google LLC, No. 2018-1049, 2023 U.S. App. LEXIS 9142 (Fed. Cir. Apr. 18, 2023) serves as a warning for both holders of reissue patents and patent owners considering filing a reissue. The Court held that the “original patent” requirement is the standard for support in the specification for claims in a reissued patent under 35 U.S.C. §251. In order for a claim to be supported under the original patent requirement, there must be an express disclosure of the exact embodiment claimed on reissue ... Read More ›

The summer of 2023 marks the most significant summer for concert goers since the start of the COVID-19 pandemic. With a highly anticipated concert line up ranging from Taylor Swift and Beyoncé to Billy Joel and Stevie Nicks, fans are spending hours waiting in ticket queues and arriving hours early to shows to buy merchandise. When purchasing goods within the venue or from a distributor licensed by the artist’s team, consumers assume that the products are made to high quality standards and accurately reflect the artist’s brand. However, despite the quality assurance, many fans ... Read More ›

Earlier this week, the Federal Circuit issued an opinion in Sequoia Technology LLC v. Dell Inc. et al. that underscores the importance of intrinsic evidence when construing claim language in a District Court litigation. Of particular importance are the Court’s statements regarding the patent specification’s provision of an “express purpose of the invention” and a “preferred embodiment,” as well as the Court’s reliance on statements made by the Patent Owner in its pre-institution filings and on a document cited in an Information Disclosure Statement (IDS) during ... Read More ›

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 ›