Inventors, Not Ai-Ventors: The Patent Act Requires an “Inventor” to be a Natural Person In Thaler v. Vidal, Appeal No. 21-2347, the Federal Circuit held that under the Patent Act , an “inventor” must be a natural person. Therefore, an AI system cannot be an inventor. Thaler filed two patent... read more →

University Successfully Argues Prior Art’s Disclosures Were Not “by Another” In Lsi Corporation v. Regents Of The University Of Minnesota, Appeal No. 21-2057, the Federal Circuit held that determining whether a patent or application’s disclosure is “by another” under § 102(e) requires evaluating the relied-upon portions of the disclosure to determine... read more →

An ANDA Specification that Directly Addresses Issues of Infringement Controls the Infringement Inquiry In Par Pharmaceutical, Inc. v. Eagle Pharmaceticals, Inc. Appeal No.  22-145, the Federal Circuit held that an ANDA was held not to infringe asserted claims because the ANDA specifies pH ranges that fall outside of those recited... read more →

Missing Experience Undermines Expert’s Rebuttal of Obviousness Arguments In Best Medical International, Inc. v. Elekta Inc., Appeal No. 21-2099, the Federal Circuit held that Expert testimony was properly discounted when substantial evidence supported the Board’s finding that a POSA would have possessed experience that the expert was missing;  there is... read more →

Expert Testimony That Contradicts Patent Specification Fails to Create a Genuine Issue of Fact In Caredx, Inc. v. Natera, Inc., Appeal No. 22-1027, the Federal Circuit held that expert testimony that steps of challenged patent claims were unconventional failed to preclude summary judgment of ineligibility where specification admitted the steps... read more →

Claims With Clerical Errors Can Be Judicially Corrected and Willfully Infringed Pavo Solutions LLC v. Kingston Technology Company, Inc., Appeal No. 21-1834, the Federal Circuit held that a court can correct obvious minor typographical or clerical errors in claim language even when doing so would alter the claimed structure; reliance... read more →

 Justice Must Satisfy the Appearance of Justice— A Judge’s Family’s Financial Interest of 100 Shares of a Party’s Stock is a Serious Issue Centripetal Networks, Inc. v. Cisco Systems, Inc., Appeal No. 21-1888, the Federal Circuit held that placing stock in a blind trust does not divest a judge of... read more →

Somebody’s Wrong:  PTAB Must Resolve Conflicting Factual Testimony During IPR  In Google LLC v. IPA Technologies Inc., Appeal No. 21-1179, the Federal Circuit held that, for purposes of determining whether a reference was prior art, the Board has an obligation to resolve fundamental testimonial conflicts.  Google petitioned for inter partes... read more →

Commissioner’s Exercise of Vacant Director’s Duties Does Not Violate Appointments Clause Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2140 Before Moore, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board. Summary: During vacancies of the Director and Deputy Director of the U.S. Patent and Trademark Office,... read more →

The Heightened Standard of Proving Induced Infringement Roche Diagnostics Corporation v. Meso Scale Diagnostics, LLC, Appeal No. 21-1609, the Federal Circuit held that a finding of induced infringement requires knowledge that the induced acts constitute patent infringement, which can be established by a finding of ‘willful blindness,’ a standard of... read more →