In its recent decision in Caltech v. Broadcom Limited, et al,[1] the Federal Circuit expanded the scope of Inter Partes Review (“IPR”) estoppel “to all claims and grounds… which reasonably could have been included in [an IPR] petition.” (emphasis
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USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response
By Jing Zheng, Yunlai Zha & Will Chen
On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the “DSMER Program”). We provide a brief overview of this program.…
Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan
I. Introduction
This is the second article of the multi-part series discussing benefits of prosecuting patents under Patent Prosecution Highway or PPH. The first article can be accessed here. To recap, PPH is a set of initiatives promulgated by…
Historic $130m+ Patent Infringement Award Against the United States of America
A Sheppard Mullin trial team led by partners Brad Graveline and Laura Burson obtained one of the largest patent infringement damages awards against the United States of America for client SecurityPoint Holdings, Inc (SecurityPoint). Sheppard Mullin partner Don Pelto and…
Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore
I. Introduction
Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the participating patent offices to share information…
Stakeholders Should Not Miss Congress’s Invitation For Feedback On Patent Eligibility
By Siraj Husain
This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021.…
NFT License Breakdown: Exploring Different Marketplaces and Associated License Issues
By James Gatto & Molly Tomer*
At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed. In the…
Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three
By Jim Soong
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part Three of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact.…
Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three
By Jim Soong
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part Two of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact.…
Patent Protection on AI Inventions
By Pengju Shang, Will Chen & Yunlai Zha
In recent years, AI patent activity has exponentially increased. The figure below shows the volume of public AI patent applications categorized by AI component in the U.S. from 1990-2018. The eight AI components in FIG. 1 are defined in an…