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  • Article

    Smoot-Hawley And The Art Of War

    What is of supreme importance in conflict, Sun Tzu said, is to attack an opponent's strategy. One potential blueprint for rebuilding American economic independence and security in a post-COVID-19 world already exists ...
    United StatesIntellectual Property
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  • Article

    5 Things You Need To Become A Top Lawyer

    The legal field is known to be extremely competitive. Lawyers are often smart, ambitious, and highly educated. That being said, what does it take to stand out and become a "Top Lawyer" in your specific field of law?...
    United StatesLaw Department Performance
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Article

Ex Parte Desjardins Bolsters Patent Eligibility For AI-related Inventions As Appeals Review Panel Vacates Board's 101 Rejection

On September 26, 2025, the Appeals Review Panel of the Patent Trial and Appeal Board ("PTAB") published a decision reviewing the PTAB's denial of rehearing in Ex parte Desjardins ("Review Decision").
United StatesIntellectual Property
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  • Article

    Is 35 U.S.C. § 295 The Key To The AI Black Box?

    Artificial intelligence (AI) is stepping out of science fiction and into our everyday lives at a rapid pace.
    United StatesIntellectual Property
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  • Article

    Coakwell v. United States Is Still Good Law!

    In Certain Network Devices, Inv. No. 337-TA-945, Commission Opinion at 12 - 13 (U.S.I.T.C. Aug. 16, 2017), the International Trade Commission wrote that ‘‘The Federal Circuit has explained that a finding of invalidity by a federal district court has immediate preclusive effects upon the continued vitality of Commission remedial orders . . . .
    United StatesIntellectual Property
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  • Article

    Federal Circuit Reiterates That Naturally-Occurring Nucleotide Sequences Are Not Patent Eligible Under 35 U.S.C. § 101

    On October 9, 2018, in Roche Molecular Systems, Inc. v. Cepheid, the Federal Circuit upheld a district court decision that claims reciting nucleotide primers in U.S. Patent No. 5,643,723...
    United StatesIntellectual Property
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  • Article

    RCE/National Stage Kerfuffle: PTO Creates A Nightmare Scenario

    Much has been written lately about the USPTO's recent enforcement of its controversial interpretation of filing Requests for Continued Examination (RCE) in National Stage applications...
    United StatesIntellectual Property
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  • Article

    Missing Feature Overcomes Obviousness But Cautions Succinct Claiming And Argument

    On September 25, 2024, in Ex parte Sim, the Patent Trial and Appeal Board (PTAB) overturned the obviousness position of primary examiner, John Chu...
    United StatesIntellectual Property
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  • Article

    Another Example Of Invalid Claims For Lack Of Written Description And Enablement

    In its recent decision, the PTAB ("the Board") determined that all challenged claims of U.S. Patent No. 10,301,638 B2 were unpatentable under 35 U.S.C. § 328(a) for lack of written description and lack of enablement.
    United StatesIntellectual Property
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  • Article

    I Burn, Burn Like A Wicker Chair; Chalk White And Oh-So Frail…

    The title above refers to a lyric from a 1998 song by Eve 6, although they used the word "cabinet" instead of "chair."
    United StatesIntellectual Property
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  • Article

    Federal Circuit Reiterates That Nucleotide Sequences Are Not Patent Eligible Under 35 U.S.C. § 101

    They are structurally identical to the ends of DNA strands found in nature." Id. at 10-11
    United StatesIntellectual Property
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  • Article

    PTAB Restates That Not All Combinations Of Molecular Modifications Are Obvious

    In a Patent Trial and Appeal Board (PTAB) decision issued on April 16, 2021, in Ex parte Bhalla, Luthra, Reid I, and Levason (Appeal 2021-001535, USSN 14/373,413).
    United StatesIntellectual Property
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  • Article

    Must A "Human Antibody" Be Entirely Human? Or May It Also Be "Partially Human?"

    This is a consolidated appeal from two Patent Trial and Appeal Board ("Board") decisions in inter partes reviews ("IPRs") of U.S. Patent 8,679,487 ("the '487 patent"),...
    United StatesIntellectual Property
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  • Article

    No Reasonable Expectation Of Success In Modifying Non-Overlapping Range To Overlap

    In the matter of Ex parte HAN LIU, et al., the Patent Trial and Appeal Board (PTAB) determined on August 17, 2023, that an examiner (Sarah al-Awadi, supported by Supervisory Patent Examiners...
    United StatesIntellectual Property
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  • Article

    No Motivation To Modify Product-Specific Method With Method Features For Different Products

    On July 10, 2023, the Patent Trial and Appeal Board (PTAB) reversed an examiner's finding of obvious on the basis of a failure to show a motivation to modify the prior art...
    United StatesIntellectual Property
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  • Article

    Droit Américain Des Brevets : Sa Surprenante Expansion En Dehors Du Territoire Américain

    La fabrication, l'utilisation et la vente aux États-Unis d'un produit couvert par un brevet américain, sans l'autorisation du breveté, constitue une contrefaçon de ce brevet.
    United StatesIntellectual Property
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  • Article

    AI Patent Trends In The U.S. Patent Office: Is The U.S. Losing Its Lead?

    As noted in an earlier post on this blog (Using AI to Track AI Patents at the USPTO), the U.S. Patent and Trademark Office (USPTO) continues to see tremendous growth in the area of...
    United StatesIntellectual Property
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  • Article

    The Implications Of In Re Cray On The Sharing Economy

    The authors suggest that In re Cray and TC Heartland have notable venue implications for patent infringement actions against sharing economy participants like Uber and Airbnb.
    United StatesIntellectual Property
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  • Article

    Will TC Heartland Control Venue In BPCIA Litigation?

    The authors suggest that whether TC Heartland applies to BPCIA actions is an open question given the statutory and policy differences between 28 U.S.C. § 1400(b) and the BCPIA.
    United StatesIntellectual Property
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  • Article

    Final Written Decision On IPR Filed Against Patent 11,874,910 B2 "Facial Recognition Authentication System Including Path Parameters" Denied For Improper Motivation To Combine Prior Art

    The Patent Trial and Appeal Board (PTAB) issued a final written decision denying an inter partes review petition against FaceTec, Inc.'s facial recognition authentication patent, finding that the petitioner failed to demonstrate adequate motivation to combine prior art references. The decision centered on whether perspective distortion techniques could be used to verify three-dimensionality in facial authentication systems, with the PTAB determining that the cited prior art did not teach the claimed verific
    United StatesIntellectual Property
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