Intellectual Property Report
NST Global v. Sig Sauer: Helpful Reminders About Claim Preambles and Claim Construction at the PTAB
Claim construction decisions do not always proceed as predicted by either party, and IPR proceedings can be particularly unpredictable when it comes to construing claim terms. A recent petition for writ of certiorari to the Supreme Court, in NST Global v. Sig Sauer, provides helpful reminders regarding claim construction and limiting preambles.
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U.S. Supreme Court Affirmed Patent Enablement Requirement in Amgen
Steve Lendaris, Sophie Yan
On May 18, 2023, the U.S. Supreme Court issued its opinion in Amgen et al. v. Sanofi. The Court unanimously affirmed the Federal Court’s holding that Amgen’s relevant patent claims were invalid as the patent failed “to enable any person skilled in the art...to make and use the [invention]” as required by 35 U.S.C. §112(a). Specifically, the Court reasoned that Amgen’s patent failed to enable the full scope of the claimed antibodies, a scope determined to be “much broader than those 26 antibodies [identified in the specifications],” even allowing for a reasonable degree of experimentation.
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AI as Inventor or Author - Developing Trends
Artificial intelligence (AI) has made recent headlines for developing inventions, generating artwork, producing written works, and even preparing tax returns. These diverse uses of AI, including to create utilitarian techniques and original expressive works, has led to a debate regarding whether and when AI can become an inventor or author, along with the corresponding intellectual property rights accompanying this designation.
To read the full article, click here.
*This article was previously published in the The Journal of Robotics, Artificial Intelligence & Law July-August 2023 issue.
USPTO Proposes New Rulemaking to Reshape Post-Grant Proceedings at PTAB
Rob Maier, Eliot Williams, Summer Chu
The 2011 passage of the America Invents Act (AIA) resulted in a seismic shift in patent litigation and disputes in the United States. The AIA brought with it new post-grant proceedings, including inter partes review (IPR) and post-grant review (PGR), that could be used to challenge the validity of patents in a quasi-litigation proceeding before the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trials and Appeals Board (PTAB). Since their inception, over 15,000 such proceedings have been filed, making them an integral part of the process for resolving patent disputes in the United States.
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*This article was previously published in the New York Law Journal on May 23, 2023.
Texas May Soon Have One of the Strongest Data Privacy Laws in the U.S.
Texas is likely to become the tenth state to enact comprehensive privacy legislation after the Texas Senate approved HB 4, the Texas Data Privacy and Security Act, by a vote of 30-0 on May 10, 2023. The bill was amended in the Senate and now returns for conference in the House, which passed an earlier version of HB 4 in April by a vote of 146-0. Although the House has not yet accepted the Senate’s amendments (which both strengthen and weaken various aspects of the bill), it appears increasingly likely that the legislature will soon pass a privacy law for Governor Abbott’s signature.
To read the full article, click here.
Daily Journal Names Guy, Guske and Williams as 2023 "Top Intellectual Property Lawyers"
We are pleased to announce that the Daily Journal named partners Hop Guy, Sarah Guske and Eliot Williams on its list of ‘Top Intellectual Property Lawyers’ for 2023. This list is compiled from hundreds of nominations submitted by lawyers in California, with the editors selecting nominees based on the impact of their work in intellectual property.
To read the full article, click here.
May 2023 Intellectual Report Recap
In case you missed it, here is a video recap of our May 2023 Intellectual Property Report that looked at:
- Where Should the Focus STEM From?: Achieving Gender Parity in Global Patenting
- IPR Estoppel Issues
- First Quarter 2023 Federal Circuit Law Update
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