Recent USPTO Guidance on Claim Interpretation Maintains Course
On March 18, 2024, the US Patent & Trademark Office (USPTO) issued a memorandum to patent examiners related to resources for examining means-plus-function and step-plus-function limitations under 35 U.S.C. § 112(f). The memorandum seeks to remind examiners of resources available when examining limitations under § 112(f), give applicants and the public deeper insight into the interpretation § 112(f), and emphasize the applicants' opportunity to define interpretations in the process of drafting claims and specification. This memorandum also emphasizes the necessity for examiners to create a clear record of the interpretation of the claims.
Can A Patent Owner Claim Foreign Damages Resulting from Domestic Infringement?
Until recently, a U.S. patent owner was barred from obtaining damages under 35 U.S.C. § 284 for lost sales outside the United States, even where those lost sales were the direct and foreseeable result of patent infringement inside the United States. In Brumfield v. IBG LLC, the CAFC recognized that the Supreme Court had largely overruled prior precedent on this issue, and held that recovery of patent damages based upon foreign activity is possible. While the alleged foreign activity in Brumfield ultimately did not support damages under the newly applied WesternGeco two-step framework, the CAFC's Brumfield decision now provides a less restrictive standard for obtaining damages for foreign infringing activity.
Is Mooring in a "Safe Harbor" Actually Safe?
The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court's decision of noninfringement based on the "safe harbor" provision of 35 USC § 271(e)(1). The importation of two medical devices into the United States was found to fall within the safe harbor because the importation was reasonably related to clinical studies necessary to obtain United States Food and Drug Administration (FDA) approval of the devices. This decision navigates key interpretation aspects of the statute and discusses whether intent and alternative uses are relevant to determine compliance with the statute.
Can Inventions Made Using Artificial Intelligence Be Patented?
On February 13, 2024, the USPTO published its much-anticipated guidance on inventorship for AI-assisted inventions with immediate effect. This guidance, issued pursuant to President Biden's Executive Order on AI issued in October 2023, clarifies how the USPTO will analyze inventorship of inventions made by humans with the use or assistance of AI and explains how this may impact other areas of patent practice. The USPTO has also issued examples demonstrating how the new guidelines should be applied in practice and is seeking public comments on the guidance as well as the examples.
USPTO's Updated Guidance for Making an Obviousness Determination
In late February, the United States Patent and Trademark Office (USPTO) issued an update to the current guidance to examiners in making obviousness determinations. The five-point guidance emphasizes the flexible approach to determining obviousness in light of the U.S. Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc. (KSR). The update is based on a review of several cases from the past ten years of post-KSR America Invents Act (AIA) law.
Specification Support for Numerical Range Endpoints
In RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., the U.S. Court of Appeals for the Federal Circuit recently vacated a PTAB determination that a claim phrase specifying a numerical range lacked written description support under 35 U.S.C. § 112. The Court held that the PTAB's determination was not supported by substantial evidence. This decision reinforces the existing legal standard that a claimed numerical range may be implicitly supported in the specification considering the knowledge of a person having ordinary skill in the art, rather than being expressly supported by actual written description.
A Cautionary Tale of Language Used in Prosecution History
The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court's decision of noninfringement of an International Business Machines Corporation patent based on intrinsic evidence supporting a specific claim interpretation. The claims were found to require "pre-fetching" of data for local storage and later "on-demand" retrieval even though this feature was not explicitly recited in those claims, in view of certain language in the specification and the prosecution history of the patent. Thus, the claims were not infringed. This decision highlights the importance of not only claim language, but also the language in the specification and that used during prosecution.
USPTO Updates Guidance on Enablement
In 2023, the U.S. Supreme Court affirmed invalidity of two Amgen patents based on a lack of enablement for broad genus claims that would potentially encompass millions of antibodies. The Court explained that Amgen's teaching of how to make and use their invention was little more than research assignments, and therefore requires undue experimentation to arrive at the breadth of the claims. In January of 2024, the USPTO updated its guidelines for assessing compliance with the enablement requirement based on the Amgen decision.
Did The USPTO's Refusal to Register "Trump Too Small" as a Trademark Violate Free Speech?
In Vidal v. Elster, the U.S. Supreme Court will address whether the USPTO's refusal to register the mark "TRUMP TOO SMALL" violates the free speech clause of the First Amendment of the U.S. Constitution by imposing a content-based restriction on speech that criticizes a government official or public figure.
Great Concepts, LLC v. Chutter, Inc.: A "Green-Light" for Fraud?
In Great Concepts, LLC v. Chutter, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the Trademark Trial and Appeal Board (TTAB) is authorized to cancel the registration of a mark if the "registration was obtained fraudulently," but is not authorized to cancel the registration if the incontestability status of the mark is "obtained fraudulently."
