IP Law Daily, WORTH NOTING—Other IP law developments, (Feb 23, 2024)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: The Patent Trial and Appeal Board did not err in finding that Intel Corporation failed to show by a preponderance of the evidence that the challenged claims of U.S. Patent No. 9,436,809 (’809 patent) were unpatentable as obvious over two distinct combinations of references, the U.S. Court of Appeals for the Federal Circuit has ruled. Contrary to Intel's assertion, the Board correctly understood the proposed combinations and identified deficiencies associated with these combinations. The Board’s final written decisions thus squarely addressed the obviousness theories advanced in the petitions and the Board’s findings in both inter partes review proceedings were supported by substantial evidence (Intel Corp. v. Koninklijke Philips N.V., February 22, 2024, Chen, R.).

PATENT—Fed. Cir.: MSN Laboratories Private Ltd. was not entitled to a writ of mandamus directing the federal district court in Alexandria, Virginia, to reverse an order transferring a patent infringement action it brought against Bioprojet Société Civile de Recherche seeking a declaration of non-infringement or invalidity of the claims of U.S. Patent Nos. 8,207,197; 8,354,430; and 8,486,947, following the filing of MSN’s Abbreviated New Drug Application (ANDA). The next day, Bioprojet sued MSN in the District of Delaware for infringing claims of the patents. According to the U.S. Court of Appeals for the Federal Circuit, the district court plausibly concluded that judicial economy considerations favored transfer based on an earlier-filed, related cases in Delaware (In Re MSN Laboratories Private Ltd., February 20, 2024, Chen, R.).

PATENT—Fed. Cir.: The U.S. Court of Appeals for the Federal Circuit has denied a petition filed by IOENGINE, LLC for a writ of mandamus directing the USPTO to vacate its decisions ordering the underlying ex parte reexaminations of U.S. Patent Nos. 10,447,819 and 10,972,584 and to terminate those proceedings. Although the Patent Trial and Appeal Board previously rejected two petitions for inter partes review filed by Roku, Inc., the Board found that Roku had raised substantial new questions of patentability, even though it cited the same prior art references. IOENGINE failed to show that a post-final decision appeal would be an inadequate remedy to obtain relief (In Re IOENGINE, LLC, February 20, 2024, Chen, R.).

PATENT—Fed. Cir.: Substantial evidence supported two Patent Trial and Appeal Board decisions finding that certain claims of U.S. Patent No. 8,051,043 (’043 patent) are unpatentable as obvious over U.S. Patent Publication No. 2006/0212439 (Field) alone and in combination with U.S. Patent Publication No. 2005/0114614 (Anderson), according to the U.S. Court of Appeal for the Federal Circuit. The court rejected appeals by both parties challenging the Board’s understanding of the prior art references (Hybir, Inc. v. Veeam Software Corp., February 23, 2024, Chen, R.).

COPYRIGHT NEWS: U.S. Reps. Brian Fitzpatrick (R-PA) and Jimmy Panetta (D-CA) have cosponsored legislation to extend copyright protection to golf course designs. The “Bolstering Intellectual Rights against Digital Infringement Enhancement Act” or the “BIRDIE Act” (H.R. 7228) would amend the definition of “architectural work” in Section 101 of the Copyright Act and would apply to works created on or after December 1, 1990, the effective date of The Architectural Works Copyright Protection Act of 1990.

TECHNOLOGY/INTERNET NEWS: House Speaker Mike Johnson (R., La.) and Minority Leader Hakeem Jeffries (D., N.Y.) this week announced the establishment of a bipartisan Task Force on Artificial Intelligence (AI) “to explore how Congress can ensure America continues to lead the world in AI innovation while considering guardrails that may be appropriate to safeguard the nation against current and emerging threats.” The task force will work to develop a report with guiding principles, recommendations, and bipartisan policy proposals developed with the committees of jurisdiction. Speaker Johnson and Rep. Jeffries have each appointed 12 members to the task force from key committees of jurisdiction. Rep. Jay Obernolte (R., Calif.) will chair the task force, with Rep. Ted Lieu (D., Calif.) as co-chair. The Task Force will seek to produce a comprehensive report that will include guiding principles, forward-looking recommendations, and bipartisan policy proposals.

USPTO PATENT NEWS—AI WEBINAR: The USPTO will host a webinar on Inventorship Guidance for AI-Assisted Inventions on Tuesday, March 5, from 1-2 p.m. ET. During the webinar, the Office provide an overview of the guidance and answer related stakeholder questions. The event is free and open to the public, but virtual space is limited. The guidance and examples are available on the AI-related resources page.

Attorneys: Christina Jordan McCullough (Perkins Coie LLP) for Intel Corp. Peter F. Snell (Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC) for Koninklijke Philips N.V. Ronald M. Daignault (Daignault Iyer LLP) for MSN Laboratories Private Ltd. Christopher Neil Sipes (Covington & Burling LLP) for Bioprojet Société Civile De Recherche. Noah Leibowitz (Dechert LLP) for IOENGINE, LLC. Farheena Yasmeen Rasheed, U.S. Patent and Trademark Office, for Katherine K. Vidal. Seth Ostrow (Meister Seelig & Fein PLLC) for Hybir, Inc. Steven Pappas (Sterne Kessler Goldstein & Fox, PLLC) for Veeam Software Corp.

Companies: Intel Corp.; Koninklijke Philips N.V.; MSN Laboratories Private Ltd.; Bioprojet Société Civile De Recherche; IOENGINE, LLC; Hybir, Inc.; Veeam Software Corp.

News: AINews Copyright Patent TechnologyInternet