IP Law Daily, WORTH NOTING—Other IP law developments, (Nov 17, 2023)

By WK Editorial Staff

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

COPYRIGHT OFFICE NEWS: The U.S. Copyright Office is again extending the deadline to submit reply comments in response to the Office’s August 30, 2023, notice of inquiry regarding artificial intelligence and copyright. The deadline will ensure that members of the public have sufficient time to prepare responses to the Office’s questions and submitted comments and that the Office can proceed on a timely basis with its inquiry of the issues identified in its notice with the benefit of a complete record. Reply comments are now due by December 6, 2023. Additional information is available on the Office’s Copyright and Artificial Intelligence webpage (88 Fed. Reg. 78691, November 15, 2023).

COPYRIGHT OFFICE NEWS: The U.S. Copyright Office has extended the deadline to submit reply comments in response to the Office’s September 26, 2023, supplemental notice of proposed rulemaking on termination rights and other topics related to the Music Modernization Act. The deadline will ensure that members of the public have sufficient time to prepare reply comments to the Office and that the Office can proceed on a timely basis with its inquiry of the issues identified in its notice with the benefit of a complete record. Reply comments are now due by December 5, 2023 (88 Fed. Reg. 78393, November 16, 2023).

PATENT NEWS: USPTO Director Kathi Vidal on November 15 designated as precedential a March 2023 Patent Trial and Appeal Board decision clarifying the distinction between pre-AIA 35 U.S.C. § 102(e) and AIA 35 U.S.C. § 102(d) and holding that the requirement in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that under pre-AIA 35 U.S.C. § 102(e), a reference patent’s claims must have written description support in its provisional application in order to be entitled to the filing date of the provisional application, does not apply to AIA 35 U.S.C. § 102(d). This is the fifth PTAB decision designated as precedential in 2023 (Penumbra, Inc. v. RapidPulse, Inc. (§ II.E.3) IPR2021-01466, Paper 34, March 10, 2023, Wisz, J.).

PATENT NEWS: The U.S. Supreme Court on November 13 turned down a petition for certiorari filed by inventor Alfonso Cioffi seeking to reinstate a Texas jury’s infringement verdict and $20 million running royalty damages award against Google. Left standing is a Federal Circuit decision holding that the four reissue patent in suit failed to satisfy the original patent requirement of 35 U.S.C. § 251 because the specification of the original patent did not clearly and unequivocally disclose an embodiment containing two “web browser processes” recited in the asserted claims. Cioffi’s petition had asked, “Should the Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014) ‘exact embodiment’ standard for ‘original patent’ disclosure be overruled as inconsistent with 35 U.S.C. § 251 and this Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942)?” (Cioffi v. Google LLC, Dkt. No. 23-421).

PATENT NEWS: On November 6, the Supreme Court denied a food safety company’s petition for certiorari seeking clarification of the requirement for contribution to conception. The petitioner had urged the High Court to clarify that the quality of a joint inventor’s contribution, rather than quantity, is the correct standard for finding joint inventorship under Section 116(a) of the Patent Act. The petitioner challenged a Federal Circuit decision that allegedly improperly interpreted the Patent Act’s requirements for a joint invention by imposing the extra requirement that a joint inventor’s contribution be significant in quantity when measured against the dimension of the full invention. HIP’s petition had asked, “(1) Whether joint inventorship requires anything more than a contribution to conception that is stated in a patent claim. (2) Whether, under Section 116(a), a claimed and enabled contribution to conception can be deemed insignificant in quality based on the quantity of disclosure in the specification” (HIP, Inc. v. Hormel Foods Corp., Dkt. No. 23-185).

Attorneys: Eliot D. Williams and Jeremy Taylor (Baker Botts LLP) for Penumbra, Inc. Lori A. Gordon and Paul T. Parker (Perkins Coie LLP) for RapidPulse, Inc. Eric W. Benisek (Vasquez, Benisek & Lindgren LLP) for Alfonso Cioffi. Dan L. Bagatell (Perkins Coie LLP) for Google LLC. Jerry R. Selinger (Patterson & Sheridan, LLP) for HIP, Inc. Kurt J. Niederluecke (Fredrikson & Byron, P.A.) for Hormel Food Corporation.

Companies: Penumbra, Inc.; RapidPulse, Inc.; Google LLC; HIP, Inc.; Hormel Food Corporation

News: Copyright Patent TechnologyInternet FedCirNews USPTO