Insights

Washington, D.C.—April 10, 2023: On April 7, 2023, the Federal Circuit affirmed three IPR decisions obtained by Crowell invalidating every asserted claim of three patents owned by Paice LLC and the Abell Foundation that were asserted against BMW: U.S. Patent Nos. 7,104,347; 7,237,634; and 8,630,761.

Washington, D.C. – May 19, 2015: Crowell & Moring LLP is pleased to announce that it has secured 64 attorney rankings for 53 individual attorneys in the 2015 Chambers USA: America’s Leading Lawyers for Business guide. The prestigious rankings are driven by independent interviews of clients and members of the legal community at peer firms.

On February 27, 2023, the Director of the United States Patent and Trademark Office ("USPTO") issued a precedential sua sponte Director Review Decision in the Inter Partes Review ("IPR") of Commscope Technologies LLC v. Dali Wireless, Inc. ("Commscope"), IPR2022-01242. The decision vacated the Patent Trial and Appeal Board ("PTAB") decision granting institution of the petition and held that when deciding whether to institute an America Invents Act ("AIA") post-grant proceeding[1] with a parallel district court litigation, the PTAB must first conduct Fintiv[2] discretionary denial analysis. The PTAB should only consider the compelling merits (or compelling unpatentability challenges) of Fintiv factor 6 if it determines that Fintiv factors 1-5 favor a discretionary denial.

Last Monday, the PTO affirmed its earlier (and unsurprising) position that a patent application filed in July was incomplete because it named an artificial intelligence as the inventor.  The application is believed to be among the first to name an AI as an inventor.

On June 16, 2015, the U.S. Court of Appeals for the Federal Circuit issued a partial en banc decision clarifying the standard to determine whether a patent claim limitation lacking the word "means" is in fact a means-plus-function limitation subject to the strictures of 35 U.S.C. § 112, para. 6 (now 35 U.S.C. § 112(f)). In Williamson v. Citrix Online, LLC, et al., No. 2013-1130, the Federal Circuit overruled its decade-old precedent that established a strong and not readily overcome presumption that a claim limitation expressed in functional language without use of the word "means" is not governed by Section 112, para. 6. This decision will implicate both patent prosecution and litigation—as prosecutors will find it harder to avoid drafting claims that do not invoke "means-plus-function" limitations, and defendants may find it easier to construe claims narrowly by arguing for such "means-plus-function" constructions, as well finding such claims invalid for lack of an enabling disclosure. 

Nearly three years after the passage of the American Invents Act (AIA) there is little doubt that it has changed the patent landscape.  Inter partes reviews in particular have proven to be a significant tool to challenge patent validity, particularly given the outcomes to date and lesser cost compared to district court litigation.  Now that the United States Patent and Trademark Office has issued its first wave of final written decisions, a retrospective analysis of the decisions (and the litigation leading up to them) provides several useful insights.