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Intellectual Property Report

Client Updates

Latte Prior Art: Federal Circuit Holds the Plain Meaning of Espresso Pod ‘Barcode’ is Defined by Its Visual Appearance
Nolan McQueen
The Federal Circuit recently issued a precedential opinion in K-fee System GmbH v. Nespresso USA, Inc. reversing a district court’s claim construction of the term “barcode” in a patent directed to coffee pod machines. At issue was whether K-fee’s statements to the European Patent Office distinguishing its patents’ “barcode” limitation from a prior art reference amounted to a clear disclaimer of Nespresso’s accused products. 
To read the full article, click here.

Red Light: Stop and Consider Before Marking Your Software-Based Patent   
Jeremy Taylor, Christian McFall*
Good news! You've been granted a patent on a novel product—now what? Perhaps you've already heard that in order to maximize damages in the case of infringement, you should mark your product with the patent number. But what if your product is software or application rather than a physical product? The answer is not so straightforward. 
To read the full article, click here
*Christian McFall, a law clerk at Baker Botts, assisted in the preparation of this article. 

Robert Benson & Jeffrey Johnson Join Baker Botts 
We are pleased to announce today that prominent patent litigators Robert Benson and Jeffrey Johnson have joined the firm’s Intellectual Property Department in the San Francisco and Houston offices, respectively, as partners. Both are joining Baker Botts from Orrick. 
To read more click here.  

Robert Benson, who is ranked in Chambers Global, has deep experience handling a wide range of commercial and intellectual property litigation in federal and state courts. For more than 30 years, he has dedicated himself to helping clients resolve their most challenging legal disputes and prevail in high-stakes patent litigation. He has also obtained injunctive relief, litigated several trials in significant ITC investigations, and regularly appears before the Patent Trial and Appeal Board and the Federal Circuit. 

Jeffrey Johnson, known for extricating clients out of multifaceted litigation with creative settlements, brings diverse patent litigation experience in the technology, energy and life sciences industries that ranges from arguing motions and Markman hearings, to trials. His experience includes managing teams in all phases of litigation. With a doctorate degree in chemistry and engineering and prior work as a scientist, Johnson has a robust understanding of technical issues.

Federal Judge Issues Scathing Rebuke of Patent Trolls
Robert Maier, Stutti Tilwa*
A recent order from Chief Judge Colm Connolly in the U.S. District Court for the District of Delaware may serve as a warning for “patent trolls”—the derogatory term used to describe companies whose sole function is to acquire and then assert patents, often in cases that are questionable on the merits—against filing cases in Delaware going forward.
To read the full article, click here.
This article was previously published in the New York Law Journal on January 24, 2024.
*Stutti Tilwa, a law clerk at Baker Botts, assisted in the preparation of this article. 

Post-Grant Proceedings in the U.S. – A Strategic Comparative Analysis of IPRs, PGRs, and EPRs
Paul RagusaStephanie Kato
The America Invents Act (AIA) created several new administrative proceedings for challenging the validity of issued patents at the United States Patent & Trademark Office (USPTO), including Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs). Effective September 16, 2012, these proceedings rapidly became important and often used tools to challenge patents asserted against a party in a parallel context, e.g., in litigation or licensing, and are still important proceedings to consider in these contexts.
To read the full article, click here.

This article was previously published in IP Litigator on February 1, 2024.

This Month: Our Take on AI
Joseph Cahill 
UK High Court's Stance on AI Inventorship: In a landmark ruling, the UK High Court has denied patent applications filed by Dr. Thaler for inventions allegedly made by the AI machine DABUS. Nick Palmieri’s analysis in "UK High Court Denies DABUS Inventorship" explains the court's interpretation of the term "inventor" within the meaning of the Patents Act of 1977. The court emphasized that an inventor must be a natural person who devised the inventive concept, thus rejecting the notion that a machine like DABUS could be an inventor. This decision is a significant marker in defining the role of AI in patent law, underscoring the necessity for human involvement in the inventive process.

Copyright Office Rejects Protection for AI-Generated Work: The U.S. Copyright Office issued a letter denying registration of a two-dimensional computer image titled "SURYAST." The decision hinged on the lack of substantial human creative control in the AI-generated output. Interestingly, the work was based on an original photo by the author (protectable in its own right), which was subsequently modified by an AI program. An important takeaway for creative professionals is that while an original work used as a prompting mechanism for an AI system may be protectable, the subsequent digital manipulation conducted by the AI system to generate a new work is not a protectable derivative. I write more about this here: "From Original Photo to AI Art: SURYAST Lacks the Required Human Touch For Copyright Protection."

FTC Fostering AI Discussion: In October of last year, the FTC held a roundtable discussion about pressing issues in the creative industry concerning generative AI. The conversation included the non-consensual use of creative works in AI training, competition between AI outputs and human-made works, style mimicry by AI, and fake endorsements using AI. I discuss further implications of this discussion here: "The Future of AI in Creative Industries: Lessons from the FTC's Roundtable Discussion." 

The FTC continues to engage in AI discussions and will be hosting a virtual summit on Jan. 25. Elizabeth Rogers discusses what will be covered in the event here: "FTC to Host AI Virtual Summit Jan. 25."

January 2024 Intellectual Property Report Recap
In case you missed it, here is a video recap of our January 2024 Intellectual Property Report that looked at:

  • Expedited Patent Examination Program for Semiconductor Innovations Announced by the USPTO
  • New AI Patent Ruling in the UK Upends the International Patent Landscape
  • Blog: Our Take on AI

ABOUT BAKER BOTTS L.L.P.
Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit bakerbotts.com.