August/September 2025 Cantor Colburn IP Newsletter Ideas on Intellectual Property
Composition-of-matter patents
Can claims drafting involve abstract ideas?
The life sciences and pharmaceuticals industries recently received some reassurance that properly drafted composition-of-matter patents can withstand subject-matter eligibility challenges. In upholding the validity of one such patent, the U.S. Court of Appeals for the Federal Circuit criticized the International Trade Commission’s (ITC’s) analysis as “too exacting.” This article reviews the case and the importance of carefully crafting patents — especially specifications. A brief sidebar reviews the court’s discussion of the enablement requirement. This mandates that a patent specification needs to describe the claimed invention in such terms that a person skilled in the relevant field can make and use it.
US Synthetic Corp. v. Int’l Trade Comm’n, No. 23-1217, Feb. 13, 2025, Fed. Cir.
Patent cancellation upheld despite PTAB claim construction error
What if the Patent Trade and Appeal Board improperly interprets a claim term in evaluating patentability? It often leads to a reversal or reconsideration of the board’s decision. That’s not always the case, though. This article reviews a case in which a patent holder recently learned this lesson in a decision by the U.S. Court of Appeals for the Federal Circuit.
HD Silicon Solutions LLC v. Microchip Technology Inc., No. 23-1397, Feb. 6, 2025, Fed. Cir.
Foiled by functionality
Expired patents undermine trademark eligibility
A ruling by the U.S. Court of Appeals for the Federal Circuit serves as an important reminder that trademark protection isn’t available for functional designs. It also demonstrates how some patents can contradict a would-be trademark holder’s claim that its design isn’t actually functional. This article summarizes the case and trademark law’s functionality doctrine.
CeramTec GmbH v. CoorsTek Bioceramics LLC, No. 23-1502, Jan. 3, 2025, Fed. Cir.
AI can’t “author” copyrightable works
A computer scientist’s years-long quest to obtain copyright protection for a work created by artificial intelligence (AI) recently landed in a federal appellate court. This short article reviews the applicant’s ongoing fight to obtain a copyright and the multiple findings against him.
Thaler v. Perlmutter, No. 23-5233, March 19, 2025, D.C. Cir.
