U.S. patent law includes many provisions that ensure patents are granted only to truly new inventions that the public couldn’t have been privy to before the filing of the patent application. One of these is the “on-sale bar,” which generally invalidates patents for products that had already been available for sale. The bar applies even, it turns out, if the products don’t disclose the patented invention’s functional details. This article reviews a case governed by the laws before the America Invents Act of 2011 (AIA) was passed. A short sidebar covers what evidence was required to prove the on-sale bar applied under pre-AIA law.
Definitive Holdings v. Powerteq, No. 24-1761, April 14, 2026, Fed. Cir.

The owner of a patent can seek correction of the listed inventors at any time after a patent has issued. But a recent case makes clear that this leniency regarding corrections doesn’t provide the patent owner a second bite at the apple after the Patent Trial and Appeal Board has found the patent invalid. This article summarizes the case and the court’s findings.
Implicit, LLC v. Sonos, Inc., No. 20-1173, -1174, March 9, 2026, Fed. Cir.

To bring a copyright infringement lawsuit, a party must possess an exclusive right in the work under the Copyright Act. This article discusses what happens when multiple parties have such an exclusive right in a single copyright — so multiple parties can sue for infringement of that copyright.
Great Bowery Inc. v. Consequence Sound LLC, No. 24-12482, -1174, May 5, 2026, 11th Cir.

Trademark opposition proceedings often turn on the likelihood of confusion between two marks based on an analysis of 13 so-called DuPont factors (named for the case in which they were first enumerated). But the factors don’t have to be weighted equally. In fact, the U.S Court of Appeals for the Federal Circuit has repeatedly stated that each factor’s weight may vary from case to case, and courts aren’t required to consider every factor in every case. This article examines a recent case in which a single factor weighing against confusion proved decisive.
Fuente Marketing, Ltd. v. Vaporous Technologies, LLC, No. 24-1460, April 8, 2026, Fed. Cir.

Who knows what, and when?
Third-party product sale triggers patent’s on-sale bar
This article reviews a Federal Circuit decision holding that a third party's commercial sale of a product can trigger the patent on-sale bar, even when the product does not reveal the patented invention's underlying functionality.
Definitive Holdings v. Powerteq, No. 24-1761, Apr. 14, 2026, Fed. Cir.

Corrected inventorship doesn't change patent invalidity finding
This article discusses a Federal Circuit ruling that correcting a patent's inventorship after issuance cannot revive a patent that has already been found invalid in post-grant proceedings.
Implicit, LLC v. Sonos, Inc., Nos. 20-1173 & 20-1174, Mar. 9, 2026, Fed. Cir.

Establishing exclusivity in the rights to copyrighted work
This article examines an Eleventh Circuit decision clarifying that multiple parties may hold exclusive rights in the same copyrighted work and may each have standing to pursue infringement claims.
Great Bowery Inc. v. Consequence Sound LLC, No. 24-12482, May 5, 2026, 11th Cir.

A single DuPont factor can defeat trademark opposition
This article highlights a Federal Circuit decision demonstrating that a single DuPont factor may outweigh all others and be dispositive in determining whether confusion between trademarks is likely.
Fuente Marketing, Ltd. v. Vaporous Technologies, LLC, No. 24-1460, Apr. 8, 2026, Fed. Cir.

How not to draft a patent claim
This article reviews a Federal Circuit decision finding software patent claims ineligible because the claims failed to capture key technological improvements described in the specification.
The Trustees of Columbia University v. Gen Digital Inc., No. 24-1243, Mar. 11, 2026, Fed. Cir.

The Digital Millennium Copyright Act: Court clarifies safe harbor protection
This article discusses a Second Circuit ruling emphasizing that online platforms may lose DMCA safe harbor protection when they exercise substantial control over user-submitted content.
McGucken v. Shutterstock, Inc., No. 23-7652, Feb. 10, 2026, 2d Cir.

Are genetically engineered molecules patentable?
This article examines a Federal Circuit decision holding that genetically engineered host cells were patent eligible because they were markedly different from naturally occurring compositions. With an update from a recent PTAB decision.
REGENXBIO Inc. v. Sarepta Therapeutics, Inc., No. 24-1408, Feb. 20, 2026, Fed. Cir.

Taking a bite out of a trademark infringement claim
This article highlights a Seventh Circuit ruling finding substantial evidence that the term "Pizza Puff" had become generic, undermining a trademark infringement claim despite federal registration.
Illinois Tamale Co., Inc. v. LC Trademarks, Inc., Nos. 24-3317, 25-1072, 25-1076 & 25-1112, Jan. 16, 2026, 7th Cir.

Online platforms that allow users to upload content often rely on the so-called “safe harbors” under the Digital Millennium Copyright Act (DMCA) to shield themselves from copyright infringement claims. This article in the August/September 2026 IP Newsletter highlights a recent ruling from the U.S. Court of Appeals for the Second Circuit that serves as a useful reminder, though, that the protection is far from absolute.
McGucken v. Shutterstock, Inc., No. 23-7652, Feb. 10, 2026, 2d Cir.

A software patent holder learned the hard way how critical drafting is to surviving patent-eligibility challenges. In this article from the August/September 2026 issue of Cantor Colburn's Ideas on Intellectual Property Law newsletter, the U.S. Court of Appeals for the Federal Circuit found the asserted software claims were directed to an “abstract idea” because the claims failed to require many of the technological improvements described in the patents’ specifications, though the patentee may still ultimately prevail. The article summarizes the court’s findings and explains why the case remains alive. A brief sidebar discusses when foreign sales of software are relevant to damages.
The Trustees of Columbia University v. Gen Digital Inc., No. 24-1243, Mar. 11, 2026, Fed. Cir.

Trademark owners may think that obtaining federal registration gives them reliable protection for their marks, but protection isn’t absolute. Registration creates only a rebuttable presumption of validity. This article highlights a recent case illustrating how that presumption can be defeated if the mark has become generic.
Illinois Tamale Co., Inc. v. LC Trademarks, Inc., No. 24-3317, 25-1072, -1076, -1112, Jan. 16, 2026, 7th Cir.

The U.S. Court of Appeals for the Federal Circuit issued an important ruling for the life sciences industry in REGENXBIO Inc. v. Sarepta Therapeutics, Inc., No. 24-1408 (Fed. Cir. Feb. 20, 2026), addressing the patent eligibility of genetically engineered compositions. This article examines the analysis applied by the court of when biotechnology inventions composed of naturally occurring components are markedly different from naturally occurring materials and therefore patent eligible. It also discusses the Patent Trial and Appeal Board's subsequent application of the decision in Ex parte Frank C. Marini and Shay Soker, 2026 Pat. App. LEXIS 3276 (PTAB Aug. 4, 2026), which relied on REGENXBIO to reverse a §101 rejection of claims directed to liver organoids composed of naturally occurring components. Notably, neither matter applies the two-step Alice/Mayo analysis to arrive at eligibility. Together, these decisions provide valuable guidance on patent eligibility for biotechnology and life sciences innovations.
REGENXBIO Inc. v. Sarepta Therapeutics, Inc., No. 24-1408, Feb. 20, 2026, Fed. Cir.

“Top Gun” sequel flies clear of copyright infringement
Yonay v. Paramount Pictures Corp., No. 24-2897, Jan. 2, 2026, 9th Cir.

Reading tea leaves
Court revives trademark application for generic tea term
In re Bayou Grande Coffee Roasting Co., No. 24-1118, Dec. 9, 2025, Fed. Cir.

Patent law’s indefiniteness standards for “language of degree”
Akamai Technologies, Inc. v. MediaPointe, Inc., No. 24-1571, Nov. 25, 2025, Fed. Cir.

When may courts correct language in a patent claim?
Canatex Completion Solutions, Inc. v. Wellmatics, LLC, No. 24-1466, Nov. 12, 2025, Fed. Cir.

The box office sensation “Top Gun: Maverick” didn’t just help bring crowds back into movie theaters post-pandemic. It also spurred a copyright infringement lawsuit based on a magazine article published almost 40 years earlier. This article covers the court’s decision finding that the works in question didn’t share “substantial similarity in protectable expression.” A short sidebar explains that the defendant movie studio didn’t breach its initial agreement with the article author by not crediting him in the sequel.

Yonay v. Paramount Pictures Corp., No. 24-2897, Jan. 2, 2026, 9th Cir.

Trademark applicants that have had a trademark application rejected by an examiner from the U.S. Patent and Trademark Office shouldn’t lose hope. Examiners make reversible mistakes — as evidenced by a recent case where the U.S. Court of Appeals for the Federal Circuit rejected the multiple reasons an examiner cited when denying an application. This article explains why the court reversed the Trademark Trial and Appeal Board’s determination that a mark wasn’t registrable.
In re Bayou Grande Coffee Roasting Co., No. 24-1118, Dec. 9, 2025, Fed. Cir.; https://ttabvue.uspto.gov/ttabvue/ttabvue-90549985-EXA-10.pdf

Technology and other patents often employ qualitative terms such as “best” or “optimal” — what courts call “language of degree.” This article summarizes a case in which the U.S. Court of Appeals for the Federal Circuit discussed how this language can leave a patent vulnerable to being invalidated if objective boundaries for determining what’s “best” or “optimal” aren’t provided.
Akamai Technologies, Inc. v. MediaPointe, Inc., No. 24-1571, Nov. 25, 2025, Fed. Cir.

It’s rare for courts to correct errors in patent claims — but it does happen. This brief article explains the kind of circumstances that might compel a court to act.
Canatex Completion Solutions, Inc. v. Wellmatics, LLC, No. 24-1466, Nov. 12, 2025, Fed. Cir.

Watch your words
This article discusses a patent infringement case that failed after language in the specification was found to redefine a claim term and limit its scope. It highlights how courts may construe claim terms differently than expected and briefly addresses claim scope disavowal.
Aortic Innovations LLC v. Edwards Lifesciences Corp., No. 24-1145, Oct. 27, 2025, Fed. Cir.

Clarifying the “by another” standard under the pre-AIA Patent Act
This article reviews a Federal Circuit decision addressing whether an earlier application with overlapping inventors can invalidate later-filed patents, a result that was unfavorable to the patent holder.
Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., No. 25-1210, Oct. 30, 2025, Fed. Cir.

Trade secrets must be … secret
This article examines a case in which a former employee sued his employer over information copied from a prior employer, emphasizing that a plaintiff must take affirmative steps to protect and limit disclosure of alleged trade secrets.
Snyder v. Beam Techs. Inc., No. 24-1136, Aug. 5, 2025, 10th Cir.

How to fail at a sound recording copyright infringement
This article reviews a case distinguishing sound recording copyrights from musical composition copyrights and explains what a sound recording copyright holder must show to prove infringement.
Richardson v. Kharbouch, No. 24-1119, Oct. 16, 2025, 7th Cir.

Can an existing patent application invalidate subsequently filed patents if the application and the patents identify overlapping inventors? The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, recently addressed this issue. This article reviews why the result was bad news for the holder of the challenged patents.

Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., No. 25-1210, Oct. 30, 2025, Fed. Cir.

Drafting a patent application requires careful phrasing to avoid costly missteps. One patent holder recently learned the hard way that words used in a specification can end up redefining ostensibly clear patent claim terms — and limiting the patent protection as a result. This article reminds readers that while the meaning of a claim term might be apparent, a court could disagree. A short sidebar looks at how a patentee can disavow a patent claim’s scope.
Aortic Innovations LLC v. Edwards Lifesciences Corp., No. 24-1145, Oct. 27, 2025, Fed. Cir.

Different types of copyrights convey different kinds and amounts of rights to the holder. This short article reviews a recent infringement case highlighting the distinction between a sound recording copyright and a musical composition copyright — and how a sound recording copyright holder can show infringement.

Richardson v. Kharbouch, No. 24-1119, Oct. 16, 2025, 7th Cir.

Trade secret misappropriation cases often involve an employer suing a former employee. The U.S. Court of Appeals for the Tenth Circuit heard a case last year that flipped the script — the former employee sued the employer over information he’d copied from yet another previous employer. Although disclosure of a trade secret doesn’t automatically defeat trade secret protection, a plaintiff must take subsequent affirmative action to safeguard the information and mitigate the scope of the disclosure. The plaintiff in this case not only failed to do that, but also affirmatively ratified his disclosure by telling the CEO it was intentional.

Snyder v. Beam Techs. Inc., No. 24-1136, Aug. 5, 2025, 10th Cir.

Cantor Colburn attorneys attorneys Devon Murphy, Alison Caless, and Michelle Ciotola authored Trademark Laws: Connecticut for Thomson Reuters Practical Law Intellectual Property & Technology. The guide provides a practical overview of Connecticut trademark registration, enforcement, counterfeiting, unfair competition, and related state law issues for practitioners.

First-filer vs. second-filer
Federal Circuit clarifies AIA derivation proceedings
Global Health Solutions LLC v. Selner, No. 23-2009, Aug. 26, 2025, Fed. Cir.

Bayh-Dole Act
How patent march-in rights really work
35 U.S.C. §§203, 204

Are NFTs “goods” for trademark purposes?
Yuga Labs, Inc. v. Ripps, No. 24-879, July 23, 2025, 9th Cir.

Understanding the derivative works exception to copyright’s termination right
Atticus Limited Liability Co. v. The Dramatic Publishing Co., No. 23-1226, July 29, 2025, 2d Cir.

First-filer vs. second-filer: Federal Circuit clarifies AIA derivation proceedings

More than a decade after the America Invents Act (AIA) shifted the U.S. patent system from a “first-to-invent” to a “first-to-file” system, the U.S. Court of Appeals for the Federal Circuit has weighed in for the first time on a derivation proceeding under the law. The ruling sheds valuable light on the proper framework for such proceedings under the AIA. This article discusses the law and why the case provides yet another reason for inventors to promptly file their patent applications. It also highlights the need to maintain careful documentation of invention conception to corroborate inventor testimony. A brief sidebar covers whether actual reduction to practice is always necessary for complete conception to occur.

Global Health Solutions LLC v. Selner, No. 23-2009, Aug. 26, 2025, Fed. Cir.

Back in 1980, the Bayh-Dole Act established a federal patent policy that allows recipients of federal funding to retain ownership of patent rights in inventions created with such funding. Certain restrictions apply, though, including “march-in rights.” The law and this particular restriction have been the subject of much misinformation lately, leading to a fear of heightened federal scrutiny over inventions subject to it. This article reviews what federal funding recipients need to understand about the basic aspects of the Bayh-Dole Act if they wish to avoid running afoul of its requirements and retain ownership of the patent rights.
35 U.S.C. §§203, 204

The U.S. Court of Appeals for the Ninth Circuit recently ruled in a case of critical importance to creators of nonfungible tokens (NFTs) and other digital offerings. This article highlights the ruling that extends to NFT creators potentially valuable trademark rights in NFT names, logos and other protectible elements.
Yuga Labs, Inc. v. Ripps, No. 24-879, July 23, 2025, 9th Cir.

The drafters of the Copyright Act thought ahead in ways authors might not. They included a termination right to free authors from the consequences of granting their copyright rights before they understood the true value of their works. The termination right is subject to what’s called the derivative works exception, though. This article reviews a recent case in which one grantee tried to push the boundaries of that exception, with the U.S. Court of Appeals for the Second Circuit closing the book on the claim.
Atticus Limited Liability Co. v. The Dramatic Publishing Co., No. 23-1226, July 29, 2025, 2d Cir.

“Access” in the internet age
Social media sharing complicates copyright infringement analysis
Woodland v. Hill, aka Lil Nas X, No. 23-55418, May 16, 2025, 9th Cir.

Can trademark registrants sue co-owners for infringement?
Reed v. Marshall, No. 24-20198, July 2, 2025, 5th Cir.

PTO memo limits evidence in IPR proceedings
Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 23-1864, July 14, 2025, Fed. Cir.

How prosecution history disclaimer doomed a patent infringement claim
Doctrine applies to both design and utility patents
Top Brand LLC v. Cozy Comfort Co. LLC, No. 24-2191, July 17, 2025, Fed. Cir.

One element of a successful copyright infringement claim is showing that the defendant had access to the plaintiff’s copyrighted work. But how can a court assess the concept of access in a digitally interconnected world where social media can make a post available to millions of people around the globe? The U.S. Court of Appeals for the Ninth Circuit recently considered this question. This article highlights one of its conclusions: availability shouldn’t be confused with access.

Woodland v. Hill, aka Lil Nas X, No. 23-55418, May 16, 2025, 9th Cir.

A patent doesn’t always provide the protection a patentee expects. In fact, the prosecution history (all communication between the patent applicant and the examiner) can come back to haunt a patentee when it later pursues an infringement action. This article summarizes a recent patent case in which the court found that prosecution history disclaimer applies to both design and utility patents.

Top Brand LLC v. Cozy Comfort Co. LLC, No. 24-2191, July 17, 2025, Fed. Cir.

The U.S. Patent and Trademark Office (PTO) announced this past summer that it would begin limiting the use of “applicant admitted prior art” in inter partes reviews. The change came on the heels of a ruling by the U.S. Court of Appeals for the Federal Circuit that, contrary to the PTO’s new position, allowed such evidence to show missing claim limitations. This article discusses the court case and the PTO memo.

Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 23-1864, July 14, 2025, Fed. Cir.

Breaking up is hard to do — especially when trademark rights are involved. Recently, for the first time, the U.S. Court of Appeals for the Fifth Circuit considered whether a co-owner of a trademark may pursue claims against other owners for unauthorized use of the mark. This article reviews the relevant statutory text and U.S. Supreme Court precedent the court used in reaching its ruling.

Reed v. Marshall, No. 24-20198, July 2, 2025, 5th Cir.

Michelle Ciotola and David Kincaid explore the recent settlement in Anthropic, which provides insights into the lawful use of copyrighted works for AI training and the risks associated with misuse in their article, "Anthropic's $1.5B Lesson: Fair Use Has Limits in the Age of AI," in The Trademark Lawyer magazine.

Cantor Colburn Partner David Kincaid, a recognized thought leader and co-chair of the firm’s Artificial Intelligence Practice, contributed to the IPO Law Journal’s AI Patenting Handbook V3.0—an essential resource offering practical guidance for patenting AI-related inventions and navigating emerging legal challenges.

David Kincaid, co-chair of Cantor Colburn’s Artificial Intelligence Practice Group, is a contributing author of the Intellectual Property Owners Association’s recently published white paper, “101 Eligibility Rejection Response Strategies.”