IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Year: 2025
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Que sera, sera: No declaratory relief after songwriter’s heir terminated copyright assignments

by | Jul 17, 2025 |

Addressing the intersection of a trust beneficiary’s rights to royalties and an heir’s copyright termination rights under 17 U.S.C. § 203, the US Court of Appeals for the Sixth Circuit affirmed the district court’s order dismissing the beneficiary’s request for declaratory relief for failure to state a claim. Tammy Livingston v. Jay Livingston Music, Inc. and Travilyn Livingston, Case No. 24-5263 (6th Cir. Jul. 7, 2025) (Readler, Siler, Clay, JJ.)

Jay Livingston was a prominent 20th century songwriter. In 1985, he established a family trust that granted the beneficiaries royalties from nearly 250 songs and transferred his reversionary copyright interests in the songs to the trust. The copyright interest was reversionary because in 1984, Livingston executed a contract that began assigning copyright interests in the songs to a company whose legal successor would become Jay Livingston Music. That contract laid the groundwork for successive agreements that would each transfer a specific song to the company. By 2000, Livingston had assigned his interests in each song to Jay Livingston Music.

In 2000, Livingston signed a second overarching contract, extending the company’s rights to the full duration of each song’s copyright protection. The songs’ copyrights expire around 2050. In 2003, after Livingston passed away, a California probate court ordered that the trust no longer held any rights in his copyright interests beyond the royalties.

In 2015, Travilyn Livingston (Livingston’s only child) terminated the assignment to Jay Livingston Music of 32 songs under § 203(a)(2)(B) of the Copyright Law, reverting all rights to Travilyn. Tammy Livingston, Travilyn’s daughter, sued Travilyn in 2022, requesting declaratory relief stating either that the termination notices Travilyn used were invalid or that Tammy remained entitled to royalties from the 32 songs under state law. The district court dismissed the case for failure to state a claim. Tammy appealed.

The Sixth Circuit affirmed the district court. The Sixth Circuit considered whether Livingston executed the 2000 contract as an individual or a trustee and to what extent that affected the validity of the assignment extensions. The Court determined that the probate court’s 2003 order had preclusive effect and that Livingston had signed the 2000 contract in his individual capacity. Therefore, the company – not the trust – held the valid assignments in 2015 when Tammy terminated them.

Tammy argued that Travilyn could only terminate the assignments if they had been transferred to a third party in 1984. Tammy claimed that Travilyn did not own the company when the 1984 contract was executed and that Livingston thus granted the rights to himself as the owner of the company. The Sixth Circuit was unpersuaded by this argument because the 1984 agreement stated that Travilyn owned the company on the date of execution. Tammy next argued that the district court committed reversable error when it stated that Travilyn owned the company “sometime before” the 1984 contract’s execution rather than on the day, as the contract itself stated. The Court found that this misstatement did not rise to reversible error.

Finally, to support her [...]

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Appeal is too late to raise percolating claim construction dispute

by | Jul 17, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding of noninfringement, concluding that the patent owner had improperly raised a claim construction issue for the first time on appeal – an argument not preserved at the district court level. Egenera, Inc. v. Cisco Systems, Inc., Case No. 23-1428 (Fed. Cir. July 7, 2025) (Prost, Taranto, Stark, JJ.)

Egenera owns a patent that enhances traditional server systems by enabling a one-time physical setup followed by flexible virtual reconfiguration. The company alleged that Cisco infringed specific claims of the patent.

During claim construction, the parties disputed the interpretation of two terms: “computer processor/processor” and “emulate Ethernet functionality over the internal communication network.” The district court adopted the ordinary meaning of “computer processor,” which excluded Cisco’s unified computing system from its scope. Regarding the term “emulate,” the district court considered whether it implied an absence from the internal communication network but made no further determinations as the parties did not explicitly raise a dispute regarding the remainder of the claim term. Based on its construction of “computer processor/processor,” the district court granted Cisco’s motion for summary judgment on certain claims. Later, at trial, a jury found no infringement of other asserted claims. Egenera moved for judgment as a matter of law (JMOL) or alternatively for a new trial, both of which the district court denied. Egenera appealed the post-trial rulings and the earlier summary judgment ruling.

The Federal Circuit affirmed the district court’s grant of summary judgment. It concluded that the record lacked sufficient evidence to show that Cisco’s system “emulated” Ethernet functionality as required by the asserted claims. The Court emphasized that Egenera’s argument focused narrowly on the construction of the term “emulate,” rather than on the evidentiary record. Moreover, neither party clearly indicated that the dispute centered on unresolved claim construction rather than factual issues. The Court noted that it will not address claim construction on appeal where the issue was not preserved in the district court and was inadequately presented on appeal. As a result, the Court confined its analysis to the sufficiency of the evidence and upheld the district court’s finding of noninfringement.

The Federal Circuit also affirmed the district court’s denial of JMOL. The Court emphasized that it needed to address only one of Cisco’s proposed noninfringement grounds to determine whether substantial evidence supported the jury’s verdict. It concluded that the jury had a sufficient evidentiary basis to find that Egenera failed to prove infringement.

Finally, the Federal Circuit upheld the district court’s denial of Egenera’s motion for a new trial. It rejected all of Egenera’s arguments, which alleged errors related to jury selection, jury instructions, expert testimony, closing arguments, and a verdict contrary to the weight of the evidence.



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State court action doesn’t create reasonable apprehension of related federal claims

by | Jul 17, 2025 |

Addressing whether a federal district court had jurisdiction over an action for declaratory relief that certain trade secrets and trademarks were invalid and not infringed, the US Court of Appeals for the Eighth Circuit concluded that state law claims for breach of contract, trade secret misappropriation, and trademark infringement did not create a reasonable apprehension of federal litigation sufficient to give rise to federal jurisdiction. Thunderhead of Ankeny, Inc. v. Chicken Bones of Kearney, Inc., Case No. 24-2741 (8th Cir. July 8, 2025) (Colloton, Arnold, Gruender, JJ.)

Nearly 20 years ago, David Anders sold his equity in Chicken Bones of Kearney, Inc., which ran a bar and grill called the Chicken Coop. Anders subsequently opened a new Chicken Coop restaurant. Chicken Bones sued Anders for misappropriating Chicken Bones’ trade secrets, trademarks, and trade dress. The parties settled, and Anders received a limited license to the Chicken Coop intellectual property. Anders then opened several other Chicken Coop locations under that license.

Believing that Anders had not complied with the license in opening the new restaurants, Chicken Bones sued Anders in state court for breach of the settlement agreement, misappropriation of trade secret recipes, and infringement of the Chicken Coop trademarks and trade dress. In response, Anders sued Chicken Bones in federal court, seeking declarations of noninfringement and invalidity. The district court dismissed the suit for lack of jurisdiction. Anders appealed.

The parties and the Eighth Circuit assumed that the district court would have jurisdiction only if the suit presented a federal question. The Eighth Circuit explained that to assess federal question jurisdiction in the case of a declaratory action, the Court must imagine a traditional action that presents the same controversy and determine whether a federal claim would appear on the face of the resulting complaint. “If, but for the availability of the declaratory judgment procedure, the federal claim would arise only as a defense to a state created action, jurisdiction is lacking.”

Applying this principle, the Eighth Circuit concluded that the district court did not have jurisdiction over Anders’ declaratory action because he primarily sought vindication of his defenses to Chicken Bones’ pending state law claims. While the Court recognized that Anders also sought declaratory relief in anticipation of potential federal trade secret, trademark, and trade dress claims, the Court reasoned that any federal law controversy between the parties was too speculative to support jurisdiction. While a threat of litigation can give rise to a justiciable controversy, there was no evidence that Chicken Bones would assert overlapping and duplicative federal law claims against Anders. The Eighth Circuit further found that Chicken Bones’ petition to cancel Anders’ federal trademark registration of a Chicken Coop logo did not change its analysis, because the petition merely confirmed the existence of a trademark infringement dispute between the parties, which Chicken Coop elected to adjudicate in state court.

The Eighth Circuit distinguished cases involving state law trade secret claims concerning a patented invention. Because there is no state patent system, such trade secret claims can [...]

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Motivation, expectation of success negate obviousness presumption in overlapping range case

by | Jul 17, 2025 |

The US Court of Appeals for the Federal Circuit affirmed (on its second review) a district court’s ruling upholding the validity of patent claims related to a long-acting injectable dosing regimen, finding that the presumption of obviousness does not apply automatically and must be grounded in specific factual findings, particularly regarding a skilled artisan’s motivation and expectations. Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Case No. 25-1228 (Fed. Cir. July 8, 2025) (Prost, Reyna, Taranto, JJ.)

Janssen sued Teva under the Hatch-Waxman Act in 2018 after Teva filed an abbreviated new drug application (ANDA) seeking approval for a generic version of Janssen’s drug. Teva stipulated infringement but challenged the patent’s validity, arguing that all claims were obvious in light of prior art. The patent at issue covered a dosing regimen involving two “loading doses” spaced about a week apart, followed by monthly maintenance injections, designed to improve patient compliance compared to traditional oral dosing.

In 2021, the district court rejected Teva’s obviousness arguments, citing key differences between the claims and prior art, including the specific dosage amounts, the sequence of administration, and the requirement for deltoid injections. In 2024, the Federal Circuit initially vacated that decision and remanded for further analysis. On remand, the district court again found the claims nonobvious, and Teva appealed again.

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. Teva argued that a presumption of obviousness should apply because the prior art disclosed equal loading doses (150 or 100 mg-eq) within the claimed range. The Federal Circuit disagreed, emphasizing that the presumption depends on factual premises (such as a skilled artisan’s motivation to optimize and expectations from routine experimentation), which were not met here. The Court noted that Janssen’s specific choice of a higher first dose followed by a lower second dose did not clearly fall within the presumption’s scope.

Turning to the obviousness analysis, the Federal Circuit found that the three primary prior art references did not disclose a loading-dose regimen. Teva’s additional references, which it claimed taught dose reduction strategies, were also deemed insufficient. The Court found that one expert cited a reference recommending a high first dose for acutely ill patients while another noted that long-acting injectables were not typically used for such patients. The Court found that the prior art taken as a whole undermined Teva’s position.

Teva further contended that the district court improperly considered safety and efficacy (factors not recited in the claims) and erred in finding that the multidose regimen added complexity that would discourage a skilled artisan. The Federal Circuit rejected these arguments, affirming that the district court appropriately considered the motivation to develop a safe and effective regimen and correctly found that the prior art lacked relevant safety or efficacy data for multidose approaches.



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Supreme Court to consider whether ISPs can be liable for contributory copyright infringement

by | Jul 10, 2025 |

The Supreme Court of the United States has agreed to review whether an internet service provider (ISP) can be liable for copyright infringement for providing an internet connection that leads to piracy. Cox Communications, Inc. v. Sony Music Entertainment, Case No. 24-171 (Supr. Ct. June 30, 2025) (certiorari granted). The questions presented are:

  • Whether the US Court of Appeals for the Fourth Circuit erred in holding that a service provider can be held liable for “materially contributing” to copyright infringement merely because it knew that people were using certain accounts to infringe and did not terminate access without proof that the service provider affirmatively fostered infringement or otherwise intended to promote it.
  • Whether the Fourth Circuit erred in holding that mere knowledge of another’s direct infringement suffices to find willfulness under 17 U.S.C. § 504(c).

In Sony Music Entm’t., et al. v. Cox Commc’ns, Inc., Case No. 21-1168 (4th Cir. Feb. 20, 2024), the Fourth Circuit upheld a jury verdict finding Cox liable for contributory copyright infringement, rejecting Cox’s arguments that its service was also used for lawful activity and that its contribution must amount to aiding and abetting the infringement. The Court, however, reversed the jury’s verdict of vicarious liability, finding that Cox did not profit from its subscribers’ acts of infringement and thus did not meet the legal prerequisite for that form of secondary liability.



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Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

by | Jul 10, 2025 | ,

In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase “consisting essentially of,” holding that the patentee’s actions during prosecution narrowed the claims beyond the conventional construction. Eye Therapies, LLC v. Slayback Pharma, LLC, Case No. 23-2173 (Fed. Cir. June 30, 2025) (Scarsi, Dist. J., by designation; Taranto, Stoll, JJ.)

The case involved a method for reducing eye redness using low concentrations of brimonidine, a vasoconstrictive compound. Eye Therapies owns a patent that claims methods of administering brimonidine “consisting essentially of” the active ingredient. During inter partes review (IPR), the Board applied the typical construction of that transitional phrase, allowing for the presence of other active agents as long as they did not materially affect the invention’s basic and novel properties. Based on that reading, the Board found the claims obvious over prior art references that disclosed brimonidine in combination with other drugs. On appeal, Eye Therapies argued that the Board’s construction was too broad and inconsistent with the prosecution history.

The Federal Circuit agreed. Although “consisting essentially of” is generally understood to permit unlisted ingredients that don’t materially affect the invention, the Court emphasized that this meaning can be overridden by the intrinsic record. In this case, the applicant amended the claims to avoid prior art and repeatedly argued that the invention involved only brimonidine, with no other active agents. During the original prosecution, the examiner allowed the claims on that basis. The Court found these statements to be definitional, particularly in light of the applicant’s use of “i.e.” to equate the claim language with a brimonidine-only method. Given the clarity and consistency of the applicant’s position, the Court concluded that the prosecution history required a narrower reading than the one the Board used based on the phrase’s conventional meaning.

The Federal Circuit acknowledged that the patent specification disclosed embodiments containing additional active agents. That alone, however, did not justify a broader construction. The narrowing amendment came after the specification was drafted, and the Court reiterated that not every embodiment must fall within the scope of the claims, particularly when the claims have been narrowed during prosecution. The Court also noted that other embodiments in the specification were fully consistent with the narrower interpretation. Taken together, these factors reinforced the conclusion that the applicant’s prosecution statements – not the broader illustrative disclosures – defined the proper scope of the claims.

The Federal Circuit distinguished its 2009 decision in Ecolab v. FMC, where it declined to apply prosecution history disclaimer despite similar language. In Ecolab, the patentee initially stated that peracetic acid was the “sole antimicrobial agent,” but the examiner clarified that “consisting essentially of” did not mean “solely.” The applicant never repeated the statement and secured allowance on other grounds. The specification in Ecolab also described compositions that included other known antimicrobial agents, which supported the broader interpretation. In contrast, the applicant here amended the claims, consistently [...]

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Fair use or foul play? The AI fair use copyright line

by | Jul 2, 2025 |

The US District Court for the Northern District of California granted summary judgment in favor of an artificial intelligence (AI) company, finding that its use of lawfully acquired copyrighted materials for training and its digitization of acquired print works fell within the bounds of fair use. However, the district court explicitly rejected the AI company’s attempt to invoke fair use as a defense to rely on pirated copies of copyrighted works as lawful training data. Andrea Bartz, et al. v. Anthropic PBC, Case No. 24-CV-05417-WHA (N.D. Cal. June 23, 2025) (Alsup, J.)

Anthropic, an AI company, acquired more than seven million copyrighted books without authorization by downloading them from pirate websites. It also lawfully purchased print books, removed their bindings, scanned each page, and stored them in digitized, searchable files. The goal was twofold:

  • To create a central digital library intended, in Anthropic’s words, to contain “all the books in the world” and to be preserved indefinitely.
  • To use this library to train the large language models (LLMs) that power Anthropic’s AI assistant, Claude.

Each work selected for training the LLM was copied through four main stages:

  • Each selected book was copied from the library to create a working copy for training.
  • Each book was “cleaned” by removing low-value or repetitive content (e.g., footers).
  • Cleaned books were converted into “tokenized” versions by being simplified and split into short character sequences, then translated into numerical tokens using Anthropic’s custom dictionary. These tokens were repeatedly used in training, allowing the model to discover statistical relationships across massive text data.
  • Each fully trained LLM itself retained “compressed” copies of the books.

Once the LLM was trained, it did not output any of the books through Claude to the public. The company placed particular value on books with well-curated facts, structured analyses, and compelling narratives (i.e., works that reflected well-written creative expressions) because Claude’s users expected clear, accurate, and well-written responses to their questions.

Andrea Bartz, along with two other authors whose books were copied from pirated and purchased sources and used to train Claude, sued Anthropic for copyright infringement. In response, Anthropic filed an early motion for summary judgment on fair use only under Section 107 of the Copyright Act.

To assess the applicability of the fair use defense, the court separated and analyzed Anthropic’s actions across three distinct categories of use.

Transformative training (fair use)

The authors challenged only the inputs used to train the LLMs, not their outputs. The district court found that Anthropic’s use of copyrighted books to train its LLMs was a transformative use, comparable to how humans read and learn from texts and produce new, original writing. While the authors claimed that the LLMs memorized their creative expression, there was no evidence that Claude released infringing material to the public. The court concluded that using the works as training inputs – not for direct replication, but to enable the generation of new content – favored a finding of fair use.

Format-shifting copies (fair use)

[...]

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Seeing double? Director instructs Board to resolve claim construction pre-institution

by | Jul 2, 2025 |

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting director determined that the two petitions primarily differed with respect to claim construction. In a decision designated as “informative,” he authorized the Board to resolve claim construction pre-institution in view of the Consolidated Trial Practice Guide’s (CTPG) direction that “one petition should be sufficient to challenge the claims of a patent in most situations.” CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068; -00070 (PTAB June 25, 2025) (Stewart, Act. Dir.) The PTO designates a decision as informative when it provides “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.”

CrowdStrike submitted two IPR petitions that challenged the same claims of GoSecure’s patent. The Board instituted both IPRs. GoSecure requested director review, asserting that instituting both petitions was an abuse of the Board’s discretion. On review, the acting director determined that the Board abused its discretion in view of the CTPG’s direction.

The acting director concluded that the two petitions did not reflect an exception to the CTPG’s direction. He determined that CrowdStrike’s petitions were primarily distinguished by the constructions applied to a claim term. The acting director explained that the Board should have construed the term at issue prior to granting institution, concluding that the Board’s institution decision amounted to improper expansion of CrowdStrike’s permitted word count and placed a substantial and unnecessary burden on the Board and GoSecure that could raise fairness, timing, and efficiency concerns. The acting director vacated and remanded the Board’s institution decision.

The acting director also instructed the Board that the patent owner should be allowed to “submit whatever arguments are necessary for the panel to make a claim construction determination” even if the patent owner has not addressed the issue.



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When it comes to objective criteria of nonobviousness, nexus is looser for license evidence

by | Jun 26, 2025 |

The US Court of Appeals for the Federal Circuit partially reversed a decision by the Patent Trial & Appeal Board, effectively relaxing the nexus requirements for patent licenses pertaining to their usage as objective indicia of nonobviousness. Ancora Technologies, Inc. v. Roku, Inc. et. al., Case Nos. 23-1674; -1701 (Fed. Cir. June 16, 2025) (Lourie, Reyna, Hughes, JJ.) (per curium).

Ancora owns a patent directed to limiting software use on a computer through license verification. The patented technology centers on storing an “agent,” which is a license verification program, in a computer’s basic input/output system (BIOS) rather than in volatile memory. In 2021, Nintendo, Roku, and VIZIO separately filed petitions for inter partes review (IPR) challenging claims of Ancora’s patent. The Board consolidated the proceedings and ultimately found certain claims of the patent unpatentable as obvious over a combination of two prior art references: Hellman (which discloses storing license information in nonvolatile memory) and Chou (which discloses a BIOS-level security routine). Ancora appealed.

Ancora raised three issues on appeal:

  • That the Board erred in construing the claim term “agent”
  • That even if the Board correctly construed “agent,” it nonetheless erred in determining obviousness under 35 U.S.C. § 103 based on a combination of Hellman and Chou
  • That the Board erred in its analysis of secondary considerations of nonobviousness.

The Federal Circuit affirmed the Board’s construction of “agent” to mean “a software program or routine” with no further limitations. The Court disagreed with Ancora’s argument that “agent” was limited to use in software only, primarily because neither the patent nor prosecution history provided any disclaimer of hardware. For similar reasons, the Court also disagreed with Ancora’s argument that “agent” was limited to use at the operating-system level.

On the obviousness determination, the Federal Circuit upheld the Board’s conclusion that the combination of Hellman and Chou rendered the claims prima facie obvious. The Court rejected Ancora’s argument that the Hellman/Chou combination would not provide motivation to combine since they are redundant.

The Federal Circuit disagreed with the Board’s analysis of the objective indicia of nonobviousness, particularly the treatment of Ancora’s licensing evidence. The Board found that Ancora failed to establish a sufficient nexus between the claimed invention and evidence of two objective indicia of nonobviousness: industry praise and licensing.

The Federal Circuit agreed with the Board on industry lack of nexus for the alleged praise (where the Board found that praise for the invention in a press release and an agreement between Ancora and another company offering products using the patent was directed broadly to the patent and not specifically to the challenged claims). However, the Court found that the Board erred regarding the appropriate nexus as it relates to Ancora’s licensing evidence.

The Board found that Ancora failed to show a nexus between the challenged claims and two licenses it obtained through settlement agreements in other cases. The Federal Circuit disagreed, finding that the Board applied an overly stringent nexus standard inconsistent with precedent. While products may require detailed [...]

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Looks like estoppel, sounds like estoppel … but it’s just director discretion

by | Jun 26, 2025 |

The acting director of the US Patent & Trademark Office (PTO) granted a patent owner’s request for discretionary denial and denied institution of an inter partes review (IPR) proceeding, finding that the petitioner engaged in unfair dealings by challenging a patent on which its employees were the inventors. Tessell, Inc. v. Nutanix, Inc., IPR2025-00322 (PTAB June 12, 2025) (Stewart, Act. Dir.)

Four individuals were Nutanix employees when they invented the subject matter of the challenged patent. Two of the individuals left to form Tessell and later hired the other two. Tessell, which now includes nearly all of the inventors of the challenged patent, filed a petition for IPR arguing that the claims of the patent were unpatentable. Nutanix filed a request for discretionary denial, which Tessell opposed.

The doctrine of assignor estoppel generally prevents an inventor who has sold or assigned a patent from challenging the validity of the patent. Although assignor estoppel does not apply in IPR proceedings, the acting director explained that the PTO may consider unfair dealings as a factor when determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a). The acting director found that it was inappropriate for the inventors to have used PTO resources to obtain a patent only to later advocate for its unpatentability. The acting director therefore exercised discretion to deny institution.



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