Jodi Benassi
Subscribe to Jodi Benassi's PostsJodi Benassi focuses her practice on litigation and investigations. Jodi has experience in federal court district actions in California, Texas, Florida and Michigan and actions before the US Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO). She has also conducted internal investigations on behalf of audit committees from high profile Fortune 500 organizations to Silicon Valley start-ups. Jodi Benassi's full bio.
Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation
By Jodi Benassi on May 15, 2025
Posted In Patents
The US Patent & Trademark Office (PTO) designated a recent Director Review decision as informative, signaling its significance for future proceedings. The decision emphasizes that a final district court ruling invalidating a patent weighs heavily against instituting inter partes review (IPR) under the Fintiv framework, reinforcing the agency’s stance on minimizing duplicative litigation. Hulu LLC...
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“Payment Handler”: A Nonce Term Without Instructions
By Jodi Benassi on May 8, 2025
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that a software term was a “nonce” term that invoked 35 U.S.C. § 112, sixth paragraph (i.e., a means-plus-function claim element). The Court further found that the patent specification did not recite sufficient corresponding structure, rendering the claim element indefinite. Fintiv,...
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Broadcast Alert! Applying Conventional Machine Learning to New Data Isn’t Patent Eligible
By Jodi Benassi on Apr 24, 2025
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that patents applying established machine learning methods to new data are not patent eligible under 35 U.S.C. §101. Recentive Analytics, Inc. v. Fox Corp. et al., Case No. 23-2437 (Fed. Cir. Apr. 18, 2025) (Dyk, Prost, Goldberg, JJ.) Recentive sued Fox,...
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When Is a Trade Secret Accessible? As Soon as It Can Be Reverse Engineered
By Jodi Benassi on Apr 10, 2025
Posted In Trade Secrets
Although the US Court of Appeals for the Federal Circuit upheld a damages award for trade secret misappropriation and breach of a confidentiality agreement, it found that the district court erred in its determination of when the trade secret became publicly accessible for the purpose of applying a reverse engineering defense. The Federal Circuit also...
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Human Authorship Required: AI Isn’t an Author Under Copyright Act
By Jodi Benassi on Mar 27, 2025
Posted In Copyrights
The US Court of Appeals for the District of Columbia upheld a district court ruling that affirmed the US Copyright Office’s (CO) denial of a copyright application for artwork created by artificial intelligence (AI), reaffirming that human authorship is necessary for copyright registration. Thaler v. Perlmutter, Case No. 23-5233 (D.C. Cir. Mar. 18, 2025) (Millett,...
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Collateral Estoppel Doesn’t Apply to Unchallenged IPR Claims
By Jodi Benassi on Feb 20, 2025
Posted In Patents
The US Court Appeals for the Federal Circuit found that despite a Patent Trial & Appeal Board determination that certain challenged patent claims were unpatentable based on a preponderance of the evidence standard, the patent owner is not collaterally estopped from asserting other, unreviewed claims of that patent in district court litigation. Kroy IP Holdings,...
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Interoperability Doesn’t Imply Derivative Work
By Jodi Benassi on Jan 9, 2025
Posted In Copyrights
The US Court of Appeals for the Ninth Circuit explained that to be a derivative work, a program interoperative with another must actually incorporate aspects of the underlying work. The Court further ruled that licensees of a copy of a computer program are not “owners” of the copy and therefore are not entitled to make...
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Uncompleted Building Sold in Bankruptcy Doesn’t Infringe Architect’s Copyright
By Jodi Benassi on Aug 24, 2023
Posted In Copyrights
The US Court of Appeals for the Eighth Circuit affirmed a district court’s ruling that there was no actionable infringement where an uncompleted building sold under the authority of a bankruptcy court was later completed. Cornice & Rose International, LLC v. Four Keys, LLC et al., Case No. 22-1976 (8th Cir. Aug. 11, 2023) (Loken,...
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Copyright Office Issues New Rule
By Jodi Benassi on Aug 17, 2023
Posted In Copyrights
Adopting its interim rule from December 2022, the US Copyright Office issued a final rule that governs district court referrals, proof of service forms, default proceedings and the appearance of law student representatives before the Copyright Claims Board (CCB). District Court Referrals CCB proceedings qualify as alternative dispute resolution processes under 28 U.S.C. § 651...
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Serving a Perfect 10: No Protection for Embedding
By Jodi Benassi and Hannah Hurley on Jul 27, 2023
Posted In Copyrights
The US Court of Appeals for the Ninth Circuit found that a photo- and video-sharing social networking service could not be liable for secondary copyright infringement because embedding a photo does not “display a copy” of the underlying image. Hunley v. Instagram, LLC, Case No. 22-15293 (9th Cir. July 17, 2023) (Bybee, Bumatay, Bennett, JJ.)...
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