The Impact of Prosecution Length on Invalidity Outcomes
in Patent Litigation
Matthew Avery, Arya Moshiri
This Article analyzes over 89,000 patents litigated over a
twenty-year period to determine how the number of office actions to
allowance during prosecution impacts rates of invalidity during
subsequent litigation. Many practitioners would hypothesize that a
patent with a longer prosecution history will be less likely to
have an inherent validity problem. Contrary to expectations, the
analysis of litigation outcomes shows that an increase in the
number of office actions correlates with a heightened risk of
invalidation.
Read the full article here.
*This article is excerpted from the authors' recent article in
volume 38, issue 1 of the Harvard Journal of Law &
Technology titled "The Myth of "Bad" Patents:
Impact of Prosecution Length on Patent Litigation
Outcomes."
The Federal Circuit Tackles the Role of Expert Opinions in
Patent Damages in EcoFactor Inc. v. Google, LLC
Laura Natchev
The Federal Circuit rarely decides cases en banc. Stunningly, on
September 25, 2024, the Federal Circuit granted Google's
petition for rehearing en banc in the case EcoFactor Inc. v. Google
LLC. The re-hearing, which is scheduled to take place on March 13,
will be focused on the issue of whether "the district court[]
adhere[d] to Federal Rule of Evidence [("FRE")] 702 and
Daubert v. Merrel Dow Pharmaceuticals...in its allowance of
testimony from EcoFactor's damages expert assigning a per-unit
royalty rate to the three licenses in evidence in this case."
Essentially, the Court is reconsidering the admissibility of expert
testimony regarding the calculation of patent damages.
Read the full article here.
Maximizing Patent Term in the United States: Patent Term
Adjustment, Patent Term Extension, and the Evolving law of
Obviousness-Type Double Patenting
Paul Ragusa,
*Benjamin Bafumi
The last few years have thrown startups a whirlwind of challenges:
a steep drop in venture capital investment, a highly competitive
marketplace, the artificial intelligence (AI) revolution, and an
abundance of remote work. Helping founders navigate this evolving
landscape will require intellectual property (IP) practitioners to
stay ahead of the curve.
Read the full article here.
*Benjamin Bafumi, a law clerk at Baker Botts, assisted in the
preparation of this article.
*This article was previously published as part of our Antitrust Health
Horizons Webinar, presented April 23, 2025.
This Month: Our Take on AI
Joseph Cahill
Copyright Office's AI Report: On January 29,
2025, the U.S. Copyright Office released Part 2 of its report on
AI, which reaffirms the longstanding requirement of human
authorship for copyright protection. The report distinguishes among
various levels of human interaction and their impact on copyright
protection of AI output:
Prompts: The report concludes that given current technology,
prompts alone do not provide sufficient human control to make users
the authors of AI-generated outputs. Prompts are seen as
instructions that convey unprotectable ideas rather than
controlling the expressive elements of the output.
Expressive Inputs: When a human author inputs their own
copyrightable work into an AI system and that work is perceptible
in the output, the human author retains copyright over their
contribution. This is akin to the protection given to derivative
works, where copyright extends to the human-authored
elements.
Modifications or Arrangements: Human authors can claim copyright if
they creatively select, coordinate, and arrange AI-generated
material. This includes combining human-authored text with
AI-generated images or making significant modifications to
AI-generated content.
The report further concludes that current legal doctrines are
sufficient to handle AI copyright issues without the need for
brand-new AI-specific copyright legislation. Read more here:
"Copyright Office
Releases Part 2 of Artificial Intelligence Report."
AI Hallucinations in Court: A recent case in the Eastern
District of Texas highlights the risks of overreliance on
AI-generated content in legal filings. In Gauthier v. Goodyear Tire
& Rubber Co., an attorney faced a $2,000 sanction and a
mandated CLE course after citing non-existent case law produced by
an AI tool. The decision reinforces that, while generative AI can
offer tactical advantages, lawyers must treat its output like that
of a bright but inexperienced first-year associate—one that
requires rigorous oversight and independent verification before
submission. Read more here: "Trust, But Verify:
Avoiding the Perils of Artificial Intelligence Hallucinations in
Court."
AI Counsel Code Podcast
Partner and host Maggie Welsh
welcomes Senior Associate Parker Hancock to
explore AI advancements and upcoming regulatory shifts for 2025.
They delve into key technologies like DeepSeek models and test time
compute, while unpacking crucial updates on AI regulations,
including the EU AI Act and state-level U.S. laws. Listen to the
full episode here.
January 2025 Intellectual Property Report
Recap
In case you missed it, here is a link to
our February 2025 Intellectual Property Report that looked at:
- 35 U.S.C. § 112 in IPR: I know you cannot use it to invalidate a claim, but how about breaking the priority chain?
- RESTORE Patent Rights Act of 2024
- The IP Practitioner's Guide for Advising the Next Generation of Startups
- AI For Patent Drafting in 2025
- Change on the Horizon?: 2025 Begins With Numerous Patent Bills Pending
- Trust, But Verify: Avoiding the Perils of AI Hallucinations in Court
- This Month: Our Take on AI
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