In patent law, a “person of ordinary skill” (also known as a “skilled artisan”) is a hypothetical person presumed to have known the field of an invention at the time of its patenting. If an invention would have been obvious to a skilled artisan, it’s unpatentable. This article summarizes a case in which a patentee argued that the Patent Trial and Appeal Board’s interpretation of the qualifications of a person of ordinary skill strained the definition of “ordinary.” Sage Products LLC v. Stewart, No. 23-1603, April 15, 2025, Fed. Cir.

A convoyed sale occurs when a patent-infringing product is sold with a functionally associated nonpatented product. In some cases, a patentee is entitled to lost profits for such sales — but not always. This case is a reminder that patentees seeking lost profits on unpatented components must clearly demonstrate a functional relationship with the patented products to be eligible for lost profits. Wash World Inc. v. Belanger Inc., No. 23-1841, March 24, 2025, Fed. Cir.

In May 2025, the U.S. Copyright Office issued the latest in a series of reports examining copyright and artificial intelligence (AI), this time considering the so-called training required for generative AI. As the report notes, the training draws on “massive troves of data,” including copyrighted works. The report focuses heavily on whether such use of copyrighted material falls under the fair use doctrine — a question currently at issue in dozens of lawsuits. This article summarizes the report’s conclusions about the fair use issue while a brief sidebar covers a district court’s findings on the issue. Bartz v. Anthropic PBC, 3:24-cv-05417 (N.D. Cal.).

It’s been 30 years since the U.S. Supreme Court held that federal trademark law permits the registration of a trademark that consists, purely and simply, of a color. Obtaining registration for a color mark, however, is no small task. This article reviews a case in which the U.S. Court of Appeals for the Federal Circuit weighed in on the proper test for determining whether a color mark is generic and therefore ineligible for registration. In re PT Medisafe Technologies, No. 23-1573, April 29, 2025, Fed. Cir.; Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995); Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999).

Who is a skilled artisan?
This article summarizes a case in which a patentee argued that the Patent Trial and Appeal Board’s interpretation of the qualifications of a person of ordinary skill strained the definition of “ordinary.”
Sage Products LLC v. Stewart, No. 23-1603, April 15, 2025, Fed. Cir.

When “convoyed sales” entitle patentees to lost profits
This case is a reminder that patentees seeking lost profits on unpatented components must clearly demonstrate a functional relationship with the patented products to be eligible for lost profits.
Wash World Inc. v. Belanger Inc., No. 23-1841, March 24, 2025, Fed. Cir.

Copyright Office weighs generative AI training against fair use
This article summarizes the U.S. Copyright Office report’s conclusions about the fair use issue while a brief sidebar covers a district court’s findings on the issue.
Bartz v. Anthropic PBC, 3:24-cv-05417 (N.D. Cal.).

It’s not easy being green – Federal Circuit affirms TTAB test for color marks
This article reviews a case in which the U.S. Court of Appeals for the Federal Circuit weighed in on the proper test for determining whether a color mark is generic and therefore ineligible for registration.
In re PT Medisafe Technologies, No. 23-1573, April 29, 2025, Fed. Cir.; Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995); Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999).

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. 
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. 
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. 
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. 
Thaler v. Perlmutter, No. 23-5233, March 19, 2025, D.C. Cir.

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.

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.

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.

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.

Imitation is the sincerest form of flattery. Or so goes the popular quote attributed to English cleric Charles Caleb Colton. A craft brewer was anything but flattered when a less highly regarded brand appeared to imitate its trademark in a design refresh, leading to an infringement lawsuit. This article reviews the appellate court’s ruling that the defendant’s trademark was likely to cause consumer confusion. It affirmed the jury’s verdict and damage award.
Stone Brewing Co., LLC v. Molson Coors Beverage Co. USA LLC, No. 23-3142, Dec. 30, 2024, 9th Cir.

Copyrights and software development
Interoperability doesn’t make a work derivative
Oracle Int’l Corp. v Rimini Street, Inc., No. 23-16038, Dec. 16, 2024, 9th Cir.

How not to succeed on a patent inventorship or co-inventorship claim
BearBox LLC v. Lancium LLC, No. 23-1922, Jan. 13, 2025, Fed. Cir.

Tapped out
Court rules against brewery in trademark dispute
Stone Brewing Co., LLC v. Molson Coors Beverage Co. USA LLC, No. 23-3142, Dec. 30, 2024, 9th Cir.

Court uses “inherent power” to sanction patent litigation conduct
PS Products Inc. v. Panther Trading Co. Inc, No. 23-1665, Dec. 16, 2024, Fed. Cir.

The U.S. Court of Appeals for the Federal Circuit recently fired a warning shot to parties tempted to file patent infringement lawsuits in bad faith. Its ruling should put them on alert that their claims could lead to costly sanctions — even if they voluntarily withdraw a lawsuit before the litigation gets rolling. This short article explains that the trial court could rightfully turn to its inherent power to sanction bad faith conduct.
PS Products Inc. v. Panther Trading Co. Inc, No. 23-1665, Dec. 16, 2024, Fed. Cir.

The U.S. Court of Appeals for the Ninth Circuit has weighed in on the latest battle in what it has described as “a pitched copyright war” that now has stretched out over a decade. This article reviews a significant ruling for both providers of interoperable software and the owners of the copyrights on the software with which such software interoperates. In the end, the court ultimately prolonged the conflict. A short sidebar covers the appellate court’s review of the trial court’s findings of false advertising under trademark law’s Lanham Act.
Oracle Int’l Corp. v Rimini Street, Inc., No. 23-16038, Dec. 16, 2024, 9th Cir.

A person may be accidentally or intentionally omitted from a patent. In one recent case, an alleged inventor sought recognition for his work for a set of computing systems configured to perform computational operations related to cryptocurrency and optimal power pricing. This article explains that he failed to provide the evidence required by the U.S. Court of Appeals for the Federal Circuit, which handles all patent-related appeals.
BearBox LLC v. Lancium LLC, No. 23-1922, Jan. 13, 2025, Fed. Cir.

David Kincaid and Michelle Ciotola explore the findings of the latest US Copyright Office report, Copyright and Artificial Intelligence, Part 2: Copyrightability, the legal framework governing AI-generated works, and the potential challenges and opportunities for IP practitioners. Their article, Copyrightability in AI-generated works at the United States Copyright Office, appears in the Trademark Lawyer Magazine.

Cantor Colburn's Daniel F. Drexler and Yong Tang, Ph.D., review the new fee structure for large information disclosure statement filings instituted by the USPTO in the May/June 2025 Patent Lawyer Magazine.

What’s in a name? Ninth Circuit OKs keyword ad “conquesting” 
This article covers a decision from the U.S. Court of Appeals for the Ninth Circuit subsequently upholding the judgment, clarifying its belief that the ad practice is on solid legal ground and a brief sidebar highlights a different case from the U.S. Court of Appeals for the Second Circuit involving a competitor’s use of trademarks in keyword search advertisements. 

Expert’s “word salad” leads to tossed patent verdict 
This article summarizes a decision from the U.S. Court of Appeals for the Federal Circuit, finding the patent owner’s expert testimony fell short of that needed for an infringement claim based on the doctrine of equivalents. 

Court closes the book on free digital library
This article looks at a decision from the U.S. Court of Appeals for the Second Circuit attempting to balance these interests in a copyright infringement case.

Patent experts can acquire “ordinary skill” belatedly
This article discusses Osseo Imaging, LLC v. Planmeca USA Inc., in which the Federal Circuit opines on the question of when experts, testifying about the perspective of a “person of ordinary skill in the art,” should themselves have acquired that knowledge. 

This article from Cantor Colburn's April/March 2025 IP Newsletter covers a decision from the U.S. Court of Appeals for the Ninth Circuit subsequently upholding the judgment, clarifying its belief that the ad practice is on solid legal ground and a brief sidebar highlights a different case from the U.S. Court of Appeals for the Second Circuit involving a competitor’s use of trademarks in keyword search advertisements. 
Lerner & Rowe PC v. Brown Engstrand & Shely LLC, No. 23-16060 (9th Cir. Oct. 22, 2024); 1-800 Contacts, Inc. v. JAND, Inc., No. 22-1634 (2d Cir. Oct. 8, 2024).

Attorneys never want a court to describe their expert witness’s testimony as “word salad” — especially when particularized testimony is required to win the case. A patent owner learned this lesson the hard way. This article from the April/May 2025 Cantor Colburn IP Newsletter summarizes a decision from the U.S. Court of Appeals for the Federal Circuit, finding the patent owner’s expert testimony fell short of that needed for an infringement claim based on the doctrine of equivalents. NexStep, Inc. v. Comcast Cable Communications, LLC, No. 22-1815 (Fed. Cir. Oct. 24, 2024). 

While licensing fees for digital books may burden libraries and reduce access to creative work, authors demand compensation for the copying and distribution of their original creations. This article from the April/May 2025 Cantor Colburn IP Newsletter looks at a decision from the U.S. Court of Appeals for the Second Circuit attempting to balance these interests in a copyright infringement case.
Hachette Book Group, Inc. v. Internet Archive, No. 23-1260 (2d Cir. Sept. 4, 2024).

Anyone involved with patent cases is likely to come across the term “person of ordinary skill in the art” or some derivation. It generally refers to a hypothetical person with knowledge in the field to which a patented invention relates. But at what point in time must an expert testifying from such a perspective have acquired that knowledge? This article from the April/May 2025 Cantor Colburn IP Newsletter discusses a decision from the U.S. Court of Appeals for the Federal Circuit weighing in on this question.Osseo Imaging, LLC v. Planmeca USA Inc., No. 23-1627 (Fed. Cir. Sept. 4, 2024).

Although an individual musical note isn’t copyrightable, an arrangement of notes may be. Does the same reasoning apply to source code for software? This article from Cantor Colburn's February/March 2025 IP Newsletter summarizes Compulife Software, Inc. v. Newman, a case from the U.S. Court of Appeals for the Eleventh Circuit on this question.

So-called “prior art” that makes an invention obvious can lead to a patent being found invalid. But what seems like prior art may not be. This article from Cantor Colburn's February/March 2025 IP Newsletter discusses Sanho Corp. v. Kaijet Technology Ltd., Inc., No. 23-1336 (Fed. Cir. July 31, 2024), a case from the U.S. Court of Appeals for the Federal Circuit that explored an exception to the rule and whether a private sale of an invention would qualify.

Where does the First Amendment end and federal trademark law begin? That was the question in a case before the U.S. Court of Appeals for the Sixth Circuit involving the alleged infringement of a political party’s trademark. This article from Cantor Colburn's February/March 2025 IP Newsletter summarizes the court’s decision providing some valuable insight on the far-reaching impact of a 2023 ruling by the U.S. Supreme Court regarding infringement liability under the Lanham Act. Libertarian Nat’l Committee, Inc. v. Saliba, No. 23-1856 (6th Cir. Aug. 28, 2024); Jack Daniel’s Properties v. VIP Prods. LLC, 599 U.S. 140 (2023).

Registering certain trademarks requires including a specific kind of example use, or “specimen,” as part of the application. This article from the Cantor Colburn February/March 2025 IP Newsletter looks at a new decision from the Trademark Trial and Appeal Board highlighting the importance of submitting the correct specimen. In re Gail Weiss, Serial No. 88621608 (T.T.A.B July 31, 2024).

Don’t Copy That - Software Code Arrangement is Protectable 
This article summarizes Compulife Software, Inc. v. Newman, a case from the U.S. Court of Appeals for the Eleventh Circuit on this question.

When private sales don’t count as public disclosure of prior art
This article discusses Sanho Corp. v. Kaijet Technology Ltd., Inc., No. 23-1336 (Fed. Cir. July 31, 2024), a case from the U.S. Court of Appeals for the Federal Circuit that explored an exception to the rule and whether a private sale of an invention would qualify.

Does First Amendment bar trademark infringement liability? 
This article summarizes the court’s decision providing some valuable insight on the far-reaching impact of a 2023 ruling by the U.S. Supreme Court regarding infringement liability under the Lanham Act. Libertarian Nat’l Committee, Inc. v. Saliba, No. 23-1856 (6th Cir. Aug. 28, 2024); Jack Daniel’s Properties v. VIP Prods. LLC, 599 U.S. 140 (2023).

Lack of proper documentation dooms trademark registration 
This article looks at a new decision from the Trademark Trial and Appeal Board highlighting the importance of submitting the correct specimen. In re Gail Weiss, Serial No. 88621608 (T.T.A.B July 31, 2024).

"Dupe culture clash: strategies for brand owners," by Michelle Ciotola in The Trademark Lawyer Magazine Annual 2025 issue covers the rise of “dupe culture” and the role social media plays in marketing dupe products, providing strategies for brand owners to protect their intellectual property in this space.

Steven M. Coyle, Partner and Litigation Chair at Cantor Colburn, reviews the Federal Circuit’s recent decision to discard the Rosen-Durling test, eliminating previously key factors for determining obviousness, in The Patent Lawyer Magazine U.S. Jurisdictional Briefing in the Annual 2025 issue.

Defend Trade Secrets Act:
Do trade secret damages include foreign sales?
Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., Nos. 22-2370, -2418 (7th Cir. July 2, 2024).

When a “skinny label” results in induced patent infringement
Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 23-1169 (Fed. Cir. June 25, 2024).

Back to the drawing board:
Federal Circuit establishes new design patent test
LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024).

Political ad’s meme isn’t permissible fair use of copyrighted image
Griner v. King for Congress, Nos. 22-3623 (8th Cir. June 7, 2024).

A federal appellate court has weighed in for the first time on the question of whether the Defend Trade Secrets Act (DTSA) extends to conduct outside of the United States — thereby opening the door to damages for foreign sales. In Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., the U.S. Court of Appeals for the Seventh Circuit ruled that the plaintiff may recover all of the defendant’s profits from global sales of products incorporating the plaintiff’s trade secrets. This article looks at the effect of the DTSA on an owner’s claim for damages, while a short sidebar covers why the court declined to similarly extend the Copyright Act.

Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., Nos. 22-2370, -2418 (7th Cir. July 2, 2024).

"Skinny labels” for generic drugs are intended to help the manufacturers avoid patent infringement liability by describing only nonpatented uses. But a generic manufacturer learned the hard way that a skinny label doesn’t ensure immunity when it comes to liability for induced infringement. This article explains why clarity and consistency in manufacturers’ communications about a skinny label drug may be essential to avoid liability for induced infringement.

Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 23-1169 (Fed. Cir. June 25, 2024).

The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, has overruled the long-standing test for whether a design patent is obvious. In its place, the court adopted a more flexible test that could make it more difficult to obtain design patent protection. 

LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024).

Online memes, which began largely as funny images circulated widely online with various jokes attached, are nothing new, and they’re now the target of litigation. This article highlights a recent ruling shedding light on how copyright law intersects with the world of memes.

Griner v. King for Congress, Nos. 22-3623 (8th Cir. June 7, 2024).