Category: Intellectual Property

Palette of Evidence: PTAB Must Consider Entire Record to Determine Prior Art Status

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board patentability determination, finding that the Board failed to consider the entire record regarding the prior art status of a sample and did not explain why it did not do so. CQV Co., Ltd. v. Merck Patent GmbH., Case No. 23-1027 (Fed. Cir. Mar. 10, 2025) (Chen, Mayer, Cunningham, JJ.)
Merck owns a patent that covers alpha-alumina flakes included in paints, industrial coatings, automotive coatings, printing, inks, and cosmetic formulations to impart a pearlescent luster. CQV petitioned the Board for post-grant review (PGR) of the patent, arguing that the challenged claims were obvious in view of prior art samples of Xirallic®, a trademarked product produced by Merck. In its final written decision, the Board found that CQV had not adequately supported its contention that the alleged Xirallic® lot qualified as prior art and therefore had not shown by a preponderance of the evidence that the challenged claims were unpatentable. CQV appealed.
The Federal Circuit reviewed the Board’s finding under the substantial evidence standard. The Court found that the Board erred in failing to consider the entire record and did not provide any basis for that failure. In terms of the prior art status of the Xirallic® samples, the Court found that the Board failed to consider testimony regarding the availability of Xirallic® for customer order and the length of the quality control process. The Court could not “reasonably discern whether the Board followed a proper path” in determining that CQV failed to show by a preponderance of the evidence that the sample of Xirallic® constituted prior art. The Court remanded, suggesting that the Board carefully consider whether the sample of Xirallic® would have been publicly available as of the alleged critical dates.

Construing Unambiguous Claim Language and Qualifying Challenged Expert as POSITA

Addressing the issues of claim construction and the requisite expert qualifications to testify on obviousness and anticipation, the US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board decision invalidating half of the challenged patent’s claims and instructed the Board to clarify whether the patent owner’s expert was indeed qualified as a person of ordinary skill in the art (POSITA). Sierra Wireless, ULC v. Sisvel S.P.A., Case Nos. 23-1059; -1085; -1089; -1125 (Fed. Cir. Mar. 10, 2025) (Moore, CJ:  Schall, Taranto, JJ.)
Sisvel owns a patent directed to methods for retrieving data lost during wireless transmission. The prior art taught methods for flagging lost protocol data units (PDUs) so that the data transmitter could retry the transmission. Sisvel’s patent includes a timer that prescribes a period of time to elapse before alerting a transmitter of a missing PDU, allowing the transmission to be completed without notification. The patent has 10 claims, two of which are independent. The primary independent claim has four limitations, including one related to stopping the timer before a status report issues if the missing PDU is located and another related to issuing a status report upon the timer’s expiration. The limitations are linked by the word “and.”
Sierra Wireless initiated inter partes review (IPR), arguing that all 10 of the claims were both anticipated and obvious in light of the “Sachs” prior art patent. The Board found that half of the claims, including both independent claims, were anticipated and obvious. In finding that the other claims were not unpatentable, the Board relied on the testimony of Sisvel’s expert. Both parties appealed.
Sisvel raised two arguments in support of the claims the Board found unpatentable. First, Sisvel argued that the Board misconstrued the two above-noted limitations as mutually exclusive. Sisvel argued that the prior art had to teach both limitations to invalidate the claim. Second, Sisvel argued that the Board’s interpretation of Sachs’ teachings to include the first of the two limitations was unsupported by substantial evidence.
The Federal Circuit agreed. On the claim construction issue, the Court found that the two limitations in issue could not be mutually exclusive because the claim language linked them using the word “and.” To construe the limitations as mutually exclusive would be inconsistent with the unambiguous claim language. With regard to the prior art, the Court looked to Sachs Figure 5, which the Board relied upon in determining that the prior patent had taught the first limitation. Both the figure and the patent’s surrounding language made clear that the time referenced therein was dependent upon reordering of PDUs, not upon receiving missing ones. The Court thus vacated the Board’s invalidity determination as not supported by substantial evidence.
In its appeal, Sierra argued that the Board’s reliance on Sisvel’s expert’s testimony to find certain claims not unpatentable was an abuse of discretion. The Federal Circuit agreed, finding that the Board abused its discretion by not finding that the proposed expert qualified as a POSITA before relying upon his testimony. The Court found that the proposed expert’s qualifications fell outside the parameters the Board itself set when defining who qualified as POSITA. The Court noted that while the proposed expert had more work experience than the Board required, he lacked the requisite electrical engineering degree. The Court further noted that his work experience was not identical to the adopted level of skill in the art. Because obviousness and anticipation are both viewed from the perspective of one of ordinary skill in the art, it was improper for the Board to rely on the proposed expert’s testimony. The Court thus vacated the Board’s decision and remanded with instructions that the Board determine whether the proposed expert qualified as a POSITA.

Get a Grip: Not All Cords Have Handles

The US Court of Appeals for the Federal Circuit vacated a district court’s grant of summary judgment of noninfringement because the district court improperly narrowed a claim term during its construction. IQRIS Technologies LLC v. Point Blank Enterprises, Inc. et al., Case No. 2023-2062 (Fed. Cir. Mar. 7, 2025) (Lourie, Linn, Stoll, JJ.)
IQRIS sued Point Black and National Molding for infringing its patents related to “quick release systems on tactical vests.” The patent claim vests include a “pull cord.” When pulled, the pull cord causes releasable hooks to disengage, detaching the front and rear portions of the vest. The defendants moved for summary judgment of noninfringement, arguing that the claimed “pull cord” is “a cord on the exterior of the ballistic garment grasped by a user that is capable of disengaging the releasable fastener or releasable hook when a user pulls on the pull cord.” IQRIS argued that the term should be construed as “a component which, when put into tension, can result in activating the releasable fastener.”
The district court construed “pull cord” as a “cord that can be directly pulled by a user to disengage a releasable fastener or releasable hook,” a construction that excluded cords with a handle. The district court found that one of the accused products featured a “trigger manifold” that enabled the user to apply “indirect force to [an] internal wire by applying a direct force to the trigger.” As a result, the district court determined that no reasonable jury could find infringement for that product. For another product, the district court found summary judgment to be appropriate because to rule otherwise, the accused vest would improperly encompass prior art criticized in the “background of the invention” portion of the patent specification. The specification criticized prior art having “cutaway vests with ‘handle’ release systems.”
IQRIS appealed. The Federal Circuit considered whether the district court correctly restricted “pull cord” to cords that are “directly pulled by a user.” The Court found that the claim language, which made no reference to “who or what pulls,” did not distinguish between direct and indirect pulling. Citing the patent specification, the Federal Circuit disagreed with the lower court’s interpretation, noting that the specification referred to a directly pulled element as a “pull cord” but an indirectly pulled element as just a “cord.” The Court noted that even though all disclosed embodiments depicted a directly pulled pull cord, “our precedent counsels against reading this requirement into the claims when the claims do not expressly require as much.”
The Federal Circuit next considered whether the proper construction of the term “pull cord” excluded cords with handles. The Court found that “nothing in the claim language, specification, or prosecution history supports this construction.” The claim language was “silent about the structure of the pull cord,” and the specification “suggest[ed] otherwise because each of the figures depicts a circular ball at the end of the pull cord[], suggesting that the inventors contemplated pull cords with handles.” While the specification criticized the cutaway vests with “handle release systems,” it made no criticism of the handles themselves. The Court concluded that the patent’s criticism of pull cords with handles did not rise to the level of disavowal: “[T]he standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.” The Federal Circuit therefore determined that the district court erred by excluding pull cords that include handles.

“Regulations of the State Council on the Settlement of Foreign-Related Intellectual Property Disputes” Unveils Countermeasures Against Those That Use IP Disputes as an Excuse “to Contain and Suppress China”

On March 19, 2025, China’s State Council released the Regulations of the State Council on the Settlement of Foreign-Related Intellectual Property Disputes (国务院关于涉外知识产权纠纷处理的规定), effective May 1, 2025. As  compared to last year’s draft, this final version unveils new articles 15-17 to counter countries, individuals and organizations that “use intellectual property disputes as an excuse to contain and suppress China” perhaps in response to Secretary Lutnick’s comments regarding Chinese IP at his confirmation hearing. This final version also maintains article 8 that “encourages law firms to…establish practice institutions abroad through the establishment of branches…”

A translation follows. The original is available here (Chinese only).
Article 1 These Regulations are formulated in order to strengthen intellectual property protection, promote citizens and organizations to handle foreign-related intellectual property disputes in accordance with the law, safeguard the lawful rights and interests of citizens and organizations, promote high-level opening up to the outside world, and promote high-quality economic development.
Article 2 The department of the State Council responsible for the management of intellectual property rights such as trademarks, patents, and copyrights (hereinafter referred to as the intellectual property management department) and the commercial authorities shall strengthen guidance and services to citizens and organizations in handling foreign-related intellectual property disputes, and other relevant departments of the State Council shall perform related work in accordance with their division of responsibilities.
The relevant departments of the State Council will strengthen work coordination and information communication, and jointly do a good job in handling foreign-related intellectual property disputes.
Article 3 Local people’s governments at or above the county level and their relevant departments shall, in light of the actual conditions of their respective regions, do a good job in handling foreign-related intellectual property disputes.
Article 4 The intellectual property management department of the State Council and relevant departments such as commerce and judicial administration shall, in accordance with their respective responsibilities, promptly collect and publish information on foreign intellectual property legal systems, improve the public service system for intellectual property information, and provide foreign intellectual property information query services to the public.
Article 5 The intellectual property management department and the commercial department of the State Council shall, in accordance with their respective responsibilities, strengthen tracking and understanding of key information such as changes in foreign intellectual property legal systems, conduct analysis and research on typical cases, issue risk warnings in a timely manner, and provide the public with foreign-related intellectual property warnings.
Article 6 The intellectual property management department and the commercial department of the State Council shall improve the guidance work institutions and work procedures for handling foreign-related intellectual property disputes in accordance with the division of responsibilities, and provide response guidance and rights protection assistance to citizens and organizations in handling foreign-related intellectual property disputes.
Article 7 Support commercial mediation organizations and arbitration institutions to participate in the resolution of foreign-related intellectual property disputes, provides citizens and organizations with efficient and convenient channels for resolving foreign-related intellectual property disputes, and encourages and guides citizens and organizations to quickly resolve foreign-related intellectual property disputes through reconciliation, mediation, arbitration, etc.
The judicial administrative department of the State Council will strengthen guidance on the mediation and arbitration of foreign-related intellectual property disputes.
Article 8 Encourage law firms, intellectual property service agencies, etc. to improve their foreign-related intellectual property service capabilities, establish practice institutions abroad through the establishment of branches, joint operations, etc., and provide high-quality and efficient foreign-related intellectual property services to citizens and organizations.
The judicial administrative department and the intellectual property management department of the State Council will take measures together with relevant departments to create conditions for law firms, intellectual property service agencies and other organizations to strengthen foreign-related intellectual property related services.
Article 9 Support enterprises in establishing mutual assistance funds for the protection and maintenance of foreign-related intellectual property rights, encourages insurance institutions to conduct foreign-related intellectual property rights-related insurance business in accordance with market principles, and reduces the costs of rights protection for enterprises.
Article 10 Encourage chambers of commerce, industry associations, cross-border e-commerce platforms and other organizations to build foreign-related intellectual property rights protection assistance platforms, open service hotlines, and provide public services such as consultation and training.
Article 11 Enterprises shall enhance their awareness of the rule of law, establish and improve internal rules and regulations, strengthen the reserve of intellectual property talent, and intensify the protection and use of intellectual property rights; when entering foreign markets, they shall take the initiative to understand the legal system and intellectual property protection status of the country or region where they are located, carry out production and business activities in accordance with the law, and actively safeguard their legitimate rights and interests.
The intellectual property management department and the commercial department of the State Council, together with relevant departments, focus on the intellectual property protection needs of enterprises in their foreign-related production and operation activities, carry out publicity and training for enterprises around key areas and key links of foreign-related intellectual property disputes, and introduce experiences and practices in handling foreign-related intellectual property disputes in accordance with the law based on typical cases, so as to enhance enterprises’ awareness of foreign-related intellectual property protection and dispute resolution capabilities.
The judicial administrative departments of the State Council shall, in accordance with the requirements of the legal education responsibility system of “whoever enforces the law shall educate the public on the law”, strengthen legal publicity and education related to intellectual property rights, and comprehensively enhance citizens’ and organizations’ awareness of intellectual property protection and their ability to safeguard their rights in accordance with the law.
Article 12 The service of documents and investigation and collection of evidence within the territory of China shall be handled in accordance with international treaties concluded or acceded to by China, as well as the Civil Procedure Law of the People’s Republic of China, the Law of the People’s Republic of China on International Criminal Judicial Assistance and other laws. No organization or individual may violate the laws of China when serving documents or investigating and collecting evidence within the territory of China.
Article 13: Organizations and individuals within the territory of China that participate in overseas intellectual property-related litigation or are subject to overseas judicial or law enforcement investigations and need to provide evidence or related materials to overseas countries shall comply with laws and administrative regulations on maintaining state secrets, data security, personal information protection, technology export management, judicial assistance, etc. If approval by the competent authority is required according to law, relevant legal procedures shall be followed.
Article 14 The competent commerce department of the State Council may, in accordance with the Foreign Trade Law of the People’s Republic of China, investigate the following matters and take necessary measures:
(1) Imported goods infringe intellectual property rights and endanger foreign trade order;
(2) The intellectual property rights holder prevents the licensee from questioning the validity of the intellectual property rights in the licensing contract, conducts compulsory package licensing, stipulates exclusive re-grant conditions in the licensing contract, etc., and endangers the fair competition order in foreign trade;
(3) Other countries or regions fail to accord national treatment to Chinese citizens and organizations in terms of intellectual property protection, or are unable to provide adequate and effective intellectual property protection for goods, technologies or services originating from China.
Article 15: Where foreign countries violate international law and basic norms governing international relations, use intellectual property disputes as an excuse to contain and suppress China, adopt discriminatory restrictive measures against Chinese citizens and organizations, and interfere in China’s internal affairs, the relevant departments of the State Council may, in accordance with the Foreign Relations Law of the People’s Republic of China, the Anti-Foreign Sanctions Law of the People’s Republic of China, and other laws, include organizations and individuals that directly or indirectly participate in the formulation, decision-making, and implementation of discriminatory restrictive measures in the countermeasure list and adopt corresponding countermeasures and restrictive measures.
Article 16 No organization or individual may implement or assist in the implementation of discriminatory restrictive measures taken by foreign countries against Chinese citizens or organizations under the pretext of intellectual property disputes.
If any organization or individual violates the provisions of the preceding paragraph and infringes upon the legitimate rights and interests of our citizens or organizations, our citizens or organizations may, in accordance with the law, bring a lawsuit to the people’s court and demand that it stop the infringement and compensate for the losses.
Article 17 The relevant departments of the State Council shall strengthen coordination and cooperation, and take corresponding measures in accordance with the National Security Law of the People’s Republic of China, the Foreign Relations Law of the People’s Republic of China, the Anti-Foreign Sanctions Law of the People’s Republic of China and other laws against those who use intellectual property disputes to endanger China’s sovereignty, security and development interests; those who abuse intellectual property rights to exclude, restrict competition or implement unfair competition shall be dealt with in accordance with the Anti-Monopoly Law of the People’s Republic of China, the Anti-Unfair Competition Law of the People’s Republic of China and other laws.
Article 18 These Provisions shall come into force on May 1, 2025.

Design Patent Obviousness

The landscape of design patent law has recently evolved with the introduction of a new standard for determining obviousness. For decades, the Rosen-Durling test was used to assess obviousness of design patents. The test’s rigid standard resulted in few design patents being invalidated as obvious.  In its first en banc decision since 2018, the Federal Circuit overruled the long-established obviousness test in the case of LKQ Corporation v. GM Global Technology Operations LLC.
The Rosen-Durling test had been the standard for evaluating the obviousness of design patents since the 1990s. It involved a two-step process. First, a single primary reference, often referred to as the “Rosen reference,” must be identified, possessing design characteristics that are “basically the same” as the claimed design. If no Rosen reference is found, the assessment ends here. If the first step is satisfied, the second step requires the use of additional references to supplement the primary Rosen reference. These additional references must be “so related” to the primary Rosen reference that applying certain ornamental features from one to the other would be obvious. This rigid framework often made it difficult to invalidate design patents, as challengers had to find a primary reference that was nearly identical to the patented design. The LKQ case represents a significant shift in how obviousness in design patents is evaluated, moving away from the stringent Rosen-Durling test.
General Motors (GM) is well-known for manufacturing automobiles, many of which are protected by intellectual property (IP) rights, including design patents for various components like fenders, bumpers, and headlights. For many years, GM did not produce most of its replacement body parts; instead, it contracted with LKQ to manufacture those parts. Eventually, GM decided to start producing its own replacement body parts, terminating its agreement with LKQ.
Despite the termination of the agreement, LKQ continued to manufacture aftermarket parts for GM—specifically the parts covered by GM’s design patents. In response, GM sent a cease-and-desist letter to LKQ, asserting that LKQ was infringing on approximately 250 different design patents held by GM. In turn, LKQ filed multiple Inter Partes Review (IPR) and Post Grant Review (PGR) petitions concerning various design patents, including an IPR against U.S. Design Patent No. D979,625, which claims the ornamental design for a vehicle front fender.
The Patent Trial and Appeal Board (PTAB) determined that the ’625 Patent was valid when evaluated against prior art on both anticipation and obviousness grounds. Specifically, the PTAB found that LKQ failed to meet step one of the Rosen-Durling test because the primary reference was not “basically the same” as the claimed design. LKQ then appealed to the Federal Circuit.
The panel of the Federal Circuit affirmed the PTAB’s decision, prompting LKQ to request a hearing en banc, which was granted. On appeal, LKQ argued that the Rosen-Durling test was inconsistent with the Supreme Court’s decision in KSR, which advocated for a more expansive and flexible approach to assessing obviousness in utility patents. The en banc Federal Circuit agreed with LKQ, ruling that the Rosen-Durling test was unduly rigid. The court held that the non-obviousness requirement under Section 103 applies equally to both design and utility patents and adopted the Graham factors used for evaluating obviousness in utility patents when assessing design-patent obviousness.
There are four Graham factors to consider when assessing obviousness. The first Graham factor involves determining the scope and content of the prior art. For design patents, this entails identifying a primary reference, which is the piece of prior art that most closely resembles the claimed design. The key requirement for a primary reference is that it must be at least analogous art. The Federal Circuit clarified that “analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.” LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1297 (Fed. Cir. 2024). This guidance aligns with the current practice in examining utility patents, where only references that are at least analogous to the claimed invention are considered valid for evaluating obviousness. According to the Federal Circuit, the requirement for identifying a primary reference is intended to protect against hindsight bias, ensuring that designs that are less visually similar do not overly influence the determination of obviousness. “Analogous art” includes previous designs from the same field—such as automobile fenders in the LKQ case—or other designs outside the field that would fall within the knowledge of a hypothetical ordinary designer familiar with the type of object being designed. For instance, a nursing pad and necklace adhesive brassier may be analogous art to a flexible garment insert, whereas a teardrop-shaped vase and engagement ring likely would not be.
When evaluating the differences between the prior art designs and the design claim in question, we must follow Graham factor 2. This evaluation does not require a threshold “similarity” criterion. Instead, it involves comparing the overall visual appearance of the claimed design with that of prior art designs from the perspective of an ordinary designer familiar with the type of product in question. The Federal Circuit emphasizes that both the claimed design and the prior art should be assessed based on their overall visual appearances, rather than on the specific similarities or differences of individual elements.
The third Graham factor examines the level of ordinary skill in the relevant field. The Federal Circuit determined that the correct perspective for evaluating whether a design is obvious is that of “a designer of ordinary skill who designs articles of the type involved.” The primary and secondary references do not need to be “so related” that features in one would directly suggest the application of those features in the other. However, both must be considered analogous art to the patented design. Additionally, the motivation to combine these references does not have to come explicitly from the references themselves. It is required that there be some record-supported reason—free from hindsight—that an ordinary designer in that field would have modified the primary reference using features from the secondary reference(s) to achieve an overall appearance similar to the claimed design.
The court confirmed that secondary factors related to nonobviousness (specifically Graham factor 4) should be taken into account for design patents. These factors include commercial success, industry recognition, and acts of copying. However, it was left to future courts to decide whether long-standing unmet needs and the failures of others are relevant in the context of design patents.
So, what does this all mean? The overruling of the Rosen-Durling test is expected to significantly impact the prosecution and enforcement of design patents. The new standard will simplify the process for determining design patent obviousness, likely making it more challenging to secure and protect these patents. Now, the focus will be on whether prior art is considered analogous, which opens up a broader range of references for evaluation.  
This new approach encourages a more nuanced, fact-based analysis, allowing for greater consideration of common sense and the knowledge of an ordinary designer. GM raised concerns that overruling the Rosen-Durling test may lead to confusion and inconsistency. The Federal Circuit acknowledged these concerns but noted that there is a substantial body of precedent to guide the Patent Office and courts when assessing obviousness.
While there is undoubtedly less certainty in the near future, the Federal Circuit stated that “[w]hether a prior art design is analogous to the claimed design for an article of manufacturer is a fact question to be addressed on a ‘case-by-case basis.’”  LKQ Corp., 102 F.4th at 1297-98. Future cases will help clarify how parties, examiners, and courts should apply the Graham factors and the analogous art requirement to design patents.

How the Lashify Decision Could Expand IP Enforcement Strategies at the ITC to Protect U.S. Domestic Industry

A recent decision by the U.S. Court of Appeals for the Federal Circuit expands which intellectual property (IP) owners can seek relief before the U.S. International Trade Commission (ITC) to block the import of infringing products into the U.S.
Complainants asserting infringement or misappropriation of IP rights (patents, trademarks, copyrights, trade secrets, and mask works) under Section 337 of the Tariff Act of 1930 at the ITC must show that “an industry in the United States . . . exists or is in the process of being established.” This is referred to as the “domestic industry requirement” and has been interpreted by the ITC as requiring satisfaction of both an “economic prong” and a “technical prong.”  The “economic prong” requires that the complainant, or a complainant’s licensee, has made in the United States significant investments in plant and equipment, significant investments in labor or capital, or substantial investments in engineering, research and development, or licensing.  The “technical prong” requires that such investments must further be directed to articles that practice a valid claim of the asserted patent.
Until now, the ITC has relied on a relatively narrow interpretation of the statute in determining whether certain activities are sufficient to satisfy the economic prong of the domestic industry requirement. Specifically, the ITC excluded certain types of expenditures and activities, such as marketing and distribution, when evaluating domestic industry in the absence of domestic manufacturing.
In Lashify, Inc. v. US International Trade Commission, the Federal Circuit clarifies that Section 337 complainants now may rely on investments or expenses in sales, marketing, warehousing, quality control, or distribution activities to establish a domestic industry, even when the complainant’s articles are manufactured outside the United States.  Thus, the precedential opinion by Judge Richard Taranto greatly expands the types of investments, expenses, and activities that a complainant may use to satisfy the economic prong of the domestic industry requirement.
For context, Lashify sells salon-style artificial eyelashes for users to apply at home.  Although the products are made overseas, Lashify is a U.S.-based company with extensive domestic operations.  The company leases several U.S. facilities and employs more than 100 American workers.  Lashify had asked the ITC to investigate alleged patent infringement by competitors that import similar artificial eyelash products into the U.S. However, the ITC determined that Lashify failed to meet the domestic industry requirement under Section 337 because investments and expenses related to sales, marketing, warehousing, quality control, or distribution activities were excluded by the ITC.
The Federal Circuit’s recent March 5 decision vacated the ITC’s ruling and determined that the ITC improperly excluded Lashify’s expenditures on sales, marketing, warehousing, quality control, and distribution. Judge Taranto explained that the plain language of the Omnibus Trade and Competitiveness Act of 1988, which amended the Tariff Act of 1930, shows that the “economic prong” of the domestic industry requirement is satisfied by:
(A) significant investment in plant and equipment;(B) significant employment of labor or capital; or(C) substantial investment in its exploitation, including engineering, research and development, or licensing.
Judge Taranto emphasized that Section 337’s use of the word “or” means that satisfaction of any of these three requirements by a complainant is enough to satisfy the requirement.  The decision further clarified that “significant employment of labor or capital” referred to in Section 337(a)(3)(B) covers significant use of “labor” and “capital” without “any limitation” on the type of activities that may constitute such labor or capital. In particular, the statute does not exclude sales, marketing, warehousing, quality control, or distribution activities, nor does it require that such activities be related directly to U.S.-based manufacturing.  The evidence showed that Lashify met these requirements.
Additionally, throughout the Lashify opinion, the Federal Circuit cited with approval its previous decision, handed down just last month, in Wuhan Healthgen Biotechnology Corp. v. International Trade Commission.  In Wuhan, the Court held that a patent holder’s relatively small investment within the U.S. satisfied the domestic industry prong when all of its research investment occurred within the U.S. and that research investment represented a significant portion of the company’s overall costs, including foreign manufacturing costs.  The Court clarified that “[s]mall market segments can still be significant and substantial enough to satisfy the domestic industry requirement” and that “[a] finding of domestic industry cannot hinge on a threshold dollar value or require a rigid formula; rather the analysis requires a holistic review of all relevant considerations that is very context dependent.”
Together, the Lashify and Wuhan decisions open the doors of the ITC to an expanded array of companies that may manufacture products outside the United States but have sales, marketing, distribution, research and development, and perhaps other key non-manufacturing operations in the U.S. These decisions may also potentially expand the patent and other IP enforcement options of foreign companies that satisfy the domestic industry requirement through significant investments in marketing, warehousing, quality control, and distribution in the United States.  
The Lashify and Wuhan decisions provide in-house counsel at such companies an additional tool that may be used to protect their IP assets from infringement or misappropriation.  Conversely, moving forward U.S. importers may have increased exposure to IP infringement and misappropriation claims before the ITC as well as elevated risk for ITC exclusion orders, as additional IP-holders may now more easily meet the requirements to file ITC complaints.  Those existing IP owners having current domestic industries, as well as those looking to invest in US domestic industries to reduce the risk of tariffs or to have enhanced access to US markets, now have expanded ITC enforcement tools to protect their IP assets.

UK-Based Graffiti Artists Sue Vivienne Westwood in California for Misuse of Their Tags

“In a culture where association with philistines is a death knell,” UK-based graffiti and street artists Cole Smith, Reece Deardon and Harry Matthews have brought a lawsuit against Vivienne Westwood and retailers of the brand for the fashion house’s allegedly unauthorized use of their tags “to lend credibility and an air of urban cool” to its apparel. See Smith v. Vivienne Westwood, Inc., Case No. 2:25-cv-01221 (C.D. Cal. Filed 02/12/25). The artists, known professionally as DISA, SNOK and RENNEE, respectively, argue that their tags are, like their name or signature, “deeply personal and determinative of their identity.” In turn, they claim that Vivienne Westwood’s use of their tags falsely represents their endorsement of the fashion house to the consumer and causes “the world to think that they are corporate sellouts, willing to trade their artistic independence, legacy and credibility for a quick buck.”
According to allegations in this and a long string of similar lawsuits by street artists against fashion brands like Moschino, Roberto Cavalli, Guess?, North Face and Puma, the use of graffiti artists’ tags on apparel purportedly generates “huge revenues” for brands based on their supposed affiliation with the artists. Those familiar with the legacy of Vivienne Westwood’s eponymous founder as a punk icon (far from a philistine) might agree that her brand illustrates the profitability of incorporating urban counterculture into retail fashion. 
Yet, the extent to which DISA, SNOK and RENNEE may recover their alleged damages as UK-based artists before the US District Court for the Central District of California remains an open question. While these artists may pursue their copyright infringement claims under the Berne Convention without having registered their tags in the United States Copyright Office, they probably are not entitled to recover either statutory damages or attorneys’ fees without US registrations. Additionally, although they may have a viable claim that their tags are copyright management information subject to the Digital Millenium Copyright Act (17 U.S.C. § 1202) — as other courts in the Central District ruled in the cases against Moschino and Roberto Cavalli — their claims under California’s right of publicity statute (Cal. Civ. Code § 3344) may be somewhat less certain. There is a dearth of precedent for extending the protections of California’s right of publicity statute to out-of-state residents, even if the court, as in the case against Moschino, finds that a graffiti artist’s tag is a name in a literal sense. 
Therefore, this case has the potential to better define the legal landscape faced by foreign street artists pursuing copyright infringement in the United States and right of publicity claims in California. Still, the lawsuit is at its infancy and, similar to the cases against other retailers, may settle before being fully litigated on its merits. We will continue to monitor this case and provide updates as it develops. 

DC Circuit Affirms Decision That Copyright Statute Requires Some Amount of Human Authorship, Leaves More Difficult Questions for Another Day

Does copyright law require that a human create a work? Yesterday the D.C. Circuit in Thaler v. Perlmutter held that it does and that a machine (such as a computer operating a generative AI program) cannot be designated as the author of the work. However, the D.C. Circuit refrained from saying more for now, leaving other questions about the use of AI when creating works for another day.
Dr. Stephen Thaler, a computer scientist who works with artificial intelligence, submitted a copyright application in 2019 for the image below, which he titled “A Recent Entrance to Paradise.” On the application, Thaler identified himself as the claimant, while designating a generative AI platform that he created and called the “Creativity Machine” as the author. For explanation of how the copyright was transferred from the machine as author to himself as claimant, Thaler stated his “ownership of the machine” caused the transfer. He would later argue that some form of work-for-hire transferred ownership to himself.
The Copyright Office denied registration, holding that copyright law requires a human author. Thaler appealed the decision to the District Court for the District of Columbia, which affirmed. As part of his case before the district court, Thaler raised, for the first time, the argument that he was in fact the author based on his creation of the Creativity Machine. However, because he had claimed on the record that the machine was the author throughout the proceedings before the Copyright Office, the district court held that he had waived this argument. Thaler then appealed to the D.C. Circuit Court of Appeals.
The D.C. Circuit’s decision yesterday affirmed both the Copyright Office’s and the district court’s decisions refusing Thaler’s copyright application for registration. On the key issue of copyright authorship, the court held that the text and structure of the Copyright Act requires a human author. Section 201 of the Copyright Act states that ownership “vests initially in the author or authors” of a work. While “author” is undefined, the court looked to at least seven other provisions throughout the Copyright Act that required various acts or states of mind of the author. These included reliance on the author’s life, references to the author’s widow or widower and children, the act of signature required for copyright transfer, and the intent needed to create a joint work of authorship. However, the court deemed none of these requirements applicable to a machine “author.” The court also relied on the Copyright Office’s long-standing policy of refusing registration to nonhuman authors and other appellate court decisions by the Seventh and Ninth circuits that refused claims of copyright authorship inhering in nature, “otherworldly entities,” or animals. Finally, the court held that Thaler’s work-for-hire claim failed at least because the machine had not signed any document designating the work as being made for hire, and that he had waived any claim of personal authorship because he had failed to raise it before the Copyright Office. Therefore, the D.C. Circuit affirmed the denial of registration of the work with the Creativity Machine designated as the author.
While this case is the first to address the question of copyright authorship in the context of generative artificial intelligence, its holding is not unexpected. As briefly referenced above, other appellate courts have addressed the question of nonhuman authorship in other scenarios and come to the same conclusion. Therefore, while Thaler is important for extending the same holding to the context of AI creations, the requirement of human authorship is neither new nor unusual. As the Ninth Circuit held in Naruto v. Slater (a case involving the famous “monkey selfie” photograph), there is a strong presumption in the law that statutes are written with humans as the subjects of rights, not animals or machines. The numerous textual references to the lives, acts, and intentions of authors in the Copyright Act made it easy for the D.C. Circuit not to overturn that presumption here. The D.C. Circuit also held that it did not need to address whether the U.S. Constitution requires a human author under the current case. That issue is left for a future litigant to contend with.
Moreover, Thaler presented his case for machine authorship in the most extreme form possible — a claim that the author was solely the “Creativity Machine,” with no human input at all. As the court references late in the decision, there have now been at least four copyright applications denied registration in whole or in part by the Copyright Office because the author used AI in creating or editing a work, but also relied on human input and human claims of authorship. The D.C. Circuit wisely decided to let that issue await a future ruling. Yet, as a result of that caution, litigants should recognize the limitations of the Thaler decision.
Finally, both Thaler and the other cases coming through the Copyright Office only concern AI creation of visual works of art. They do not concern other fields of creative works, such as written works or music. While the main holding of Thaler — that copyright protection cannot be granted where a machine is the sole creator — will certainly apply in these other fields, the permissible contours of AI-human interaction and their effect on authorship in these other categories of works are even more unclear given the lack of disputes arising to date.

China’s National Development and Reform Commission: High-Value Invention Patents per 10,000 People Reached 14

On March 11, 2025, the National People’s Congress approved the China’s National Development and Reform Commission report on the 2024 implementation of China’s economical and social development and draft plan for 2025. Of note, the number of high-value invention patents per 10,000 people reach 14, exceeding the 2025 goal of 12 high-value patents per 10,000 people in China’s National Intellectual Property Administration’s (CNIPA) 14th five-year plan.

Closing of the third session of the 14th National People’s Congress.

Per China’s National Intellectual Property Administration (CNIPA), a high-value patent includes:

A patent in the strategic emerging industries;
A patent with overseas patent family member(s);
A patent maintained for more than 10 years after grant;
A patent that realizes a higher amount of pledge financing (secured debt); or
A patent that wins State Science and Technology Awards or the China Patent Awards.

Intellectual property-related excerpts from the report follow:
Guidelines on improving the market access system were issued, and evaluations of market entry efficiency were conducted across the board. An initiative was launched to build up the system for protecting intellectual property rights (IPR), the initiative to promote the practical application of patents was fully implemented, and reform was advanced to integrate prosecutorial powers over civil, administrative, and criminal cases involving IPR.
We accelerated efforts to improve the foundational system for all-around innovation and sped up the translation of technological advances into higher productivity. Per capita labor productivity reached 174,000 yuan, a 4.9% increase in real terms. Spending on research and development (R&D) hit 3.6 trillion yuan, an increase of 8% in real terms. Investment in basic research accounted for 6.91% of the country’s total R&D spending, and the number of high-value invention patents per 10,000 people reached 14.
The mechanisms for inter-regional cooperation saw steady improvements. Practical results were achieved in promoting industrial connectivity and cooperation, improved environmental protection through joint efforts, sharing of public services, and the flow of officials and high-caliber personnel across regions. Trans-regional collaboration was enhanced in terms of testing and inspection, intellectual property rights, and oversight. Tax-related issues can now be dealt with across regions at a faster pace, with more than 530,000 trans-regional cases being handled by tax payment service centers across the country.
We will establish a sound system for the comprehensive management of intellectual property rights and effective mechanisms for responding to overseas IP disputes and facilitate improvements to the system enabling IP courts to handle cross-regional cases. We will take the initiative to align with high-standard international economic and trade rules, harmonizing domestic policies and regulations with relevant international rules. We will improve customs clearance procedures and facilitate the building of the Single Window System for international trade.

The full report is available here (Chinese) and here (English).

Court Rules AI Cannot Be Copyrighted: Landmark Ruling on Human Authorship

Court Rules AI Cannot Be Copyrighted: Landmark Ruling on Human Authorship. In a pivotal decision, the U.S. Court of Appeals for the D.C. Circuit ruled that copyright protection requires human authorship, rejecting the idea that AI-generated works can be copyrighted. This decision represents a significant setback for efforts to grant intellectual property rights to creations […]

China Remains Top Source of Patent Cooperation Treaty (PCT) Applications in 2024

According to data released by the World Intellectual Property Organization (WIPO) on March 17, 2025, China remained the top source of PCT applications in 2024.  Reversing a slight decrease in Chinese-originated PCT filings in 2023, China’s PCT filings increased to 70,160 applications up almost 1% on 2023. The United States follows China with 54,087 applications in 2024 – the third consecutive decline. 

International patent applications by origin.

Huawei Technologies was the top PCT filer in 2024, with 6,600 published applications, followed by Samsung Electronics (Republic of Korea, 4,640 applications), Qualcomm (US, 3,848), LG Electronics (Republic of Korea, 2,083) and Contemporary Amperex Technology (China, 1,993).  Other top Chinese filers include BOE Technology Group Co., Ltd., ranked sixth with 1,959 applications and Beijing Xiaomi Mobile Software Co., Ltd., ranked eighth with 1,889 applications.

Top PCT applicants

China’s education institutions also placed highly. Top Chinese universities include Tsinghua University, ranked third among educational institutions with 188 applications and Zhejiang University ranked fourth among educational institutions with 175 applications.

Top PCT applicants by educational institution

The full data set is available here.