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** OPTIMIZED DIGITAL COMMUNICATION CONSTELLATIONS WERE NOT PATENT-ELIGIBLE SUBJECT MATTER
Constellation Designs, LLC v. LG Elecs. Inc., 24-1822 – On Tuesday in an opinion by Judge STOLL, the Federal Circuit vacated-in-part a district court summary judgment upholding Constellation’s patent claims directed to communication systems using non-uniform, capacity-optimized “constellations” of “the possible symbols that can be transmitted by a typical digital communication system.” Constellation argued that its “optimization claims” were eligible under 35 U.S.C. § 101 because they recited a “concrete technique” of using parallel decode (PD) capacity to optimize constellations.
The Federal Circuit disagreed. The optimization claims were “abstract, result-oriented[,]” and “directed to all ways of achieving a recited result.” The recitation of “a constellation optimized for PD capacity such that it achieves a better capacity when compared to the prior art constellations” was an abstract idea, lacked sufficient detail on the alleged “concrete technique,” and did not include information on the optimization process described in the specification. The claims were also broad enough to cover “the mathematical concept of optimizing a constellation for PD capacity” and, thereby, “every way to optimize a constellation for PD capacity.” The court rejected that the claims’ “innovative way of improving the performance of a digital communication system” was an inventive step transforming the claims, saying it was a merely the abstract idea itself. Claims directed to “‘specific constellations’ … developed using the techniques described in the specification” were eligible, directed to solving the problem of “overcoming capacity constraints to improve coding gains” with specific, non-uniform constellations.
(1 to 4 stars rate impact of opinion on patent & trademark law)
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** JUDICIAL REVIEW OF IPR REAL PARTY IN INTEREST DETERMINATION BARRED UNDER 35 U.S.C. § 314(D)
Fed. Express Corp. v. Qualcomm Incorp., 24-1236 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit declined to review a USPTO denial of a request to terminate inter partes review (IPR) proceedings brought by Qualcomm against FedEx’s patent for a system and method of receiving and reporting shipment information collected by sensors. Qualcomm argued the USPTO’s refusal to determine whether the petition identified all real parties in interest under 35 U.S.C. § 312(a)(2) was barred from judicial review under Section 314(d).
The Federal Circuit agreed. Section 312(a)(2) was “closely tied” to institution because it described the requirements for institution and indicated identifying all real parties in interest requirement “clearly serves as a prerequisite for and is ‘integral to’ institution.” FedEx’s argument that it was not seeking review of the USPTO’s real party in interest analysis but whether the USPTO must perform such an analysis “boil[ed] down” to whether the petition should be instituted, falling within the bar under Section 314(d).
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO CO-HOSTS WORLD IP DAY RECEPTION ON CAPITOL HILL
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Yesterday IPO cohosted a World IP Day celebration on Capitol Hill. In 2000 the World Intellectual Property Organization’s member states designated April 26 as World IP Day, with the aim of increasing general awareness and understanding of IP. This year’s theme is “Sports and IP: Ready, Set, Innovate.”
Deputy Executive Director & Chief Policy Counsel SAMANTHA GROVER represented IPO and introduced Register of Copyrights SHIRA PERLMUTTER and Senator CHRIS COONS (D-DE), long-time member of the Senate Judiciary Subcommittee on Intellectual Property. Other honored guests included USPTO Director JOHN SQUIRES and Acting Commissioner of Trademarks DAN VAVONESE; Senator MARSHA BLACKBURN (R-TN), Chair of the Senate Judiciary Subcommittee on Privacy, Technology, and the Law; Senator THOM TILLIS (R-NC), Chairman of the Senate Judiciary Subcommittee on Intellectual Property, also delivered remarks; and Senator ADAM SCHIFF (D-CA), Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property.
The event featured a panel discussion with speakers SHAWN SPRINGS, founder and CEO of Windpact, Inc. and former NFL cornerback; ELLEN ZAVIAN, General Counsel of USA Football and professor at George Washington University School of Law; and PHOEBE CADE MILES, Chair of the Cade Museum and daughter of Gatorade inventor JAMES ROBERT CADE. Associate Register of Copyrights and Director of Public Information and Education MIRIAM LORD and USPTO Acting Deputy Chief Policy Officer for Trademarks and Copyright DAVID GERK provided updates on their agencies’ activities.
AI USE AT GERMAN PATENT OFFICE COULD RISK CONFIDENTIALITY OF UNPUBLISHED PATENT APPLICATIONS DURING SEARCHES BEFORE PUBLICATION
The German Patent and Trademark Office (GPTO) recently announced updated search and examination guidelines allowing examiners to use AI search tools (see here for English translations). The update states that “High-quality, up-to-date searches are… often only possible if external electronic search sources are also used, where necessary by using artificial intelligence applications” and permits examiners to use these tools.
The President notes, however, that while the GPTO aims to keep inventions confidential, it has only limited control over these external electronic search sources and cannot exclude “that terms, sequences, chemical structural formulae or text from applications may become accessible to third parties.” Rather than directing applicants to AI systems that can guarantee confidentiality, the GPTO advises applicants to “consider submitting a request for a search or examination of the application only after the publication of their application.” This guidance may raise concerns for applicants who have already requested searches before publication.
Thank you to European Practice Committee members ADAM LACY (Hoffmann · Eitle) and KELLY MERKEL (Eaton Corp.) for contributing this item.
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NEXT WEEK ON THE IP CHAT CHANNEL™: FLOURISH UNDER PRESSURE-ORGANIZED BY IPO’S WELLNESS COMMITTEE
Kick off Mental Health Awareness Month with the IP Chat Channel™ on Tuesday, May 5 at 12:00pm ET for a presentation by STEPH MELNYCHUK, M.Sc., J.D., a lawyer, Integral Coaching® Canada professional coach, and mentor. After over fifteen years in a demanding legal career, thriving in high-pressure environments that rewarded ambition, resilience, and competition, Steph transitioned out of law to follow her heart: empowering others to navigate burnout, redefine success, and cultivate joy.
In the high-pressure world of legal practice, sustained success shouldn’t come at the expense of well-being. This webinar is for anyone who wants to quiet overthinking and set clear boundaries, so success no longer comes at the expense of their well-being. Steph will explore practical, evidence-based skills that help reduce mental strain while supporting sustainable success. Participants will learn how to relate differently to overthinking, recognize when internal and external boundaries are needed, and respond with greater clarity and confidence. She will also explore the role of awareness and self-compassion in maintaining well-being while navigating pressure and high expectations. Participants will leave with practical tools they can apply immediately to create greater mental space, communicate needs more clearly, and sustain both performance and well-being.
This IP Chat Channel™ webinar is free for all registrants. Advance registration is required. IPO will apply for special Wellness/Well Being CLE credit only in eligible states.
FLEUCHAUS & GALLO TO SPONSOR IPO’S EUROPEAN PRACTICE CONFERENCE IN FRANKFURT ON 28 MAY
Thank you to Fleuchaus & Gallo PartGmbB for sponsoring IPO’s European Practice Committee organized conference entitled “Watch Your Words – Claim Interpretations, Estoppel, Information Sharing, Chat Bots and Much More.” The 2026 event will take place on 28 May in Frankfurt, Germany. Visit the conference website for more information or to register.
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