Intellectual Property Law
New Matter SPRING 2023, VOLUME 48, EDITION 1
Content
- 2023 New Matter Author Submission Guidelines
- ANDY WARHOL PART I: Fair Use, Art Appropriation, Transformation, Equity Justice and Cultural Equity under the Constitution: Andy Warhol Foundation v. Goldsmith
- ANDY WARHOL PART II: Fair Use Preemption, Predictions and More on the U.S. Supreme Court Andy Warhol Foundation Case
- Intellectual Property Rights and the Russia-ukraine War
- INTELLECTUAL PROPERTY SECTION Executive Committee 2022-2023
- INTELLECTUAL PROPERTY SECTION Interest Group Representatives 2022-2023
- INTELLECTUAL PROPERTY SECTION NEW MATTER Editorial board
- Ip and Art: An International Perspective
- Letter From the Chair
- Letter From the Editor-in-chief
- Ninth Circuit Report
- Online Cle For Participatory Credit
- Quarterly International Ip Law Update
- Table of Contents
- The California Lawyers Association Intellectual Property Alumni
- The Licensing Corner
- THE SUPREME COURT FAILS TO RECONCILE 35 U.S.C. § 112
- Trade Secret Report
- Ttab Decisions and Developments
- Federal Circuit Report
FEDERAL CIRCUIT REPORT
Philip Eklem
Reichman Jorgensen Lehman & Feldberg LLP
This article discusses the Federal Circuit’s opinion in VLSI Technology LLC, v. Intel Corporation ("VLSI")1 and the case’s impact on the Patent Trial and Appeal Board’s ability to independently construe disputed claim terms during post-grant proceedings under the America Invents Act. The court held that it was not error for the Board to construe a disputed term based on its own analysis without explicitly adopting or analyzing a district court’s prior construction of the same term—which highlights an important aspect of the interplay between district court and PTAB proceedings. The court further held that because there was an active claim construction dispute between the parties, case law restricting Board decisions to arguments raised by the parties does not prohibit the Board from resolving the dispute based on reasoning not proffered by either party.