Authorities
Cases.
Decided cases and pending matters the guides rely on. Open matters are labeled as watch entries; a watch entry states no outcome.
Decided.
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Alice Corp. v. CLS Bank International
Alice sets the two-step test for patent eligibility under 35 U.S.C. § 101: whether the claim is directed to a patent-ineligible concept such as an abstract idea, and if so whether it adds an inventive concept that makes it more than the exception itself. The patent basics guide applies the test to claims applying generic machine learning to a new data environment.
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AMF Inc. v. Sleekcraft Boats
Sleekcraft supplies the Ninth Circuit's multi-factor test for likelihood of confusion, the counterpart to the Fifth Circuit's digits of confusion and the Second Circuit's Polaroid factors. The factors largely overlap across the circuits.
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Andy Warhol Foundation for the Visual Arts v. Goldsmith
After Warhol, fair use under 17 U.S.C. § 107 turns heavily on whether the use serves a different purpose from the original, and a use may weigh against fair use even if it adds new expression. The first fair use factor looks to the purpose and character of the use, including whether it is commercial or nonprofit.
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Apple Inc. v. Fintiv, Inc.
Fintiv sets the factors the Patent Trial and Appeal Board weighs when deciding whether to deny institution of inter partes review because a court or the International Trade Commission is likely to decide validity first, along with the stage of the case and the overlap of issues. In February 2025 the Office withdrew a 2022 policy under which a petitioner could avoid this kind of denial by stipulating not to pursue the same grounds in court; stipulations remain relevant but are not decisive.
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Bartz v. Anthropic PBC
In June 2025, the Northern District of California held that training on lawfully acquired books was fair use, but building a library of pirated copies was not. The case was resolved by a class settlement of about $1.5 billion, which has received final approval. The citing guide gives the court and month only, with no docket number.
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Board of Supervisors for Louisiana State University v. Smack Apparel Co.
Confusion about whether the plaintiff approved or is connected with the defendant's goods counts as likelihood of confusion. The Fifth Circuit upheld liability for unlicensed shirts using universities' colors and indicia.
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Campbell v. Acuff-Rose Music, Inc.
Campbell holds that a commercial parody can be fair use, and that the four factors are weighed together rather than treated as isolated tests. The guides cite it for the amount-used factor: whether the amount copied was reasonable in light of the purpose.
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Community for Creative Non-Violence v. Reid
Whether a creator is an employee for work-made-for-hire purposes turns on common-law agency principles. Work an employee creates within the scope of employment belongs to the employer under 17 U.S.C. §§ 101 and 201(b). A commissioned work by an independent contractor qualifies only in one of the nine statutory categories with a signed writing.
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eBay Inc. v. MercExchange, L.L.C.
A permanent injunction in a patent case requires the four traditional equitable factors: irreparable injury, inadequacy of monetary damages, balance of hardships, and the public interest. There is no automatic injunction for patent infringement. Copyright courts apply the same factors under 17 U.S.C. § 502.
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Elvis Presley Enterprises v. Capece
Elvis Presley v. Capece is one of the two source cases the guides cite for the Fifth Circuit's eight digits of confusion: type and strength of the mark, similarity of the marks, similarity of the products or services, identity of retail outlets and purchasers, identity of advertising media, defendant's intent, evidence of actual confusion, and degree of care by purchasers.
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Feist Publications v. Rural Telephone Service Co.
Copyright protects only expression, and originality requires independent creation plus a minimal degree of creativity; effort alone is not enough. Facts, data, and short phrases are not protected, so scraping facts and data generally does not infringe, though contract and computer-access claims may still apply.
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Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC
For a U.S. work, no infringement suit may be filed until the Copyright Office has registered the work or refused registration under 17 U.S.C. § 411(a). A pending application does not satisfy the requirement.
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Google LLC v. Oracle America, Inc.
Reimplementing an interface so that programmers can use familiar commands can be fair use, as the Supreme Court held for Google's use of Java's declaring code. The decision is also the authority the guides cite for the nature-of-the-work factor: creative works receive more protection than factual or functional ones, and fair use is a question of law reviewed de novo on appeal.
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Graham v. John Deere Co.
Graham sets the framework for obviousness under 35 U.S.C. § 103: the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill, and objective evidence such as commercial success, long-felt need, failure of others, and copying.
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Gunn v. Minton
A state-law claim that merely involves a patent question, such as legal malpractice in a patent case, does not arise under the patent laws for purposes of exclusive federal jurisdiction under 28 U.S.C. § 1338(a), and can stay in state court.
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Halo Electronics v. Pulse Electronics
Enhanced damages up to three times actual damages under 35 U.S.C. § 284 are available for egregious infringement, and the judge has discretion over whether and how much to enhance. Failing to obtain a lawyer's opinion cannot be used to prove willfulness under section 298.
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Hybritech Inc. v. Monoclonal Antibodies, Inc.
Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete invention. The revised USPTO guidance on AI-assisted inventions treats AI systems as instruments rather than as contributors whose involvement needs separate analysis, and applies the same conception standard.
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Jacobsen v. Katzer
Open-source licenses grant broad rights on conditions, such as attribution or making source code available. A licensee that breaks a condition may be infringing, not merely breaching a contract, because its use is outside the license's scope.
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Jim S. Adler, P.C. v. McNeil Consultants, L.L.C.
Confusion that draws a buyer in, even if dispelled before purchase, can support a claim as initial interest confusion. The Fifth Circuit held that a law firm adequately alleged confusion where a competitor bought its names as search keywords and used generic ads and call-center practices that left callers believing they had reached the firm. Buying a keyword alone is not enough.
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Kadrey v. Meta Platforms, Inc.
In June 2025, the Northern District of California granted summary judgment for Meta on fair use for training, on that record, because the plaintiffs did not show market harm. Other claims continue, and new individual suits were filed in October 2026.
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KSR International Co. v. Teleflex Inc.
The obviousness inquiry is flexible: a combination of familiar elements by known methods is likely obvious if it does no more than yield predictable results. The decision rejected a rigid teaching-suggestion-motivation requirement.
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Lashify, Inc. v. International Trade Commission
For the domestic industry requirement in a Section 337 proceeding under 19 U.S.C. § 1337, sales, marketing, warehousing, quality control, and distribution expenses can count toward the economic part of the test. The citing guide gives the court and date only, with no reporter citation or docket number.
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LKQ Corp. v. GM Global Technology Operations LLC
For design patents, the Federal Circuit dropped its stricter obviousness test in 2024 and now applies the same Graham framework used for utility patents.
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Lone Star Silicon Innovations v. Nanya Technology
An exclusive licensee that holds all substantial rights may sue for patent infringement in its own name. A licensee with lesser rights generally must join the patent owner.
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Markman v. Westview Instruments
Claim construction is for the judge, not the jury. On appeal, the Federal Circuit reviews the ultimate construction de novo but defers to the trial court's findings about extrinsic evidence such as expert testimony.
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Mayo Collaborative Services v. Prometheus Laboratories
Mayo holds that a claim directed to a law of nature is not patent eligible unless it adds an inventive concept beyond the natural law itself. It supplies the second step of the eligibility framework applied with Alice under 35 U.S.C. § 101.
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MedImmune v. Genentech
A licensee need not break its license to seek a declaration of noninfringement or invalidity. An actual controversy exists where the facts show a substantial controversy of sufficient immediacy and reality, judged on all the circumstances. A license offer that identifies the patent and the product can be enough.
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Octane Fitness v. ICON Health and Fitness
An exceptional case under 35 U.S.C. § 285 is one that stands out from others based on the substantive strength of a party's litigating position or the unreasonable way the case was litigated. The trial court's fee ruling is reviewed for abuse of discretion, and entitlement is shown by a preponderance of the evidence.
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Phillips v. AWH Corp.
Terms are read as a person of ordinary skill would understand them, in the context of the entire patent. The claims themselves come first, followed by the specification, prosecution history, and extrinsic evidence, in that order of weight.
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Polaroid Corp. v. Polarad Electronics Corp.
Polaroid supplies the Second Circuit's multi-factor test for likelihood of confusion, the counterpart to the Fifth Circuit's digits of confusion and the Ninth Circuit's Sleekcraft factors. The factors largely overlap across the circuits.
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Rampart Resources v. Rampart/Wurth Holding
Fleeting mix-ups of names that the defendant's mark did not cause carry little weight as evidence of actual confusion. The Fifth Circuit affirmed the denial of a preliminary injunction.
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Recentive Analytics v. Fox Corp.
In 2025 the Federal Circuit held that claims applying generic machine learning to a new data environment are not patent eligible under 35 U.S.C. § 101. The Supreme Court denied certiorari on December 8, 2025.
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Rex Real Estate I v. Rex Real Estate Exchange
Misdirected purchases are the strongest evidence of actual confusion. Inquiries about affiliation and misdirected calls count for less, especially when isolated and set against the parties' total sales, but they are still relevant and can let a case reach a jury.
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STC.UNM v. Intel Corp.
All co-owners of a patent must ordinarily join as plaintiffs in an infringement suit, and one co-owner cannot be forced to join. Each co-owner may use and license the patent without the others' consent under 35 U.S.C. § 262.
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Streamline Production Systems v. Streamline Manufacturing
Streamline is the second source case the guides cite for the Fifth Circuit's eight digits of confusion, the framework Texas federal courts use to decide likelihood of confusion.
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TC Heartland v. Kraft Foods Group Brands
For patent venue under 28 U.S.C. § 1400(b), a domestic corporation resides only in its state of incorporation. In a state with more than one district, it resides only in the district where it has its principal place of business or, failing that, its registered office.
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Thaler v. Perlmutter
A work generated entirely by AI, with no human author, cannot be registered. Human contributions to a work that includes AI material can be protected.
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Thaler v. Vidal
The Patent Act's use of the term inventor refers only to natural persons, so an AI system cannot be named as an inventor. The USPTO presumes the natural persons named in an application are correct.
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Thomson Reuters Enterprise Centre GmbH v. ROSS Intelligence Inc.
The first federal appellate decision on fair use in AI training. The Third Circuit held that Westlaw's editor-written headnotes are protected by copyright and that ROSS Intelligence's use of them to train a competing, non-generative legal research tool was not fair use under 17 U.S.C. § 107. The ruling is deliberately narrow: ROSS's system retrieved existing texts rather than generating new ones, so whether training a generative model is fair use remains undecided at the appellate level. The decision binds district courts within the Third Circuit; for Texas courts it is persuasive only.
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Trinidad v. OpenAI Inc.
The Northern District of California dismissed a self-represented plaintiff's trade secret claim because she alleged no reasonable measures to keep her ChatGPT-developed frameworks secret; she had shared them with OpenAI without alleging a duty of confidentiality. Under 18 U.S.C. § 1839(3), a trade secret owner must have taken reasonable measures to keep the information secret. The order concerns those allegations and does not decide the treatment of an enterprise deployment governed by confidentiality commitments. It binds no other court.
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Unicolors, Inc. v. H&M Hennes and Mauritz, L.P.
Under 17 U.S.C. § 411(b), a registration is not invalidated by a good-faith mistake, whether of fact or of law. When a defendant alleges a knowing inaccuracy, the court must ask the Register whether the Office would have refused registration.
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United States v. Arthrex
Patent Trial and Appeal Board judges are inferior officers whose decisions must be reviewable by a superior officer. Either party may ask the USPTO Director to review a Board decision, including an institution decision.
Pending.
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In re OpenAI, Inc. Copyright Infringement Litigation
Consolidated cases in the Southern District of New York, including The New York Times. As of October 21, 2026, there is no ruling on fair use yet. The citing guide gives the court only, with no docket number. Nothing in this record states an outcome.
Open cases on watch.
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Casa Tradicion v. Casa Azul Spirits
In a 2024 tequila case, a Houston federal court relied on the defendant's Eveready survey and rejected the plaintiff's Squirt survey because the products were not shelved together, and found no likely confusion between CASA AZUL and CLASE AZUL. The ruling was appealed to the Fifth Circuit under No. 24-20255, and the appeal is undecided. Only the district court decision and the pending appeal are stated here; no outcome is presented.
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RiseandShine Corp. v. PepsiCo, Inc.
The Supreme Court granted certiorari on June 29, 2026, to decide whether the strength of a mark is a question of fact in a likelihood-of-confusion case. The case comes from the Second Circuit, which treats strength as a legal question, while the Fifth Circuit treats likelihood of confusion as a question of fact. A decision is expected by June 2027. Nothing in this record states an outcome.