Welcome to TalKing Intellectual Property, King & Spalding’s monthly briefing on the latest issues shaping the IP landscape. Each month, we bring you practical and sharp insights on legal, regulatory, and market developments that are influencing how IP risk and opportunity are evaluated in real time. Consider this your standing monthly check‑in to help you stay ahead of what’s coming next.

THREE RECENT UPDATES

Federal Circuit Declines to Revisit Ruling Requiring Licensees to Mark Products

The Federal Circuit denied a patent owner’s request for the full court to reconsider an August decision on patent marking. Patent marking, a statutory requirement, means putting the public on notice of a patent, for example by printing the patent number on the product or pointing to a website. Under the August ruling, owners who want damages for the period before a lawsuit is filed must make sure all of their licensees mark their products. Prior case law has held that the requirement applies even to “nonpracticing entities” that make no products themselves, and even when the licenses came from settlements in which the licensee denied infringement. In the briefing, the patent owner had argued that the ruling “converts ordinary patent settlements into presumptive marking events,” but that ruling, and the dismissal of its claims against the defendant in the underlying suit, now stand. 

Court Holds That Work With Outside Consultants May Be Protected Once a Generic Drug Maker Decides to Challenge Patents

In a patent dispute over a generic version of a brand-name inhaler, the Southern District of Florida considered whether the generic maker could withhold 46 documents involving two outside consultants it hired for design, packaging and labeling work. The court explained that filing a generic drug application with a “Paragraph IV” certification (a statement that the brand’s patents are invalid or not infringed) is treated by law as an act of infringement, so a lawsuit is “almost certain” to follow. Relying on earlier rulings, the court held that documents created on or after July 5, 2022, when the company decided to pursue that strategy, could qualify as “work product” prepared in anticipation of litigation. It also found that the consultants worked as “functional employees,” so including them in communications did not by itself waive attorney-client privilege. However, the court refused to treat everything as automatically protected. It found the company’s privilege log too “formulaic, vague, and conclusory” and ordered a revised log showing why each document was created mainly for legal purposes. For generic drug cases, the ruling suggests the date of the Paragraph IV decision can be a key dividing line in discovery fights, but protection still has to be shown document by document. 

Third Circuit Rules Against ROSS in Westlaw AI Case, Leaving Generative AI Training Questions Open

On September 29, 2026, the Third Circuit issued one of the first appellate decisions applying copyright’s fair use doctrine to AI training. In Thomson Reuters v. ROSS Intelligence, the court held that Westlaw’s editorial headnotes are protected by copyright, and that ROSS’s use of 2,243 of them to train a competing legal research tool was not fair use. The court focused on the fact that ROSS used the headnotes for essentially the same purpose as Westlaw and built a commercial substitute for it, and it pointed to ROSS’s reliance on a vendor that obtained Westlaw access through borrowed credentials and misleading accounts. The court also called this “no more than an ordinary copyright case”: it noted that ROSS’s tool retrieved existing passages rather than generating new content, it distinguished generative AI litigation, and it rejected the idea that AI development deserves special copyright rules. The decision is a reminder that companies developing or licensing AI tools should look closely at where their training data comes from, what their vendor agreements say, and what indemnity protections they have, while the harder generative AI training questions are still working their way through other courts. Partners Benjamin Softness and David Mattern provide a more in-depth breakdown of the ruling here. 

THREE DEVELOPMENTS WE’RE MONITORING

U.S. Customs and Border Protection Increases Oversight of Gray Market Pharmaceuticals

Prescription drugs entering the United States through international mail will soon face increased scrutiny. On October 14, 2026, U.S. Customs and Border Protection (CBP) extended the compliance date for its new informal entry procedures for international mail from October 22, 2026, to January 20, 2027. Although the new procedures cover mail valued at $2,500 or less, they exclude products subject to Partner Government Agency requirements, including FDA-regulated goods such as prescription drugs. As a result, prescription drugs imported by mail must proceed through formal entry or CBP’s Entry Type 13, both of which carry greater documentation requirements and oversight than have been previously applied. The change does not create a new ban on drug imports; rather, it increases the likelihood that existing FDA law and CBP oversight will be enforced in practice. These procedures are aimed at identifying violations of U.S. customs and trade laws, health and safety requirements, intellectual property rights, and consumer protection rules, while also preventing illicit drugs from entering the country. The heightened scrutiny may also strengthen enforcement against counterfeit and gray market or diverted products. In light of these changes, brand owners should confirm that their trademark and copyright recordations with CBP are current to ensure their intellectual property rights are protected at the border.

Fifth Circuit Reverses Order Allowing U.S. Discovery for European Patent Cases

The Fifth Circuit, in a published decision, reversed a Texas federal court’s approval of Motorola’s request under Section 1782 for U.S. discovery to use in patent cases pending in Germany and the European Unified Patent Court. Section 1782 lets federal courts order people and companies in their districts to provide evidence for proceedings before a “foreign or international tribunal.” The panel held that the lower court “erred legally and analytically” by making the opposing party prove that the foreign courts would not welcome the evidence. Under the Supreme Court’s 2004 Intel framework, that question is one of the factors courts weigh. The panel also faulted the limited attention paid to whether Motorola was trying to get around the foreign courts’ discovery rules, noting that those courts had already denied some of Motorola’s requests. The panel reasoned that Motorola could get discovery from its opponent in the European cases, and would have “a stronger case for Section 1782 relief” only if those courts did not provide it. Because Section 1782 is often used in international IP disputes, the ruling signals that, at least in the Fifth Circuit, parties may face a harder road when foreign courts have already limited the discovery being sought. 

Florida Court Rejects Blanket Rules for AI Tools Under the Work Product Doctrine

In a defamation case, the Southern District of Florida ruled that a litigant’s conversations with AI platforms are neither automatically discoverable nor automatically protected from discovery. The court looked at two recent rulings. In the first, a New York federal court found that AI chats a represented party created on its own, without direction from its lawyers, were not protected. In the second, a Michigan federal court found that AI-assisted litigation preparation may be protected, and that using a third-party AI tool does not necessarily waive that protection. The Florida court took a middle path, reading neither decision as setting a categorical rule. It held instead that protection depends on “the nature, purpose, and circumstances of the particular materials.” Under that approach, AI chats used to create public statements are generally not protected, while specific chats prepared because of the litigation may be withheld if they are properly described on a privilege log. The court also ordered the parties to work out how AI providers would produce records, so that protected material could be identified before it reaches the other side. The court did not settle whether, or when, sharing information with an AI tool waives work product or other confidentiality protections, and courts are still developing their views on that question.