By Dennis Crouch and Timothy Knight*
The Supreme Court is set to hear oral arguments on February 21 in an important copyright case - Warner Chappell Music v. Nealy. The central issue is whether copyright plaintiffs can recover damages for infringing acts that occurred more than three years before filing suit, under the "discovery accrual rule."
by Dennis Crouch
The U.S. Patent and Trademark Office (USPTO) recently published examination guidance and a request for comments on the treatment of inventorship for inventions created with the assistance of artificial intelligence (AI) systems. Inventorship Guidance for AI-Assisted Inventions.
The key takeaway here is that the USPTO believes that an AI-developed invention is patentable so long as a human satisfies the joint-inventorship standard of "significantly contributing to the invention." A human who provides a significant contribution may be the sole inventor and original owner, even in situations where the AI provided the greater contribution.
The PTO's approach here is fairly broad and will likely serve current AI use cases in most situations because most AI invention models of today are tightly controlled and managed by humans rather than simply arising from AI autogeneration or broad prompting. Thus, from a practical effect, there will likely be at least one natural person who satisfies the joint inventorship standard in the vast majority of cases. (Recognizing here that mere control of an AI is insufficient. Rather, the human must provide significant inventive contribution).
Although I am very sympathetic to recognizing human contributions, I also want a patent system that broadly encourages innovation without either prescribing or proscribing particular approaches. The flexibility of this guidance allows room for both human and machine intelligence to intersect in the creative process. But, we should continue monitoring the effects the policy to ensure it does not unduly constrain AI's eventual capacity to autonomously formulate inventive concepts. But for now, the USPTO's basic framework reasonably balances competing interests.
But, the USPTO's approach is not fully grounded in the law because it allows for patenting of an invention in a situation where no human or combination of humans fully conceived of and originated the invention. Rather, we are simply looking for at least one human who provided a significant contribution. The guidance does not particularly address this issue and, by declining to specifically justify the legal grounds why human "significant contributions" suffice even without complete conception, the USPTO leaves the door open to contrary arguments. Opponents could contend that full conception remains legally required for inventorship and that this expansion of the inventorship doctrine exceeds the statutory language. It is not clear who will have standing to make this particular argument.
by Dennis Crouch
In a recent decision, the Federal Circuit held that a claimed range reciting narrower values than those described in the patent specification can still satisfy the written description requirement under 35 U.S.C. § 112(a). RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., No. 22-1862 (Fed. Cir. Feb 9, 2024). Reversing a PTAB post-grant review decision, the court ruled that claims reciting a heating element with having a length of 75-85% of the disposable aerosol-forming substance had adequate written description support even though the specification only described broader ranges, such as “about 75% to about 125%.” Id.
by Dennis Crouch
In SmartSky Networks, LLC v. Gogo Business Aviation, LLC, No. 2023-1058 (Fed. Cir. Jan. 31, 2024), the Federal Circuit has affirmed a lower court denial of a preliminary injunction sought by the patentee SmartSky against Gogo. SmartSky sued Gogo in 2022 for patent infringement, alleging that Gogo’s 5G wireless network infringed several of SmartSky’s patents related to in-flight internet wireless connectivity. See U.S. Patent Nos. 9,312,947, 11,223,417, 10,257,717, and 9,730,077. Along with its complaint, SmartSky moved to preliminarily enjoin Gogo from providing its in-flight network. SmartSky argued it had shown a likelihood of success on the merits and that it would suffer irreparable harm without an injunction, but the D.Del. district court Judge Gregory Williams disagreed. A grant or denial of preliminary injunctive relief can be immediately appealed, but the patentee's appeal has also failed.
The preliminary injunction motion was associated with a new 5G network that Gogo had announced in 2019. That network is, according to Gogo, "still in a pre-launch phase." Although customers are not yet actively using the service, the network itself is actually complete and the final step is including the chipsets within the planes. This aspect of the case was the most critical for the Federal Circuit who concluded that the current status of Gogo's operation was not definite enough to create irreparable harm.
by Dennis Crouch
The Federal Circuit has just reissued this important trademark decision as precedential. In re GO & Associates, 22-1961 (Fed. Cir. 2023/2024)
In a non-precedential 2023 decision, the Federal Circuit affirmed a decision by the Trademark Trial and Appeal Board (TTAB) refusing to register “Everybody vs Racism” as a trademark for apparel, tote bags, and services promoting racial justice advocacy. The court found substantial evidence supported the TTAB's conclusion that the slogan fails to function as a source identifier for the applicant GO & Associates’ goods and services. Although the outcome here supports the informational matter doctrine barring registration, the court is clear that political slogans and other informational matter can be protected as trademarks so long as the applicant shows that they actually function as a trademark.