Federal Circuit Appellate court Grants Emergency Stay of Apple Watch Ban

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by Dennis Crouch

The patent battle between Masimo and Apple over pulse oximetry technology in the Apple Watch took a new turn on December 27th. Despite the recent import ban imposed by the U.S. International Trade Commission (ITC), Apple was granted a temporary stay by the U.S. Court of Appeals for the Federal Circuit. For now, this emergency ruling blocks the government from enforcing the exclusion order on certain Apple Watch models through at least mid-January. However, the legal fight is far from over. For Masimo, this short-term win for Apple weakens its bargaining position as the two companies continue their protracted patent dispute in courts and before regulatory agencies.

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Emergency Appeal of the Apple Watch Ban

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by Dennis Crouch

December 25th, marked the deadline for President Biden to reject the U.S. International Trade Commission's (USITC) ruling banning imports of certain Apple Watch models. With no action from the White House, Apple now faces a federal government order to halt imports and sales of Apple Watch Series 9 and Ultra 2 devices because it incorporates light-based pulse oximetry technology covered by the claims of Masimo's U.S. Patent Nos. 10,945,648 (claims 24 and 30) and 10,912,502 (claim 22).

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No Patent for Robot Inventions: UK Supreme Court Rules on AI Inventorship in Thaler v. Comptroller-General

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by Dennis Crouch

Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 49. 

In a December 20, 2023 decision, the UK Supreme Court has agreed with American courts that an inventive machine is not deserving of patent rights.  The underlying case will be familiar to many with Dr. Stephen Thaler of St. Louis seeking to patent a thermal-mug designed by an artificial intelligence machine that he created.  Thaler has argued that the AI (called DABUS) conceived of the particular invention in question and also identified its practical utility.  The UK Supreme court based its holding upon the text of the UK Patents Act of 1977 as it reached the same ultimate conclusion as the Federal Circuit in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783 (2023).

These Thaler cases showcase that under the current patent law regime, autonomous AI systems cannot qualify as inventors entitled to patent rights, irrespective of their creativity. For AI-generated inventions to become patentable, intervention by policymakers to amend inventorship laws would likely be necessary. However, the arguably bigger questions of immediate importance surround collaborative human-AI inventions where both human and machine contribute in creation of a new invention. Thaler expressly disclaimed any human input into DABUS’s inventions, but going forward mixed human-AI inventor teams seem inevitable. Neither the UK Supreme Court’s decision nor the parallel US rulings provide direct guidance on the requisite threshold quality or quantity of human participation in such collaborative inventions to satisfy legal inventorship requirements. Thus, for instance, an open issue remains whether token perfunctory human approval of an AI-devised invention would suffice, or if substantive intellectual contribution is needed. And for primarily AI-driven inventions, are minor tweaks by a human collaborator enough? Or must the human contributor objectively supply the novel concept?

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The Battle Over Domicile Disclosure by Trademark Applicants

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by Dennis Crouch

In the pending appeal of In re Chestek, PLLC, No. 22-1843, a trademark applicant is opposing the USPTO requirement that all applicants must disclose their domicile address. This requirement, referred to as the “domicile address rule,” has been controversial since the USPTO adopted it in a 2019 rulemaking. For individuals, this rule requires an actual residential address.  See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, Final Rule, 84 Fed. Reg. 31498 (July 2, 2019).  The outcome could have significant implications for privacy and transparency in the trademark registration system.  For a variety of reasons, many people do not publicly disclose their place of residence. In the US, the most common reasons stem from domestic violence and stalking. Although the USPTO is attempting to offer a mechanism to protect domestic residence from public view, it also recently had a major data loss of that information -- and effectively all domestic residence information is available in various sources online.  A decision favoring the petitioner would also be seen as bolstering the Administrative Procedure Act’s notice and comment requirements.

The best place to begin any analysis is probably with the statute.

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The FTC’s Misguided Comments on Copyright Office Generative AI Questions

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Guest Post from Professors Pamela Samuelson, Christopher Jon Sprigman, and Matthew Sag. 

The U.S. Copyright Office published a Notice of inquiry (“NOI”) and request for comments, Artificial Intelligence and Copyright, Docket No. 2023-6 on August 30, 2023, calling for comments from interested parties addressing dozens of questions. The Office’s questions focused on a wide range of issues including the copyright implications of the use of in-copyright works as training data, on the feasibility of licensing such uses, the impact on competition and innovation in AI industries depending on how courts resolved training data copyright issues, the copyrightability of AI outputs, whether new laws regulating generative AI were needed, whether AI developers should be obliged to disclose the sources of their training data, and whether AI outputs should be labeled as such.

The Office received roughly 10,000 comments on October 30, 2023. We, who have been writing and teaching about copyright law and how it has responded to challenges posed by new technologies for decades, were among those who submitted comments, see https://www.regulations.gov/comment/COLC-2023-0006-8854.

After reading and reflecting on comments filed by Federal Trade Commission (FTC), see https://www.regulations.gov/comment/COLC-2023-0006-8630, we decided to file a reply to the FTC’s comments, see https://www.regulations.gov/comment/COLC-2023-0006-10299. Below is the substance of our reply comments explaining why we believe the agency’s comments were ill-informed, misguided, and highly ambiguous.

Substance of the Samuelson, Sprigman, Sag Reply Comments:

We should begin by noting our appreciation for the FTC’s work enforcing both federal antitrust and consumer protection laws and helping to lead policy development in both areas. In our view, the FTC plays a vital role in keeping markets open and honest, and we have long been admirers of the intelligence and energy that the agency brings to that task. More specifically, we recognize the usefulness of examining intellectual property issues through the lenses of competition and consumer protection.

However, in the case of its response to the Copyright Office’s NOI on Artificial Intelligence and Copyright, the FTC has submitted Comments that are unclear and thus open to a variety of interpretations—and possibly to misinterpretations as well. The FTC’s Comments also raise questions about the scope of agency’s authority under Section 5 of the Federal Trade Commission Act, 15 U.S.C. 45, to bring enforcement actions aimed at activities, including those involving the training and use of AI, that might involve copyright infringement—although we would note that the copyright consequences of AI are, as yet, undefined.

We have three principal criticisms of the FTC’s comments:

First, the FTC’s submission is not a model of clarity: indeed, later in these Comments we will focus on a particular sentence from the FTC Comments that is worrisome both for its opacity and for the ways in which it may be interpreted (or misinterpreted) to chill innovation and restrict competition in the markets for AI technologies.

Second, the FTC Comments do not appear to be based on a balanced evidentiary record; rather, the Comments appear largely to reflect views articulated by participants in an Oct. 4, 2023, FTC Roundtable event[1] that featured testimony largely from artists and writers critical of generative AI: 11 of the 12 witnesses appeared to be or to represent individual creators, and one represented open-source software developers who objected to AI training on their code. Not a single witness provided perspectives from technologists who have developed and work with AI agents. Perhaps not surprisingly given the imbalance in the record, the FTC comments do not seem to appreciate the variety of use cases for AI technologies or the broader implications of those technologies for competition policy.

Third, and finally, certain of the FTC’s Comments could, if misunderstood, upset the careful balance that the copyright laws create between private rights to control copyrighted works and public access and use of those works. Upsetting that balance could chill development not only of useful AI technologies, but of a range of new technologies and services that augment consumers’ opportunities to access and use copyrighted works and increase the value of those works to consumers.

In the remainder of these Comments we will focus on a specific sentence from the FTC Comments that illustrates all of these problems.

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