by Dennis Crouch
This article explores the impact of Generative AI on prior art and potential revisions to patent examination standards to address the rising tidal wave of AI-generated, often speculative, disclosures that could undermine the patent system's integrity.
The core task of patent examination is identifying quality prior art. References must be sufficiently accessible, clear, and enabling to serve as legitimate evidence of what was previously known. Although documents are widely available today via our vast network of digital communications, there is also increasing junk in the system -- documents making unsubstantiated claims that are effectively science fiction. Patent offices prefer patent documents as prior art because they are drafted to meet the strict enablement standards and filed with sworn veracity statements. Issued patents take this a step further with their imprimatur of issuance via successful examination. Many of us learned a mantra that "a prior art reference is only good for what it discloses" -- but in our expanding world of deep fakes, intentional and otherwise, is face value still worth much?
In a new request for comments (RFC), the USPTO has asked the public to weigh in on these issues -- particularly focusing on the impact of generative artificial intelligence (GenAI) on prior art.
by Dennis Crouch
Non-compete agreements fly under the radar for most American lawyers. One reason is that such restrictions have long been banned within legal practice. As an example, the American Bar Association (ABA) Model Rule 5.6(a) prohibits lawyers from entering into agreements that restrict their right to practice law after terminating an employment, partnership, or other professional relationship. The rule's stated aim is to protect clients' freedom to choose their legal representation, but it also ensures that lawyers can practice their profession without restriction.
The increasing prevalence of non-compete agreements in other industries has drawn increasing scrutiny from policymakers and regulators, leading to the FTC's recent rule banning most non-compete agreements across the United States. The new rule was announced on April 23, 2024 following a 3-2 vote by the FTC Commissioners (along party lines, with Democrats in the majority). It is set to take effect 120 days later (August 21, 2024). As I discuss below, two lawsuits have already been filed seeking to derail implementation.
by Dennis Crouch
This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]
The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who "knowingly presents" a "fraudulent claim for payment" to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as "relators," to bring qui tam actions on the government's behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).
To prevent opportunistic lawsuits, however, Congress has sought to strike a "balance between encouraging private persons to root out fraud and stifling parasitic lawsuits"
By Chris Holman
Last week the U. S. Patent and Trademark Office announced the winner of this year’s National Patent Application Drafting Competition (NPADC), the University of Missouri-Kansas City School of Law. I teach patent law at UMKC, and was privileged to travel to Alexandria with the team of UMKC students (pictured below, from left to right, Will Knutson, Mark Trompeter, Joe Hooper, and Lukas Fields) to watch them compete and ultimately triumph in the final round of the competition. I am sure a great deal of the credit for their success can be attributed to our adjunct faculty members teaching patent prosecution at UMKC, James Devaney (Shook Hardy & Bacon) and Jon Hines (Senior Patent Counsel at 3Shape).
I would encourage any law student interested in pursuing a career in patent prosecution to consider participating in the competition next year. In a nutshell,
by Dennis Crouch
I had been following the case of Teva v. Lilly for a few years. Teva has traditionally been a generic manufacturer, but in this case sued Eli Lilly for infringing its patents covering methods of treating headache disorders like migraine using humanized antibodies that bind to and antagonize calcitonin gene-related peptide (CGRP), a protein associated with migraine pain. U.S. Patent Nos. 8,586,045, 9,884,907 and 9,884,908. The patents cover Teva's drug Ajovy, and allegedly cover Lilly's Emgality. Both drugs were approved by the FDA in September 2018. A Massachusetts jury sided with Teva and awarded $177 million in damages, including a controversial future-lost-profit award.
Although the jury sided with Teva, District Judge Allison Burroughs rejected the verdict and instead concluded that Teva's patent claims were invalid as a matter of law for lacking
by Dennis Crouch
The Supreme Court has denied Vanda Pharmaceuticals' petition for certiorari, leaving in place a Federal Circuit decision that invalidated Vanda's patents on methods of using the sleep disorder drug Hetlioz (tasimelteon) as obvious.
Vanda had argued in its cert petition that
by Dennis Crouch
The recent eligibility decision in AI Visualize v. Nuance, __ F.4th __ (Fed. Cir. 2024), gives me pause to consider more general eligibility issues of AI Inventions. When does the design or creation of AI system elements qualify as an eligible invention? In his recent article, Prof. Nikola Datzov wrote what we have all been thinking: "Innovative applications of AI are everywhere we look [and are] revolutionizing our society." Nikola L. Datzov, The Role of Patent (In)Eligibility in Promoting Artificial Intelligence Innovation, 92 UMKC L. REV. 1, 4 (2023).
In AI Visualize, the Federal Circuit
by Dennis Crouch
Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear. The petition asks two questions related to the comparison process for design patent infringement -- in particular, the questions focus on what can qualify as "comparison prior art" used to provide context for the infringement analysis.
Questions presented:
by Dennis Crouch
The leading case on copyrightability of AI created works is now pending before the Court of Appeals for the District of Columbia. The case, Thaler v. Perlmutter, No. 23-5233 (D.C. Cir. 2024), centers on Dr. Stephen Thaler's attempts to register a copyright for an artistic image autonomously generated by his AI system that he has named the "Creativity Machine." The U.S. Copyright Office refused registration on the basis that the work lacked the required human authorship. Thaler filed suit challenging this determination. The parties have now filed their briefs, along with one law professor amicus brief in support of Thaler.
by Dennis Crouch
The Federal Circuit is set to consider the use of terms like "patented," "proprietary," and "exclusive" in commercial advertising can be actionable under § 43(a)(1)(B) of the Lanham Act when their use is not entirely accurate. The key issue on appeal is whether the district court erred in granting summary judgment for Crocs on Double Diamond Distribution and U.S.A. Dawgs' ("Dawgs") counterclaim for false advertising under the Lanham Act.
This case began back in 2006