Back in August 2019, the USPTO published a notice requesting public input on the interplay between patent law and artificial intelligence (AI). In October, the USPTO expanded its notice to extend the inquiry to include copyright, trademark, and other IP rights.  The PTO has now extended that deadline for comments until January 10, 2020. 84 FR 66176.

Questions for the public: 

1. Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?

2. Assuming involvement by a natural person is or should be required, what kind of involvement would or should be sufficient so that the work qualifies for copyright protection? For example, should it be sufficient if a person (i) designed the AI algorithm or process that created the work; (ii) contributed to the design of the algorithm or process; (iii) chose data used by the algorithm for training or otherwise; (iv) caused the AI algorithm or process to be used to yield the work; or (v) engaged in some specific combination of the foregoing Start Printed Page 58142activities? Are there other contributions a person could make in a potentially copyrightable AI-generated work in order to be considered an “author”?

3. To the extent an AI algorithm or process learns its function(s) by ingesting large volumes of copyrighted material, does the existing statutory language (e.g., the fair use doctrine) and related case law adequately address the legality of making such use? Should authors be recognized for this type of use of their works? If so, how?

4. Are current laws for assigning liability for copyright infringement adequate to address a situation in which an AI process creates a work that infringes a copyrighted work?

5. Should an entity or entities other than a natural person, or company to which a natural person assigns a copyrighted work, be able to own the copyright on the AI work? For example: Should a company who trains the artificial intelligence process that creates the work be able to be an owner?

6. Are there other copyright issues that need to be addressed to promote the goals of copyright law in connection with the use of AI?

7. Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?

8. How, if at all, does AI impact trademark law? Is the existing statutory language in the Lanham Act adequate to address the use of AI in the marketplace?

9. How, if at all, does AI impact the need to protect databases and data sets? Are existing laws adequate to protect such data?

10. How, if at all, does AI impact trade secret law? Is the Defend Trade Secrets Act (DTSA), 18 U.S.C. 1836 et seq., adequate to address the use of AI in the marketplace?

11. Do any laws, policies, or practices need to change in order to ensure an appropriate balance between maintaining trade secrets on the one hand and obtaining patents, copyrights, or other forms of intellectual property protection related to AI on the other?

12. Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

13. Are there any relevant policies or practices from intellectual property agencies or legal systems in other countries that may help inform USPTO’s policies and practices regarding intellectual property rights (other than those related to patent rights)?

Artificial Intelligence (AI) Patents

by Dennis Crouch

HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer (Supreme Court 2019)

The Supreme Court has previously identified patent eligibility as a question of law.  However, in Berkheimer, the Federal Circuit recognized that the ultimate legal conclusion may be based upon factual conclusions.  For example, the level of skill in the art (or state-of-the-art) is a classic factual question that may be relevant to the question of inventive contribution (Alice step 2).

The fact-law divide is important for a number of issues. For example:

• Motion to dismiss or Summary Judgment: at the pretrial stage, it is appropriate for the court to determine questions of law but not to resolve disputed issues of material fact.
• Evidentiary standards: factual conclusions generally demand a higher standard of evidence and particular burden of proof.
• Who decides: factual determinations are often given to a jury to decide rather than a judge and “no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.” 7th Amendment.
• Statement of Facts: If the judge is deciding questions of fact and law, the judge must “find the facts specially and state its conclusions of law separately.” FRCP 52(a).
• Appellate burden: Factual conclusions are generally given deference on appeal while questions of law are reviewed de novo.

Following the Berkheimer decision, HP petitioned the Supreme Court for certiorari on the following question:

Whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

Following briefing, including 7 briefs amici, the Supreme Court then requested that the Solicitor General provide the views of the U.S. Gov’t on the question.  That CVSG brief has now been filed.

SG Brief Berkheimer

The SG also filed a parallel brief in Hikma on the question of “Whether methods of using drugs to treat medical conditions are patent-eligible processes under Section 101.”

SG Brief Hikma

Both briefs open with the following line: “In the view of the United States, the petition for a writ of certiorari should be denied.” Both briefs go on to explain the high level of uncertainty in the law of eligibility:

[A]lthough the Court has construed Section 101 and its precursors for well over a century, its recent decisions have introduced substantial uncertainty regarding the proper Section 101 inquiry.

[The] new framework has generated substantial uncertainty in the lower courts concerning the scope of the exceptions and the proper methodology for determining whether a particular patent implicates them. In Hikma, for example, the majority and dissenting opinions in the Federal Circuit each pointed to different aspects of the language and logic of this Court’s decision in Mayo in reaching diametrically opposite conclusions regarding the patenteligibility of a concrete method of medical treatment.

SG Brief Berkheimer.  According to the Government, the Berkheimer case puts the cart before the horse. Berkheimer focuses in on procedural questions when the substance of the law remains uncertain. Instead of taking this case, the SG suggests first granting review on a case to clarify substantive standards.

The question presented in HP’s petition focuses on whether the Section 101 patent-eligibility inquiry calls for a legal determination by courts, a factual determination by juries, or both. That question would be difficult to answer in any cogent manner while uncertainty about the substance of the Section 101 inquiry persists. At a minimum, the answer to the question HP’s petition poses may be significantly affected by additional guidance this Court provides about the proper analysis for ascertaining whether Section 101 encompasses a particular patent claim. Granting review in this case to address that procedural question would therefore be premature. The Court instead should grant review in an appropriate case to clarify those substantive standards, and it should defer resolution of ancillary issues such as the judge-jury question raised in HP’s petition.

Id.

by Dennis Crouch

The U.S. Supreme Court is set to hear oral arguments on Monday, December 9 in the pending IPR Appeal that is now captioned Thryv, Inc. v. Click-to-Call Technologies, LP (SCT Docket No. 18-916).   The focus of the case is statutory declaration that the PTO Director’s decision of whether to institute an IPR is “final and nonappealable.”  35 U.S.C. § 314(d).  This same issue – albeit slightly different context – was already addressed in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) and SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Question Presented in Thryv: Whether 35 U.8.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that§ 315(b)’s time bar did not apply.

The section 315(b) time bar prohibits institution of a petition “filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.”  Years ago (well before the 1-year date) the patentee Click-to-Call sued Thryv’s predecessor-in-interest for infringement and served the complaint as required under § 315(b).  That lawsuit, however, was voluntarily dismissed without prejudice.  When the defendant later filed its IPR petition, the PTAB found that the dismissal without prejudice effectively nullified the original lawsuit and, as such, did not raise the time-bar. The PTAB then invalidated the claims.  On appeal, the Federal Circuit rejected PTAB’s approach  — holding that the statute does not allow for any exception to the time-bar for cases dismissed without prejudice.  In its petition to the Supreme Court, Thryv asked the court to review both whether (1) the issue is appealable; and (2) the time-bar still applies after a dismissal without prejudice. The Supreme Court granted certiorari, but only as to question 1 – whether the issue is appealable.

The U.S. Gov’t also support’s Thryv’s position — arguing that its institution decisions should not be subject to appeal. Expected at oral arguments:

• Adam Charnes (Kilpatrick Townsend) is representing the petitioner patent-challenger Thryv.
• Jonathan Ellis from the Solicitor General’s office is representing the U.S. Gov’t. and splitting time with Charnes.
• Daniel Geyser (Geyser PC) is representing the patentee Click-to-Call.

Merits Briefing:

• Opening Brief: Petitioner
• Opening Brief: U.S. Gov’t.
• Responsive Brief: Respondent
• Reply Brief: Petitioner
• Reply Brief: U.S. Gov’t.
• Amicus: Federal Circuit Bar Ass’n.
• Amicus: AIPLA
• Amicus: PTAB Bar Ass’n.
• Amicus: Atlanta Gas Light Co.
• Amicus: Intel Corp.
• Amicus: ON Semiconductor Corp., et al.
• Amicus: Superior Communications, Inc.
• Amicus: AARP and AARP Found.
• Amicus:  NYIPLA
• Amicus: PhRMA
• Amicus: BIO
• Amicus: Professor Stephen I. Vladeck
• Amicus: Professors of Patent and Administrative Law
• Amicus: Power Integrations, Inc.

For me, the most on-point text comes from the Supreme Court’s 2018 decision in SAS that discusses and applies the court’s prior decision in Cuozzo (2016):

At this point, only one final question remains to resolve. Even if the statute forbids his partial institution practice, the Director suggests we lack the power to say so. By way of support, he points to § 314(d) and our decision in Cuozzo. Section 314(d) says that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In Cuozzo, we held that this provision prevented courts from entertaining an argument that the Director erred in instituting an inter partes review of certain patent claims. The Director reads these authorities as foreclosing judicial review of any legal question bearing on the institution of inter partes review—including whether the statute permits his “partial institution” practice.

But this reading overreads both the statute and our precedent. As Cuozzo recognized, we begin with “the ‘strong presumption’ in favor of judicial review.” Id. To overcome that presumption, Cuozzo explained, this Court’s precedents require “clear and convincing indications” that Congress meant to foreclose review. Given the strength of this presumption and the statute’s text, Cuozzo concluded that § 314(d) precludes judicial review only of the Director’s “initial determination” under § 314(a) that “there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted” and review is therefore justified. . . . In fact, Cuozzo proceeded to emphasize that § 314(d) does not “enable the agency to act outside its statutory limits.” If a party believes the Patent Office has engaged in “ ‘shenanigans’ ” by exceeding its statutory bounds, judicial review remains available consistent with the Administrative Procedure Act, which directs courts to set aside agency action “not in accordance with law” or “in excess of statutory jurisdiction, authority, or limitations.”

And that, of course, is exactly the sort of question we are called upon to decide today. SAS does not seek to challenge the Director’s conclusion that it showed a “reasonable likelihood” of success sufficient to warrant “institut [ing] an inter partes review.” 35 U.S.C. §§ 314(a), (d). No doubt SAS remains very pleased with the Director’s judgment on that score. Instead, SAS contends that the Director exceeded his statutory authority by limiting the review to fewer than all of the claims SAS challenged. And nothing in § 314(d) or Cuozzo withdraws our power to ensure that an inter partes review proceeds in accordance with the law’s demands.

SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). The difficulty here with directly applying SAS is (1) Gorsuch overstated the holding in Cuozzo regarding the “only” thing appealable; (2) SAS was decided in a 5-4 vote with dissenters characterizing Cuozzo has holding “that the Director’s decision whether to institute review is normally not reviewable.”

Senators Tillis (R-NC), Coons (D-DE), Cassidy (R-LA) & Hirono (D-HI) have introduced the “Counterfeit Goods Seizure Act of 2019.”

Short and sweet — the two-page bill adds design patent infringement as justification for US Customs and Border Patrol to seize goods at the border.

The amended statute would read as follows.

Merchandise which is introduced or attempted to be introduced into the United States contrary to law shall be treated as follows:

(2)The merchandise may be seized and forfeited if— … (C) it is merchandise or packaging in which copyright, design patent, trademark, or trade name protection violations are involved (including, but not limited to, violations of section 1124, 1125, or 1127 of title 15, section 506 of title 17, section 271 or 289 of title 35,
or section 2318 or 2320 of title 18). . .

Copyright, trademark, and “trade name” violations are already listed in the statute; patents and trade secrets are not listed.  The basic idea here is that it is pretty easy for CPB to stack design patents atop their current system that looks at copyright and trademark.  The hope here is that a layman (e.g., CPB official) can quickly and easily determine design patent infringement at a relatively high level of accuracy.  This would be much more difficult for utility patents, and wouldn’t work for trade secrets without disclosing the secret to CPB.

IPO and INTA both released letters in support of the action.

• Legislation text: ROS19F64
• Tillis Coons Design Counterfeit Seizure Bill 11.20.19
• Joint-Letter_Counterfeit-Good-Seizure-Act

Sen. Tillis is Chair of the Judiciary Committee’s Subcommittee on Intellectual Property and Sen. Coons is Ranking Member. Both have been active at pushing forward a pro-strong-IP-rights agenda. Sen. Hirono is also on the Subcommittee.

by Dennis Crouch

Georgia v. Public.Resource.Org, Inc. (Supreme Court 2019) [Oral Argument Transcript]

Georgia’s counsel Joshua Johnson began his oral arguments by drawing the Supreme Court’s attention to its 19th Century case-law regarding the judicially-created government edicts doctrine:

MR. JOHNSON: The crux of the parties’ dispute is whether this Court’s 19th-century precedents support a decision different from the one that would be reached by applying standard interpretive principles to the Copyright Act’s plain text. They do not. . . . [W]hile
judicial opinions are not copyrightable, annotations added to opinions by a court’s official reporter are copyrightable works of authorship.

Here, we have “official” annotated code created by Lexis but guided by a mandated state committee. And, as a work-made-for-hire, the State is legally seen as the author for copyright purposes.  The crux of the copyright claim here is in the summaries of judicial decisions citing to the Georgia code.  Although those summaries do not have the force of law, they are the “official” annotations legally authored by the state.

JUSTICE SOTOMAYOR: Wheaton says anything prepared by the judge can’t be copyrighted.That includes headnotes, which are comparable, I think, to summaries that might be included in these annotations because it’s prepared by the judge.

Citing Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834).  Justice Breyer seemed to think that the answer is simple, but provided a somewhat complex statement of the simplicity:

JUSTICE BREYER:  I thought this isn’t that difficult. If a judge does something in his judicial capacity, it is not copyrightable. If a legislator does something or a group of legislators in their legislative capacity, it is not copyrightable. I mean, who cares who the author is? There are public policy reasons that have existed forever in the law that you make those two things not copyrightable. The executive is harder to separate out, but you could do it. . . . If it’s not in their official capacity, if it’s simply a summary or is a comment upon something done in an official capacity, it is copyrightable, even though it be done by a sworn public servant, all right? There we are. . . .

I do, says the bride, you can’t copyright that. It’s being used as a performative. It’s not an expression.

Now take that idea and bring it down to the legislature and making laws. Where you have some words on pieces of paper and they are performing a function that is a legislative function or a judicial function, no, it’s not solely an expression; it’s performing a function, and we don’t allow it because to let a monopolist get ahold of that is dangerous.

All this is easy for activities of U.S. judges and legislators because U.S. Gov’t works are not copyrightable under the Statute.  In the state law perspective, we get into a difficult line drawing problem with Justice Breyer’s approach understanding when a judge or legislator is acting in “some other abstract capacity” (using the words of Justice Gorsuch).

In the end, Georgia’s attorney warned the judges not to “blow up” the current system that allows for copyright protection of the official code.  Reminds me of an attack on casebooks from a few years ago. WSJ Blog.