Earlier this year, the World Intellectual Property Organization (WIPO) initiated a new series of reports, WIPO Technology Trends. The first report in the series, entitled Artificial Intelligence, looks at artificial intelligence (AI) patenting trends and issues across industries and around the world.
Since the Supreme Court decided Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), motions for attorneys’ fees under 35 U.S.C. § 285 have become increasingly common under the new more relaxed standard for demonstrating an “exceptional case.” In roughly this same time period, post-issuance challenges such as IPRs have also became a key strategy for many patent infringement defendants.
In MyMail, Ltd. v. OoVoo, LLC, IAC Search & Media, Inc., 934 F.3d 1373 (Fed. Cir. August 16, 2019), a split Federal Circuit panel held that the district court erred by declining to resolve the parties’ claim construction dispute before deciding patent subject matter eligibility under Section 101
35 U.S.C. § 251 governs claims that are broadened through a reissue. Specifically, Section 251(a) provides:
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid … by reason of the patentee claiming more or less than he had a right to claim in the patent, … the Director shall … reissue the patent for the invention disclosed in the original patent …
Two Circuit Courts of Appeal have recently released significant decisions regarding the scope and application of 17 U.S.C. § 1782. Section 1782 provides that a federal district court may, upon application by any interested person, provide for discovery for use in a proceeding before a foreign or international tribunal.
35 U.S.C. § 315(b) states that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” In a recent precedential decision, GoPro, Inc. v. 360Heros, Inc., No. IPR2018-01754 (P.T.A.B. Aug. 23, 2019), the Patent Trial and Appeal Board (“PTAB”) held that § 315(b)’s one-year time bar is triggered by the service of process of a claim for infringement even if the party alleging infringement had no standing to bring such a claim.
The US Patent and Trademark Office (“USPTO”), on August 27th, 2019, issued a Request for Comments on Patenting Artificial Intelligence Inventions (“Request”) and recently extended the deadline for submitting comments to November 8th, 2019.
The Request’s issuance highlights that artificial intelligence (“AI”) is an increasingly important area for patent protection and that the question of AI’s patentability presents unique challenges. These challenges will no doubt need to be addressed over time in future federal cases and in evolving USPTO patentability policies. In the Request, the USPTO enumerates a dozen different areas in which it seeks comments. Topics include inventorship, ownership, appropriate forms of protection, and the applicability of existing patentability rules in areas such as enablement and eligibility.
35 U.S.C. Section 112 requires that patent claims have adequate written support. As a general matter, the requirement of adequate written description may not be satisfied by a so-called “equivalent disclosure.” A recent Federal Circuit opinion demonstrates that there are exceptions to this general rule.
Article III of the Constitution empowers federal courts to adjudicate only “Cases” and “Controversies.” The controversy must not only be real and substantial, it must also be extant at all stages of review. The Federal Circuit’s recent decision in Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367 (Fed. Cir. 2019), illustrates one of the scenarios in which this doctrine can come into play.
The Supreme Court recently granted certiorari in the case entitled Outokumpu Stainless USA, LLC v. Converteam SAS, 902 F.3d 1316 (11th Cir. 2018), cert. granted, GE Energy Power Conversion France SAS Corp. v. Outokumpu Stainless USA, LLC (June 28, 2019). The case will resolve a circuit split regarding the ability of non-signatories to participate in arbitration under the Convention on the Recognition and Enforcement of Arbitral Awards (“New York Convention”).