Two recent patent applications seek protection for inventions that were created autonomously by artificial intelligence without a human inventor. The applicants want the AI to be deemed the inventor and the AI's owners to...more
The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more
9/10/2019
/ Denial of Rehearing ,
Evidence ,
Expert Witness ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Subject Matter Experts (SMEs)
The Situation: Artificial intelligence ("AI") is growing more powerful and gaining application in many areas. AI can now create new innovation on its own, without a human inventor—a capability that will only expand as...more
9/9/2019
/ Artificial Intelligence ,
Computer-Related Inventions ,
Corporate Counsel ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Patent Applications ,
Patents ,
Popular ,
Public Comment ,
USPTO ,
Young Lawyers
Patent procurement activity is increasing to protect embedded artificial intelligence ("AI") technologies in a variety of digital healthcare solutions. The United States Patent and Trademark Office ("USPTO") has issued the...more
8/19/2019
/ Artificial Intelligence ,
CLS Bank v Alice Corp ,
Digital Health ,
Healthcare ,
Life Sciences ,
Medical Devices ,
New Guidance ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Technology ,
USPTO
The Situation: There have been numerous reports that computer algorithms used in artificial intelligence ("AI") systems have created or contributed to biased and discriminatory outcomes. To reduce such bias and...more
6/27/2019
/ Algorithms ,
Artificial Intelligence ,
Cybersecurity ,
Data Protection ,
Disparate Treatment ,
Federal Trade Commission (FTC) ,
Popular ,
Predictive Analytics ,
Proposed Legislation ,
Technology Sector ,
Title VII
President Trump's American AI Initiative is a far-reaching plan designed to ensure the United States remains a world leader in artificial intelligence research, development, and deployment. Jones Day's Emily Tait, Samir...more
5/22/2019
/ Artificial Intelligence ,
Cybersecurity ,
Data Privacy ,
Data Protection ,
Data Security ,
Ethical Standards ,
Executive Orders ,
Export Controls ,
Government Agencies ,
Intellectual Property Protection ,
National Security ,
Popular ,
Regulatory Agenda ,
Technology Sector ,
Trump Administration
On March 13, 2019, the PTAB issued the fifth installment of its ongoing Motion to Amend Study, which tracks and analyzes motions to amend filed in AIA trials through September 30, 2018 (end of Fiscal Year 2018).
The data...more
The Situation: With aging infrastructure threatening to slow implementation of automated vehicles ("AVs") and other connected technologies, the public–private partnership (variously referred to as "PPP," "P3," or "3P") is...more
3/28/2019
/ 5G Network ,
CFIUS ,
Cybersecurity ,
Foreign Investment ,
Infrastructure ,
Intellectual Property Protection ,
National Security ,
Popular ,
Privacy Concerns ,
Project Finance ,
Public Private Partnerships (P3s) ,
Public Projects ,
State and Local Government
The Situation: Recognizing the vital role that artificial intelligence ("AI") plays in the economy and national security interests of the United States, President Trump recently issued an Executive Order unveiling the...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
2/21/2019
/ Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents
Since April 2018 when the U.S. Supreme Court handed down its Oil States decision, patent owners have made various arguments addressing issues that were not resolved in that case. One such example is Christy, Inc. v. United...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more
This decision should be a welcome development for patent applicants seeking review.
On July 27, 2018, the U.S. Court of Appeals for the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794...more
8/10/2018
/ 35 U.S.C. § 145 ,
Administrative Proceedings ,
American Rule ,
Attorney's Fees ,
En Banc Review ,
Litigation Fees & Costs ,
Patent Litigation ,
Patents ,
Split of Authority ,
Statutory Interpretation ,
Trademarks ,
USPTO
The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more
The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrump A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018) (Moore, joined by Linn and Chen) serves as another reminder to sufficiently corroborate inventor testimony...more
On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more
On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to...more
2/14/2018
/ Burden of Persuasion ,
Burden-Shifting ,
Intervenors ,
Motion to Amend ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Petition For Rehearing ,
Preponderance of the Evidence ,
Standard of Review ,
USPTO
The Situation: Artificial intelligence ("AI") technology is exploding across virtually all industries. Technology companies are innovating at warp speed, and even companies that do not principally identify as "technology...more
1/12/2018
/ Artificial Intelligence ,
Authorship ,
Copyright ,
Corporate Counsel ,
Intellectual Property Protection ,
Misappropriation ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Popular ,
Section 101 ,
Software Patents ,
Source Code ,
Technology Sector ,
Trade Secrets ,
Young Lawyers