Be an Expert: Precedential PTAB Decision on Conclusory Expert Testimony
Stutti Tilwa
A recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on expert declarations in their inter partes reviews (“IPR”). On August 24, 2022, the PTAB denied institution of an IPR filed by Xerox Corp., ACS Transport Solutions, Inc., Xerox Transport Solutions, Inc., Conduent Inc., and New Jersey Transit Corp. (collectively, “Petitioners”) against Bytemark, Inc. (“Patent Owner”) based on conclusory statements used in their expert declaration in support of their IPR. This decision was later designated as a precedential decision on February 10, 2023, by Director Kathi Vidal of the United States Patent and Trademark Office (“USPTO”). See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (hereinafter “IPR2022-00624”).
Ultimately, in the decision, the PTAB noted that the Petitioners had not shown there was a reasonable likelihood that they would prevail with regard to at least one of the claims challenged in the petition and therefore denied institution. Xerox Corp., IPR2022-00624 at 18.
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When Algorithms Meet Regulators - The Unexpected Vulnerability of AI Trade Secrets
Joseph Cahill
Companies deploying and developing Artificial Intelligence (“AI”) face a critical intellectual property dilemma: How should I protect AI trade secrets in a regulatory landscape that demands transparency? Indeed, while the Trade Secrets Act (18 U.S.C. § 1905) criminalizes the unauthorized disclosure of trade secrets or confidential information by federal government personnel, it has an important exception—it applies only to disclosures “not authorized by law.” 18 U.S.C. § 1905. On the other hand, federal AI regulations are expected to demand “transparency” and “explainability,” requiring businesses to disclose various aspects of their AI technology. Consequently, new AI regulation mandating transparency may effectively "authorize by law" the disclosure of AI trade secrets, potentially bringing such disclosures within the exception to § 1905’s prohibitions.
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Redesigning Obviousness: Federal Circuit’s New Test for Obviousness in Design Patents
Robert Maier, Nick Manzella*
A recent decision from the U.S. Court of Appeals for the Federal Circuit has changed the standard of patent validity—in particular, the question of whether a patented design is obvious—for design patents. Following the principles of the less rigid approach to evaluating obviousness for utility patents in the Supreme Court’s decision in KSR International v. Teleflex, the Federal Circuit has now extended those broad-view principles to design patents. 550 U.S. 398 (2007).
To read the full article, click here.
This article was previously published in the New York Law Journal on July 24, 2024.
*Summer Associate, Nick Manzella, assisted in the preparation of this article.
This Month: Our Take on AI
Joseph Cahill
China Leads in Generative AI Patents: A recent World Intellectual Property Organization (WIPO) Patent Landscape Report reveals China's dominance in generative AI (GenAI) patent filings. Between 2014 and 2023, inventors based in China were responsible for more than 38,000 GenAI patent families. Notably, since 2017, China has published more patents in this field annually than all other countries combined. Chinese companies like Tencent, Ping An Insurance Group, and Baidu lead in patent ownership, with U.S. tech giants such as IBM, Alphabet/Google, and Microsoft also featuring prominently. I further analyze this topic in: "WIPO Report Reveals China Leads in Generative AI Patent Race."
USPTO Issues New AI Patent Eligibility Guidance: The United States Patent and Trademark Office (USPTO) has released updated Subject Matter Eligibility Guidance, effective July 17, 2024, focusing on artificial intelligence (AI) and emerging technologies. This guidance aims to provide clarity and consistency in evaluating AI-related patent applications. Key points include:
- AI inventions are not automatically deemed abstract ideas merely because they involve mathematical concepts or computations.
- Patent claims should not be considered abstract mental processes when they contain limitations that "cannot be practically performed in the human mind."
- The guidance includes detailed examples of claims that successfully navigate the abstract idea threshold.
The USPTO will accept public comments on the guidance through September 16, 2024. I discuss this development further here: "USPTO Unveils New Guidance for AI Patent Eligibility"
July 2024 Intellectual Property Report Recap
In case you missed it, here is a video recap of our July 2024 Intellectual Property Report that looked at:
- Between a Legal Rock and a Hard Place: Balancing Foreign Law and U.S. Discovery Obligations
- $850 Million Federal Funding Opportunity Available for Methane Emission Reduction – Application Due August 26, 2024
- 2024 Intellectual Property Chambers USA, The Legal 500 US, and IAM Patent 1000 Rankings
- This Month: Our Take on AI
