Characterization of Claim Elements as “Conventional” Results in Section 101 Subject Matter Ineligibility

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In an attempt to broaden a patent’s disclosure and provide Section 112 support for features that are not explicitly disclosed within the patent’s specification (such as reagents, assays, techniques, etc.), patent applications are often drafted with boilerplate language to indicate that other “conventional,” “well-known” or “routine” features may be used. But acknowledging that features of a claimed invention are conventional, well-known or routine can be detrimental to patentability. Take the Federal Circuit’s recent decision in CareDx, Inc. v. Natera, Inc., for example, in which the court held that methods for detecting organ transplant rejection were directed to “a natural law together with conventional steps to detect or quantify the manifestation of that law.” (CareDx, Inc. v. Natera, Inc., No. 2022-1027, 2022 WL 2793597, at *8 (Fed. Cir. July 18, 2022).)

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A Recent Entrance to Copyright Protection: Can AI Qualify as an Author Under U.S. Copyright Law?

Should copyright protection be given for AI-generated inventions? Stephen Thaler, the president and CEO of Imagination Engines, thinks so.

The Complaint

In 2018, Thaler filed an application to register a copyright for an AI-generated work produced by one of his AI systems, the Creativity Machine. The work, titled “A Recent Entrance to Paradise,” is part of a series that depicts a simulated near-death experience. The U.S. Copyright Office denied Thaler’s application on the grounds that the work lacked human authorship. Last week, Thaler sued the Copyright Office, alleging that the agency’s denial of his copyright registration is an arbitrary and capricious action and not in accordance with the law. You can find the complaint here.

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Federal Circuit Hears Case on Whether an AI-Generated Invention Is Patentable

On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable.

The Patent Applications

As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an AI machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, that he filed with the U.S. Patent and Trademark Office (USPTO). After the USPTO determined that an inventor must be a natural person, thereby excluding DABUS, Thaler filed a civil action seeking review of the USPTO’s decision.

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New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO

The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal.

Prior to this clarification, the Trademark Trial and Appeal Board and the Federal Circuit required a higher showing of “clear and convincing evidence” of genericness, which conflicted with the reasonable basis standard required of other substantive refusals. Accordingly, adopting a reasonable basis standard for refusing trademark applications based on genericness ensures consistency when evaluating substantive issues. It also means there will likely be more refusals on the basis that a term is generic, so applicants need to be advised to consider the inherent distinctiveness of their proposed marks even more closely than before.

Decentralized Domains: Metaverse Land Grab

As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights.

There is a virtual land grab happening now. Some IP owners may be hesitant to take the jump, wondering how the metaverse is or will be relevant to their business; others are already investing in “goods” and services in the metaverse. And uses of cryptocurrency continue to expand (e.g., one can now buy a physical home with crypto). Many IP owners have discovered unauthorized use of their brands in the metaverse. NFTs are relevant far beyond retailers and artists. This post will focus on decentralized domain names and why trademark owners should understand what they are and perhaps even consider registering some for their brands. 

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The Federal Circuit Provides Insight on Experimental Use and On-Sale Bar

On April 29, 2022, the Court of Appeals for the Federal Circuit issued an opinion for Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., U.S. Oil Co., Inc. (2022 WL 1275697).This case touched on a number of issues, including experimental-use doctrine, on-sale bar, infringement and damages awards. In this article, we will focus on the experimental-use doctrine and the on-sale bar.

As background, Sunoco’s patents were directed to a system and method for blending butane with gasoline at a point close to an end of the distribution process – in particular, the point immediately before being distributed to tanker trucks. Accordingly, producers could blend the maximum allowable butane into each batch of gasoline based on location and time of year. Both the location and time of year were subject to certain regulatory requirements.

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Supreme Court Calls for Views of Solicitor General on Petition Involving International Reach of U.S. Trademark Law

This morning, the Supreme Court called for the views of the Solicitor General on the pending petition for writ of certiorari in Abitron Austria GmbH v. Hetronic International, Inc. In Abitron, the Court of Appeals for the Tenth Circuit allowed the plaintiff trademark owner to recover damages not only for the defendants’ sales of infringing products in the U.S., but also for the defendants’ infringing sales outside the U.S. to non-U.S. customers. Even those non-U.S. sales, the Tenth Circuit reasoned, “diverted tens of millions of dollars” of revenue “that otherwise would have ultimately flowed into the United States.”[1] The Tenth Circuit further rejected the defendants’ argument, based on Fourth Circuit law, “that the diversion-of-sales theory is inapplicable to foreign defendants.”[2]

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Third-Party Complaints Must Shift Liability—Not Defeat It

A party sued for patent infringement may seek to shift some or all of its liability through an indemnification claim. While a patent infringement defendant may seek to implead an indemnitor under Rule 14 of the Federal Rules of Civil Procedure, a recent Eastern District of Kentucky decision is a reminder that third-party complaints are limited to claims seeking to shift liability for the underlying patent infringement claim. Linda’s Leather, LLC v. Zambrano, No. 5:21-CV-046-CHB, 2022 WL 100216 (E.D. Ky. Jan. 10, 2022).

Linda’s Leather, LLC, accused Victor Zambrano of patent infringement. Zambrano subsequently filed a third-party complaint against Linda Scott, the sole member of Linda’s Leather and identified as the sole inventor on the asserted patents. Zambrano asserted four declaratory judgment claims in his third-party complaint, stating that the patented inventions were a result of work done by Scott for Zambrano, making him at least a joint inventor on the patents, that his products did not infringe, and, in the alternative, that the patents were invalid and that he had a license. Each was dismissed.

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World IP Day – A Day To Celebrate Youth-Led Creativity

World Intellectual Property Day is again upon us. While last year’s theme focused on IP for small businesses, the focus this year is on celebrating youth-led innovation and creativity. With the increased consumption of media and the ease of creating and publishing content on various social media platforms, the time couldn’t be better for such a celebration.

Today’s youth are increasingly creating IP-protected content. Some platforms count youth, even those as young as age 7, as their biggest earners: They have built followings through content creation, created brands and then further leveraged the value already created to extend their brands into merchandising and non-fungible tokens, for example. But whether they understand their rights – what rights they have and what rights they can and often do sign away – is a different story. This is reason enough to dedicate this year’s World IP Day to helping young people find out how IP rights can support their goals. That way, they understand the rules that allow them to leverage their content into profit.

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New Combined Petition Option for the Expanded Collaborative Search Pilot Program – Is It Worth Implementing Into Your International Patent Portfolio Strategy?

Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual property (IP) partner office granting only 400 petitions per year. The new combined petition option (and the original petition option) offers an easy path to expedite initial examination of a patent application under “special” status without incurring government fees or fulfilling other requirements under 37 CFR § 1.102.

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