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AI-Generated Invention at the Federal Circuit

On Monday, June 6, the Federal Circuit will hear oral arguments in the pending  AI-inventorship case of Thaler v. Vidal, Appeal No 21-2347. The court does not release the identity of the individual judges until just before oral arguments, so all we (and the parties) know is that it is Panel A in Courtroom 201.

This case raises the novel legal issue of whether a patent can be obtained for an invention created by an artificial intelligence (AI) in the absence of a traditional human inventor (“AI-Generated Invention”). The United States Patent and Trademark Office (“USPTO”) and the District Court for the Eastern District of Virginia have barred such inventions from being patented. This ignores fundamental statutory and constitutional principles and also stymies innovation. While other countries are promoting the progress of science, the USPTO is belatedly adopting luddism.

Appellant’s brief.  In their responsive brief, the US narrowed the issue somewhat:

Whether the District Court correctly concluded that an artificial intelligence device comprised solely of source code cannot qualify as an “inventor” under the Patent Act, where the plain statutory language specifically defines “inventor” to be an “individual” and refers to an “inventor” using personal pronouns.

Appellee Brief.

That same panel is hearing two other IP cases:

  1. Samsung v. Dynamics, 21-2352.  PTAB sided with the patentee Dynamics.  On appeal, Samsung argues obviousness — that the Board failed to consider some aspects of the prior art and required motivation-to-combine be found in the primary reference.  Dynamics patents cover electronic emulation magnetic stripes (on, for instance credit cards).  The infringement argument is that Samsung’s digital wallet infringes. John O’Quinn (Kirkland Ellis) will argue for Samsung and Robert Morris (Eckert Seamans) for Dynamics.
  2.  In re A. Zeta S.R.L., 22-1178. Zeta is an Italian company seeking to register the mark PARMA COFFEE to be used for coffee, chocolate, tea, and other food/beverages.  Parma is a mid-sized city in Italy (200k people) and the goods in question apparently originate from Parma. The PTAB refused to register the mark — finding the COFFEE portion of the mark generic, and PARMA to be “Primarily Geographically Descriptive” under Section 2(e)(2) of the Lanham Act.  One issue here is about “origination” — the coffee is not grown in Parma but the PTO still argues that there is sufficient connection with the city (and also that Zeta waived that argument before the TTAB).  The parties waived oral arguments in the case and so it will be submitted on the briefs .





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