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The new en banc petition in Thaler v. Vidal offers potential for future development on the law of invention and inventorship. 

by Dennis Crouch

Hi, my name is Dennis, I am a natural person, a human being, an individual.  But, I also think of myself as a collective–trillions of cells and other biologic matter, only some of which expresses “my” DNA; a host of personalities all housed within a thick skull.

In my view, it is unquestionable that AI regularly contribute to inventive concepts so substantially as to be named joint-inventors alongside their human counterparts, if it were permitted.  Many of us are hung-up on the notion that inventorship requires “conception in the mind”–a feat perhaps beyond any computer today.  But conception is not a requirement for joint inventorship. Cases like Dana-Farber v. Ono help us understand how it might work. In Dana-Farber case, some of the joint inventors (our AI equivalents) provided data and analysis, but then the actual “conception” was done by a third party after receiving the data inputs.  Even though only one of the inventors actually “conceived,” the Federal Circuit held that all three should be listed as inventors because each made substantial contributions that led to the conception. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020). See Toshiko Takenaka, Unravelling Inventorship, 21 Chi.-Kent J. Intell. Prop. 71 (2022).

The key legal justification for excluding AI is the traditional human-only rule of inventorship. Although the Patent Act does not expressly declare “inventors-must-be-humans” or “no-robots,” since 2011 it has stated that inventors are “individuals.”

(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

(g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

35 U.S.C. § 100(f)/(g) (2011).  Earlier this summer, the Federal Circuit sided against Dr. Stephen Thaler on this issue. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Thaler has been attempting to seek patent protection for two inventions created by DABUS, his AI computer. Id. In the case, the USPTO admitted (for the purposes of the litigation) that DABUS had conceived of an invention.  Thus, the only question on appeal was whether the USPTO acted appropriately in denying patent protection solely based upon the fact that the purported inventor is non-human. Id.

The court sided with USPTO’s no-patent stance. It held that US Patent Laws require listing of an inventor, and that inventor must be a “natural person” — i.e., human being. Although the court cited several statutory justifications for its decision, the key factor came from the definitions found in 35 U.S.C. § 100 that identify inventors as “individuals.” The court concluded that the term “individual” is best interpreted as limited to a human being.  Thaler, 43 F.4th  at 1211.  One quirk of this ruling is that this ‘individual’ definition was added quite recently as part of the 2011 America Invents Act and nothing in the legislative history indicates an intent to use the term to exclude AI from inventorship rolls.

Through his attorney (Professor Ryan Abbott), Thaler has now petitioned the Federal Circuit for en banc rehearing on the following question:

Whether an artificial intelligence can be an inventor for purposes of patent law, which implicates the most fundamental aspects of patent law, namely, the nature of inventorship and therefore whether AI discoveries can be patented.

Thaler en banc petition. The petition makes three key complaints against the petition, which I paraphrase below:

  1. The panel selectively quoted from dictionaries for its conclusion that individuals are always human.  The better definition of individual is a “distinct, indivisible entity”–a definition that would include an AI-inventor.  I might ask, if an AI is not an individual, does that mean it is a collective?
  2. The panel unduly disregard of the Patent Act’s promise of patent rights regardless of “the manner in which the invention was made” and without limiting eligibility scope only to areas contemplated by Congress. See 35 U.S.C. 103 (“Patentability shall not be negated by the manner in which the invention was made”); 35 U.S.C. 101 (“Whoever invents or discovers any new and useful process …”); Diamond v. Chakrabarty, 447 U. S. 303 (1980) (that the patent system allows for “inventions in areas not contemplated by Congress.”).
  3. In the face of evolving technology that redefines the potential of inventorship, the panel failed to interpret the statute “in light of [the] basic purpose” of the Patent Act.  Quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975).

Id.  In some ways, Judge Stark’s opinion reads like a district court applying the law handed-down rather than an appellate court with a larger role of considering meaning and importance of ongoing precedent. Perhaps this makes sense, Thaler was the first precedential opinion authored by Judge Stark’s since joining the Court of Appeals earlier in 2022.  Judge Stark was previously a district court judge in Delaware for more than a decade.

I have always seen the final sentence of Section 103 as an important declaration of patent law policy that goes beyond simply obviousness doctrine. “Patentability shall not be negated by the manner in which the invention was made.” One particular bit of the Federal Circuit decision that gets in my craw is the court’s statement limiting that provision as only applicable in the obviousness context. In my view, the statement should be applicable in the Thaler analysis as well as in other contexts, such as patent eligibility. I’m planning a subsequent post that will focus more on this issue.

If my calculations are correct, any Amicus Brief in support of Thaler (or Support of Neither Party) would need to be filed by Oct 3 (absent extension). 

The absence of a dissent in the original opinion makes the odds of overturning the panel decision quite low–Thaler would need seven of the remaining nine active judges (assuming that none of the original three change their minds).  But, Thaler may still appreciate an outcome where one or two judges offer some additional commentary that would then serve as fodder for the upcoming petition for writ of certiorari.

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Conditional Claim Limitations

by Dennis Crouch

In re Google, 22-1611 (Fed. Cir. 2022) (non-precedential order)

In Arthrex, the Supreme Court rewrote the Patent Act, charging the USPTO Director with authority to review final written decisions stemming from inter partes and post grant review proceedings (IPR/PGR).  One open question is the Director’s role in mill run patent applications that have been rejected by the Board. There are two particular actions that Directors have taken in recent decades:

  1. Create a stacked rehearing panel that overturns the prior PTAB panel decision. This approach is typically taken when the Director wants to make a precedential statement on some matter of law or procedure.
  2. If the party appeals, admit to the Federal Circuit that the PTAB erred and seek remand to reconsider the PTAB panel decision.  This second path is the approach taken here for Google.

Google’s pending Application No 15/487,516 claims video processing method using adaptive composite intra-prediction.  In its decision, the Board construed three key  claim limitations as “conditional limitations.”  The Board generally gives no patentable weight to conditional method steps in the anticipation/obviousness analysis.  See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential).  Google filed its notice of appeal to the Federal Circuit and must have had some discussions with the Solicitors office because the agency filed its request for remand even before Google filed an opening brief.

I have included the claim below, but the basic setup is that the claim includes the following stylized step:

A method comprising …

in response to a determination that a first block is available, generate a pixel value …

The basic question here is whether this claim limitation requires any action.  The PTAB read it as merely conditional — effectively replacing it with the following:

A method comprising …

if the system determines that a first block is available, then generate a pixel value …

The Board explained its position that the claims did not recite a step of “determining” that the first block exists and so it is not required by the claims.

[W]e understand the phrase “in response to a determination that” a condition exists to be equivalent to a recitation of “if” that condition exists because claim 1 does not affirmatively recite a step of determining that the first prediction pixel is available prior to reciting the step that is performed in response to—i.e., when or if—such a condition exists.

PTAB Appeal 2020-005221.  The PTAB then applied Schulhauser to conclude that “the Examiner need not present evidence of the anticipation of any of the disputed conditional method steps, because they are not required to be performed under the broadest reasonable interpretation of the method steps recited in representative independent claim 1.”  Google sought reconsideration, but the Board stuck to its original decision.

Now before the Federal Circuit, the Director has concluded that the Board erred.  Through the SG, the Director submitted an interesting reason for its determination–that a close reading of the specification shows that the first determination step is present in “every embodiment.”  Thus, according to the Director, the PTAB’s reading of the claims as conditional limitations “would be inconsistent with the specification.”

Upon review, and under the specific facts of this case, the Director acknowledges that the Board erred in designating L1 and L2 as conditional limitations governed by Schulhauser because such a reading would be inconsistent with the specification, which teaches that for every embodiment a first prediction pixel is available and a determination of whether a second prediction pixel is available is made.

Dir Motion to Dismiss.  This statement from the Director appears somewhat contrary to the usual approach of Broadest Reasonable Interpretation (BRI) which avoids importing limitations into the claims simply because they are present in each disclosed embodiment.

Google did not object to the dismissal and the Federal Circuit has ordered a remand.

One important caveat to this case — the application itself appears to still be unpublished. Thus, the information that I’m reporting comes only from public documents filed with the Federal Circuit.  I don’t have the application itself or any of the briefs filed with the PTAB.  I do have the challenged claim:

A method comprising:

generating, by a processor in response to instructions stored on a non-transitory computer readable medium, a decoded current block by decoding an encoded current block, wherein decoding the encoded current block includes adaptive composite intra-prediction, and wherein adaptive composite intra prediction includes:

in response to a determination that a first prediction pixel from a first block immediately adjacent to a first edge of the encoded current block is available for predicting a current pixel of the encoded current block:

determining whether a second prediction pixel from a second block immediately adjacent to a second edge of the encoded current block is available for predicting the current pixel, wherein the second edge is opposite the first edge; and

in response to a determination that the second prediction pixel is available, generating a prediction value for the current pixel based on at least one of the first prediction pixel or the second prediction pixel;

generating a reconstructed pixel corresponding to the current pixel based on the prediction value; and

including the reconstructed pixel in the decoded current block; and

outputting or storing the decoded current block.

Google NOA with PTAB Decisions Attached.

Schulhauser involved a heart-monitoring method claim with the following conditional step:

triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;

Ex parte Schulhauser, APPEAL 2013-007847, 2016 WL 6277792 (Patent Tr. & App. Bd. Apr. 28, 2016) (precedential).  The panel concluded that step in conditional form can be ignored for anticipation purposes.  The Board relied particularly on the Federal Circuit’s non-precedential decision in Cyber settle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) where the court explained that: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”  Id.  Schulhauser distinguished this method-claim from  system claims that include the same conditional functionality since the system “still requires structure for performing the function should the condition occur.” Id.  The MPEP now reflects this same approach:

The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.

MPEP 2111.04 (II).  The Board has relied upon Schulhauser in hundreds of decisions.  However, there appears to be some ongoing debate within the PTAB about the scope of the case, with a number of cases having dissents on this point.  See., e.g., Ex Parte Botman, APPEAL 2021-004052, 2022 WL 4093710 (Patent Tr. & App. Bd. Sept. 2, 2022); Ex Parte Gopalan, APPEAL 2017-007009, 2018 WL 2386111 (Patent Tr. & App. Bd. May 21, 2018); Ex Parte Erhart, APPEAL 2019-004505, 2021 WL 195811 (Patent Tr. & App. Bd. Jan. 8, 2021).

In the appeal, Google was represented by Jonathan Tietz and Andy Dufresne (Perkins).  The per curiam order was issued by Judges Lourie, Chen, and Stark.

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Prior Articles:
Supreme Court: Judicial Stock Ownership and the Requirements of Recusal
Despite “Winning” its Appeals, Sawstop still denied Type-C Patent Term Adjustment
Canons and Canards: Recreating Prior Art
Patently-O Bits and Bytes by Juvan Bonni
Assignor Estoppel: What did the assignor “represent” as his invention?

Happy to talk through interesting cases -- Dennis Crouch

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