Congratulations to Thomas Horstemeyer attorneys Charles Landrum, Senior Counsel, Ivona Relja, Associate, and Paul Joseph (PJ) Spina, Associate, who were invited to join the Atlanta Intellectual Property Inn of Court.
The Atlanta IP Inn of Court is a prestigious organization for intellectual property professionals with a core mission to promote ethics, civility, and legal skills within the community. Established in 2010, the organization fosters relationships between IP professionals across industries including law firms, academia, and judicial. The Atlanta IP Inn of Court is a member of both the American Inns of Court and the Linn Inn Alliance of National Intellectual Property Inns.
Our three attorneys join Thomas Horstemeyer’s Managing Partner, Andrew Crain, who is an existing member of the organization.
To learn more about the Atlanta IP Inn of Court, click here.
On April 18, the Federal Circuit Court released its decision in Recentive Analytics, Inc., v. Fox Corp., Fox Broadcasting Company, LLC, and Fox Sports Productions, LLC. In Recentive, the patents claimed the use of machine learning to solve problems confronting broadcasters, such as the Defendants (collectively “Fox”), related to determining the scheduling of live events and optimizing network maps, which determine the programs or content displayed by a broadcaster’s channels within certain geographic markets at particular times. The Federal Circuit held that certain types of machine learning patents are per se patent-ineligible. However, the Court also noted that the decision does not apply to all machine-learning patents.
This decision arose from an appeal of a District Court decision on a motion to dismiss by Fox. In that decision, the District Court ruled that the four patents asserted by Recentive Analytics were not direct to patent-eligible subject matter. The Federal Circuit affirmed the decision of the District Court, stating that “today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
Many have questioned whether the holding in Recentive heralds the end of patenting machine learning related inventions. However, Recentive is consistent with previous decisions by the Federal Circuit on subject-matter eligibility. As an example, independent claim 1 of U.S. Patent No. 10,911,811 (one of the four patents asserted) recites:
A computer-implemented method for dynamically generating a network map, the method comprising:
receiving a schedule for a first plurality of live events scheduled to start at a first time and a second plurality of live events scheduled to start at a second time;
generating, based on the schedule, a network map mapping the first plurality of live events and the second plurality of live events to a plurality of television stations for a plurality of cities,
wherein each station from the plurality of stations corresponds to a respective city from the plurality of cities,
wherein the network map identifies for each station (i) a first live event from the first plurality of live events that will be displayed at the first time and (ii) a second live event from the second plurality of live events that will be displayed at the second time, and
wherein generating the network map comprises using a machine learning technique to optimize an overall television rating across the first plurality of live events and the second plurality of live events;
automatically updating the network map on demand and in real time based on a change to at least one of (i) the schedule and (ii) underlying criteria,
wherein updating the network map comprises updating the mapping of the first plurality of live events and the second plurality of live events to the plurality of television stations; and
using the network map to determine for each station (i) the first live event from the first plurality of live events that will be displayed at the first time and (ii) the second live event from the second plurality of live events that will be displayed at the second time.
In this claim, if one were to replace the bolded phrase “machine learning technique” with “human,” the entire method could be implemented by a person using pen-and-paper. The computer generally, and machine learning specifically, is only recited as the mechanism or vehicle by which the abstract idea is applied or implemented. Viewed another way, it could be said the claim anthropomorphizes the computer, which is often an indication that the claim may be too general to be patent eligible. It is therefore unsurprising that this claim was found to be subject-matter ineligible by the court, as well as claims with similar scope in the other asserted patents.
There are several conclusions for clients to consider moving forward.
First, inventions that use or rely on machine learning are still patentable. The Federal Circuit limited their holding only to patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied. So, the door is still open to machine learning patent applications that disclose, and claim, improvements to the machine learning models being used. Moreover, other tests for subject-matter eligibility, such as the machine-or-transformation test, are still good law and therefore offer alternative avenues for proving patent-eligibility.
Second, patents that simply claim the application of a business method or other abstract idea using a machine learning model are unlikely to be granted or to survive motions to dismiss in litigation. This is consistent with prior case law on subject matter eligibility. For example, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court stated that it is not enough to render a claim patent-eligible by stating an abstract idea and adding the words “apply it with a computer.” The Federal Circuit’s decision in Recentive is consistent with the holding in Alice – holding the claims that recite an abstract idea applied with a machine learning model to similarly be patent ineligible.
How significant these consequences from Recentive prove to be will remain to be seen and will probably be resolved through litigation over the next few years. We predict that machine learning patent applications will require a great degree of specificity in the claim language and the detailed description in order to be granted.
Thomas | Horstemeyer has robust experience in patent writing and patent prosecution. For questions and guidance, email us at info@thip.law.
One of our clients recently asked us to provide the Pros and Cons of filing multiple, more detailed patent applications to cover a particular technology as opposed to filing a single, more general patent application. An overview of our answer is provided below.
Patents can be used to dissuade and/or legally prevent competitors from copying a business’ products. If done correctly, this can help create an “economic moat” around the company’s business, which should result in the company being able to charge more for its services, resulting in higher profit margins.
Including more detail in patents will almost always result in stronger patent protection. The additional detail allows us to draft a stronger series of strategic fallback positions in case our broadest claims are rejected during negotiations with the patent office. This can significantly increase the chances of a particular patent application being allowed. These types of fallback positions are also often crucial at trial or in related settlement discussions since, if a patent’s broadest high-level claims are invalidated, more technically focused claims will often still cover the product or service at issue.
Having multiple patents that cover different detailed aspects of a particular technology also typically provides stronger patent protection than a single patent covering the relevant technology at a higher level. This is because it generally costs more to review and challenge more focused patents. Also, because the patent office fees and legal fees associated with challenging the validity of patents are incurred on a per-patent basis, it becomes significantly more expensive to attack a patent portfolio if multiple patents are involved. As an example, the patent office fees for attacking a patent via an Inter Partes Review (IPR) are currently over $50k, and the average total cost of an IPR is currently about $350k – $500k per patent, with no guarantee of a positive outcome.
Also, having multiple applications pending on related technologies can provide options for effectively switching patent examiners during patentability negotiations if those negotiations become difficult, which can help avoid the need to potentially appeal an incorrect decision. This can significantly reduce the overall time and cost associated with obtaining a patent.
A good patent portfolio can be used as a marketing tool for potential investors or purchasers of a company. If constructed properly, the patent portfolio should methodically highlight the company’s current proprietary technologies and provide a roadmap for the unique aspects of the company’s upcoming products and features.
Providing more technical detail and separating key inventive concepts into separate patent applications (generally with separate descriptive titles) helps emphasize the key features that the company has exclusive rights in. We have seen situations where a company’s IP has taken a back seat in the valuation process because it wasn’t presented effectively in negotiations. Having detailed and effectively categorized and labeled patents can help avoid this.
A strong patent portfolio can help defend a company from potential patent lawsuits in two ways. First, any disclosure of a particular technology made in a particular patent application should block competitors from patenting that technology. This reduces the overall risk of patent lawsuits. Second, having strong patents in place often prevents competitors from initiating patent infringement lawsuits since they may be facing counterclaims for patent infringement in response to initiating the lawsuit.
Including more technical detail in patent applications will help to more effectively block competitors from obtaining similar patents of their own. It will also generally produce stronger patents, which should provide an additional deterrent effect to potential patent lawsuits.
Patents can often be used to generate additional revenue through licensing. Having stronger, more detailed patents should increase the chances of licensing opportunities.
The most significant downside to providing additional detail in patent applications is cost, both in terms of legal fees and the cost of using internal resources to help prepare and review the various patent documents. With costs in mind, we would always recommend a steady, methodical, and balanced approach to developing a strong patent portfolio. We also do our best to reduce inventor time in reviewing patent documents.
Another downside relates to public disclosure. Because patents are public documents, in most situations, anything that we include in them will be made public. There is an often-overlooked option to have U.S. patent applications not publish unless the corresponding patent is granted, which can address this concern to some extent, but it’s always important to make sure that we’re comfortable publicly disclosing any information that we include in patent documents.
In summary, if funding is available and disclosing detailed information regarding the related technology isn’t an issue, we typically recommend filing multiple, more detailed patent applications to cover a particular technology. This approach typically provides a company with stronger offensive and defensive patent protection and – especially in the case of startup companies – can often have a meaningful impact on a company’s valuation.
Last month, the Federal Circuit released its en banc decision in LKQ Corporation v. GM Global Technology Operations, LLC. The following day, the USPTO released its updated guidelines for how examiners should evaluate design patents in view of the shift in the law. Although much ink has been spilled on the topic by patent bloggers, it will take some time to determine the ultimate ramifications of the decision.
The “executive summary” of the decision is that the Federal Circuit changed the law regarding obviousness with respect to design patents, throwing out the Rosen-Durling test that had been used for ~50 years and adopting the Graham factors used for utility patents in its place. We predict that this will make design patents both harder to obtain here in the US moving forward and also easier to invalidate design patents that have already been granted in a post-grant proceeding.
Procedurally, this decision arose out of an inter partes review (IPR) proceeding before the USPTO’s Patent Trials and Appeals Board (PTAB) involving a design patent. No ruling was made by the Federal Circuit on the obviousness of the design patent itself. Instead, the case was remanded to the PTAB for further proceedings in view of the decision. However, as a fundamental reinterpretation of the law, the case has immediate effect and general applicability – applying to all pending design patent applications as well as those design patents already granted.
For background, design patents in the US have been evaluated under a separate test than utility patents when it comes to obviousness – the Rosen-Durling test. That test required for obviousness rejections of a design patent that (1) the primary reference must be “basically the same” as the challenged design claim and (2) any secondary references be “so related” to the primary reference that the features in one would suggest application of those features to the other. This means that the bar for an obviousness rejection of a design patent is quite high under the previous Rosen-Durling test – almost as high as the bar for an anticipation (i.e., “novelty”) rejection since there is only a hair’s breadth between “the same” and “basically the same.” This is one of the reasons why design patents have historically been relatively easy to acquire compared to utility patents.
The holding of this case is that design patents must be evaluated using the same factors as utility patents (the Graham factors) when it comes to obviousness, making the standard for design patents consistent with KSR and other recent decisions. The Graham factors include identifying the scope and content of prior art (where analogous art had not previously been a consideration for design patents), determining the differences between the prior art and the design claim (casting aside the previous similarity requirement), the level of ordinary skill in the art (which had not previously been a consideration for design patents), and whether one would have been motivated to combine the prior art to create the same overall visual appearance (which had not previously been a factor). Although unstated, this holding may also overrule some recent Federal Circuit case law regarding what qualifies as prior art for a design patent (e.g., In re Surgisil), which were decided while the Rosen-Durling test was still the law for evaluating the obviousness of a design patent.
There are several potential consequences for clients to consider moving forward. How significant these consequences prove to be will remain to be seen, and probably resolved through litigation over the next few years.
First, design patents will likely be harder to obtain in view of the prior art. This is because the universe of available prior art to sustain a rejection is greatly expanded. Moreover, examiners are allowed to consider reasons for combining references beyond whether secondary references are “so related” to the primary reference that the features in one would suggest application of those features to the other.
Second, design patents will be easier to invalidate post-grant for the same reasons they will likely be harder to obtain. This is a sword that cuts both ways. On the one hand, clients can invalidate design patents asserted against them more easily, which means clients are at a lower risk from design patent infringement lawsuits generally. On the other hand, it would make it harder for clients to assert any of their design patents against potential infringers if they desired to do so. Whether this is a net positive or a net negative probably depends on the client and its litigation profile.
Earlier this month, the USPTO issued a notice of proposed rulemaking (NPRM) to add a new requirement to terminal disclaimers to overcome nonstatutory double patenting rejections. Specifically, if the proposed rule were to be adopted, filing of a terminal disclaimer would obligate the applicant to agree that the patent would become unenforceable if any claim in any other patent linked by a terminal disclaimer were held to be invalid or unpatentable over the prior art. The rule would only apply to terminal disclaimers filed on or after the effective date of any final rule. Comments must be submitted by July 9, 2024, to ensure consideration.
If passed, the rule would potentially have some interesting consequences for clients with respect to their continuation practice because a continuation application would only be as enforceable as the weakest claim in the family. Accused infringers could, for example, defend themselves against a patent infringement lawsuit by attempting to invalidate a broader claim in a related, but unasserted, patent. Accordingly, broadening continuations could be riskier to pursue if there are plans to assert any of the patents in the patent family.
The net benefit of this rule appears to be in favor of accused patent infringers, to the detriment of patent applicants. However, we have been advising our clients on how they could minimize the overall impact of this revised terminal disclaimer rule if it were to be implemented.
The USPTO has announced its Notice of Proposed Rulemaking (NPRM) for raising fees in 2025. The NPRM retains most of the fee adjustments that were first proposed in 2023, with only a few changes made in response to input from the Patent Public Advisory Committee (PPAC). The fees are significant and can greatly impact some patent filing and prosecution strategies. The changes in the USPTO fees are briefly described below.
The NPRM does respond to feedback provided by the PPAC in 2023, but the fee increases generally remain unchanged. Although the USPTO is required to accept and respond to properly submitted comments from various stakeholders through the Federal eRulemaking Portal by June 3, 2024, we would expect that the USPTO is unlikely to make any significant changes given the minimal changes that were made in response to feedback from the PPAC.
The new and increased fees are likely to impact patent filing and prosecution strategies for all of our clients. However, different clients will be impacted in different ways. We invite all of our clients to arrange for a discussion with us on how to reduce or minimize the impact of the increased and new fees on their budgets.
ATLANTA, GA—Atlanta-Based IP boutique Brient IP Law recently joined Thomas|Horstemeyer, bringing with them former partners from Alston & Bird, Kilpatrick Townsend and Virginia-Based CowanPerry. Brient IP served its clients for almost 15 years, often being called on to protect the most important IP assets of Fortune 500 and well-funded startup companies.
The addition will enhance Thomas|Horstemeyer’s systems/software patent practice, expand its mechanical patent group, and add over 3,000 worldwide marks to its already robust trademark practice. With this addition, Thomas|Horstemeyer continue to provide a full spectrum of services in the areas of patents, trademarks, copyrights, trade secrets, and related litigation in support of the growing Atlanta tech scene.
“The Atlanta technical sector continues to grow at a rapid pace, and we’re growing along with it. We are excited to welcome this talented group of attorneys and look forward to having them continue to grow their practice at our firm as they serve clients in the Atlanta area and others across the country,” said Andrew Crain, Managing Partner at Thomas|Horstemeyer, LLP.
This development marks a significant milestone in Atlanta’s IP landscape. Adding a marquee player like Brient IP gives Thomas|Horstemeyer even greater depth and reach to develop and implement unique intellectual property strategies for the most complex technologies and business environments.
With a proven track record for protecting and defending intellectual property assets, Thomas|Horstemeyer services clients from Fortune 100 companies to universities, start-ups, and sole inventors around the world. Their attorneys have expertise in various industries and technologies, including chemical, biotech, electrical, software, and many more. They will continue to service clients from their Windy Hill headquarters.
The Intellectual Property Owner’s Association (the “IPO”) recently published a white paper on patenting artificial intelligence (“AI”) inventions, entitled the “AI Patenting Handbook.” David Pointer, a partner at Thomas Horstemeyer, is a contributing author for the white paper. Specifically, David Pointer co-authored the portion of the white paper discussing district court decisions related to AI matters from various geographic regions.
David Pointer is a member of the firm’s litigation and patent prosecution groups. David has experience in preparing and prosecuting patent applications involving numerous technologies, including blockchain, AI, networking, and wireless communication, Internet of Thing (IoT) devices, wireless power transfer systems, control systems, optical systems, data acquisition systems, battery management, and integrated circuits. David has unique district court experience due to his internships with the Honorable Jane Triche-Milazzo of the U.S. District Court of the Eastern District of Louisiana and with the Honorable Kenneth Hoyt of the U.S. District Court of the Southern District of Texas. David’s experiences makes him uniquely qualified to co-author this white paper and spread this information with members of the IPO.
The white paper is available to IPO members on the IPO Law Journal. You can learn more about David Pointer on his profile.
The USPTO Has Issued New Guidelines for Assessing Enablement in View of the Supreme Court Decision in Amgen Inc. v. Sanofi et al.
On January 10, 2024, the United States Patent and Trademark Office (USPTO) published Guidelines for assessing enablement in view of the Supreme Court’s 2023 decision in Amgen Inc. et al. v. Sanofi et al., 143 S. Ct. 1243 (2023) (hereafter Amgen). The Guidelines are intended to guide both Examiners and the public on how to interpret and implement the Amgen opinion. The conclusion is that the USPTO will continue to use the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (hereafter Wands) factors to ascertain whether the amount of experimentation required to enable the full scope of the claimed invention is reasonable. In other words – status quo.
In Amgen, the Supreme Court unanimously held that several of Amgen’s patent claims to a class of antibodies were invalid for lack of enablement. While Amgen’s patents specifically identified 26 amino acid sequences for antibodies that would block or inhibit PCSK9, the Court held that Amgen had not enabled “the entire genus” of antibodies that “bind to specific amino acid residues on PCSK9” and “block PCSK9 from binding to [LDL receptors].” According to the Court, Amgen attempted to claim an entire class of compounds by their function, namely antibodies that bind to the “sweet spot” of PCSK9 thereby inhibiting it from binding to LDL, while only describing 26 amino acid sequences in its specification.
The Federal Circuit had previously identified factors in Wands that can be used to assess whether the specification provides sufficient enablement to make and use the full scope of the claimed invention. While the Supreme Court did not expressly use these Wands factors in Amgen, the Guidelines concluded that they are still “probative of the essential inquiry in determining whether one must engage in more than a reasonable amount of experimentation.”
The Guidelines highlighted several Federal Circuit decisions preceding and following the Amgen decision, showing how the Wands factors were used. Notably, in all of these cases the claims were found to not be enabled. This is where the Guidelines fall short since it instructs the Examiner to apply the Wands factors without giving any examples where antibody claims would in fact be enabled. Therefore, questions still remain as to what amount of disclosure is adequate for enablement under Amgen.
On December 13, 2023, the USPTO announced the creation of two new regional offices – one in Atlanta and the other in Stafford County, New Hampshire. The expansion of the USPTO to include regional offices offers a number of benefits to examiners, practitioners, and inventors alike. Moreover, the selection of Atlanta underscores the city’s significance as the technological hub of the Southeast. With multiple R1 research universities, patent-intensive industries, and business incubators in Atlanta, the outreach and the support provided by the USPTO’s new regional office is only expected to accelerate the virtuous cycle of innovation occurring in the Southeast.
To date, there have been relatively few patent lawsuits relating to artificial intelligence. With the emergence of various artificial-intelligence-based software entering the market, it will be interesting to see how courts interpret artificial-intelligence-based patents and the issues that emerge from the court proceedings. The following set of artificial-intelligence-related cases are from district courts of different geographic locations.
Health Discovery Corp. v. Intel Corp.
577 F. Supp. 3d 570 (W. D. Tex. 2021)
In this case, Intel filed a motion to dismiss Health Discovery Corp (HDC)’s complaint on the grounds that the claims are invalid under 35 .U.S.C. § 101. HDC’s complaint alleges that Intel infringed HDC’s patents related to using learning machines, such as Support Vector Machines (SVM), to identify relevant patterns in datasets and to identify a selection of features within the datasets that best enable data classification. The asserted patents were directed to feature ranking, selection, and reduction using SVM to facilitate a Recursive Feature Elimination (RFE) process on a large dataset.
Under step one of the Alice test, the Court reasoned to follow the guidance provided from prior cases that analyzed patents with similar subject matter. After selecting two similar cases, the District Court asserted that the specification merely describes improving a mathematical analysis used by conventional systems. The specification explained how conventional systems reduce a feature size in data sets by ranking and eliminating features according to correlation coefficients. Similarly, the asserted patents involve ranking and eliminating features using SVM-RFE, which the court characterized as a purportedly novel but mathematical technique. As such, the District Court reasoned that the claims are directed to an abstract mathematical concept of SVM-RFE.
Under Alice step two, the District Court stated that HDC’s complaint failed to sufficiently allege an inventive concept. The Court stated that improving data quality was an unpersuasive argument, and the Court also considered the fact that the claims were not limited to a particular field of invention. Accordingly, the Court granted the motion to dismiss under 35 U.S.C. § 101.
Pavemetrics Sys. v. Tetra Tech
2021 U.S. Dist. LEXIS 117651 (C.D. Cal. 2021)
In this case, Tetra Tech moved for a preliminary injunction to enjoin Pavemetrics from importing, using, and selling their “Laser Rail Inspection System” (LRAIL) products on the grounds of patent infringement. Tetra Tech’s ‘293 patent generally relates to a three-dimensional railway track inspection and assessment system that collects and processes data during and/or after a high speed assessment of a railway track. In 2018, Pavemetrics began developing AI-based deep learning algorithms using convolutional neural networks to identify defects in railway tracks in their LRAIL products.
Ultimately, the District Court concluded that Tetra Tech could not demonstrate a likelihood of success for a preliminary injunction because of substantial questions regarding infringement and invalidity. With regard to infringement, the Court noted that substantial questions remain because Tetra Tech relies on the “gradient neighborhood” limitation being reflected on a prior design of Pavemetrics’s LRAIL product from two years prior to the issuance of the asserted patent. At that time, Pavemetrics significantly changed how LRAIL processed data when it switched to detecting missing features using deep neural networks. The Court agreed that Tetra Tech had not provided sufficient evidence to indicate Pavemetrics’s “deep neural network” design within the current product meets the “moving gradient neighborhood like a sliding window over the 3D elevation data using the processor,” as recited in claim 1.
With regard to invalidity, the Court determined there are substantial questions because Pavemetrics alleged that one of its prior designs anticipates claim 1 of Tetra Tech’s ‘293 Patent. For these reasons, the Court denied the motion for preliminary injunction.
IBM v. Zillow Grp., Inc.
2022 U.S. Dist. Lexis 41831 (W. D. Wash. 2022)
In this case, Zillow filed a motion to dismiss IBM’s claims of patent infringement on the grounds of ineligible subject matter under 35 U.S.C § 101. The ‘676 patent generally relates to a method of annotating response sets via an adaptive algorithm and the supplied annotations are used for a visualization system that present resource response results. In the specification, the ‘676 patent states that the “system discovers contexts and context attributes among users which can be used predictively,” by using “a highly specialized and optimized combination of supervised & unsupervised logic along with” automated entry of learned results. Col. 19, Lines 39-44.
Although the specification of the ‘676 Patent appears to describe improvements relating to computer and/or search engine functionality, the Court focused on the subject matter recited in the claims for step one of the Alice inquiry. The Court found that the claimed subject matter was directed to an abstract idea because the claim language was result-oriented and recited a process that could be performed with a pen and paper. The claims failed to recite the inner functionality of the invention.
Under Alice step two, the Court concluded that the claims failed to satisfy the second Prong of the test for a couple of reasons. First, the specification failed to provide a description of the alleged inventive concepts offered by IBM. Second, the Court determined that the claims in the ‘676 patent do not provide a specific, discrete implementation of the abstract ideas for applying and ordering an annotation function, mapping the user context vector with the resource response set, or generating an annotated response set. Accordingly, the Court concluded the ‘676 Patent is invalid under 101 and the related patent infringement count is dismissed for failing to state a claim upon which relief can be granted.