Gibbons Law Alert

Gibbons Law Alert

Category: Patent

Artificial Intelligence System Cannot Be Listed as Inventor

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Posted in Patent / USPTO

On August 8, 2022

On Friday, the Federal Circuit held that the Patent Act requires an inventor to be a natural person, in response to a patent applicant who alleged that an artificial intelligence system was the inventor of a patent application. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). The patent applicant, Stephen Thaler, asserted that he develops and runs artificial intelligence systems that generate patentable inventions. Mr. Thaler then sought patent protection through two patent applications and listed the artificial intelligence system as the inventor. After the U.S. Patent and Trademark Office (USPTO) denied the patent applications for failure to identify a valid inventor, Mr. Thaler and the USPTO adjudicated the matter in the U.S. District Court for the Eastern District of Virginia. The District Court found that the Patent Act requires an inventor to be a natural person. Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 249 (E.D. Va. 2021), aff’d sub nom. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). In affirming the District Court’s decision, the Federal Circuit first indicated that it need not perform an “abstract inquiry into the nature of invention or the rights, if any, of AI [artificial intelligence] systems.” Rather, the court began and ended on the “applicable definition in...

Increasing Patent Damage Awards with Pre-Judgment Interest

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Posted in Licensing / Patent

On June 23, 2022

In VLSI Technology LLC v. Intel Corporation, the United States District Court for the Western District of Texas recently awarded pre-judgment and post-judgment interest on a jury’s damage award in a patent infringement case. An issue examined by the court was whether the patentee was entitled to pre-judgment interest during periods in which the patentee did not own the patent. The defendant argued that since the patentee only acquired the patent rights in December 2018 and was not formed as an entity until 2016, pre-judgment interest from 2013 would be a windfall. The court dismissed this argument and indicated that the patentee “acquired the Asserted Patents and is therefore entitled to all the rights associated with patent ownership, including the rights to collect damages and interest from infringers.” The court then awarded pre-judgment interest beginning on the date of infringement (i.e., 2013) to the date of judgment. In support of this holding, the court cited the Federal Circuit’s decision in Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1358 (Fed. Cir. 2012) stating that “award of pre-judgment interest is the rule, not the exception.” The court also noted that there was no exceptional circumstances such as an undue delay in filing the lawsuit that would warrant denying pre-judgment interest in this...

District of New Jersey Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Lack of Diligence and Timeliness in Filing Motion

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Posted in Patent

On April 29, 2022

In Razor USA LLC v. DGL Group, Ltd., the United States District Court for the District of New Jersey recently denied a defendant’s motion to amend its invalidity contentions to include an additional written description argument. The case involves utility and design patents pertaining to a hoverboard. After learning that the design patent issued with drawings had previously been rejected by the Patent and Trademark Office (PTO) (as opposed to those that the PTO later approved), the defendant sought to add an argument that the design patent was invalid pursuant to 35 U.S.C. § 112(a) for the same reasons that the PTO had previously rejected the published drawings. The defendant asserted that it learned about this “new” defense after the plaintiff’s expert stated in a declaration that he had reviewed the prosecution history of the design patent, which prompted the defendant’s own investigation of the prosecution history. In evaluating whether the defendant’s application met the requirements of Local Patent Rule 3.7, the court looked to the defendant’s diligence and the timeliness of the motion. The court concluded that both were lacking. With respect to diligence, the “dominant consideration” in the motion to amend, the court concluded that the defendant had failed to act with the requisite diligence in discovering the information it sought to add...

The Russo-Ukrainian War’s Implication on Intellectual Property Rights

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Posted in Patent / Trademarks

On April 11, 2022

Following the 2014 so-called “Ukrainian Revolution of Dignity” and the Russian Federation’s annexation of Crimea, a major escalation of the ongoing Russo-Ukrainian War occurred in 2022, culminating in the Russian invasion of Ukraine on February 24. The invasion triggered Europe’s largest refugee and humanitarian crisis since World War II, causing an unprecedented amount of human suffering and countless civilian casualties.

Court Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Failure to Show When It Could Have Discovered New Information

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Posted in Patent

On March 14, 2022

In MicroVention, Inc. v. Balt USA, LLC, the United States District Court for the Central District of California recently denied a defendant’s motion to amend its invalidity contentions to add additional written description and enablement arguments, finding a lack of diligence by the defendant. The court, which in patent cases “follows a schedule similar to that imposed by the Northern District of California,” emphasized the diligence that must be shown to warrant a party amending its invalidity contentions. Specifically, the court noted that “‘[t]he critical issue is not when [the party] discovered [the] information, but rather whether [it] could have discovered it earlier had it acted with the requisite diligence.’” (quoting Google, Inc. v. Netlist Inc., 2020 WL 1838693, at *2 (N.D. Cal. May 5, 2010)). As we recently reported, the District of New Jersey “adopted verbatim [its] Local Patent Rules from the Northern District of California.” TFH Publ’n, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361, 365 (D.N.J. 2010). The court found that one of the defendant’s proposed amendments was based on the claim construction position the plaintiff had taken during the claim construction phase of the case. However, the court recognized that the plaintiff’s claim construction had not changed since the beginning of the case and, on that basis, found that...

Expert Report Cannot Be Used for Previously Undisclosed Invalidity Theories

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Posted in Patent

On March 8, 2022

The United States District Court for the Central District of California recently granted a plaintiff’s motion to strike portions of the defendant’s expert report for the untimely disclosure of new invalidity theories that were not previously disclosed in the defendant’s invalidity contentions. In Nichia Corporation v. Feit Electric Company, Inc., the plaintiff sought to strike from the defendant’s expert report: (1) an entirely new reference; (2) two new obviousness theories based on combinations of references not included in the defendant’s final invalidity contentions; and (3) a new written description argument. In ruling, the court highlighted the district’s Standing Patent Rules’ emphasis on “early notice” of infringement and validity contentions, that amendments to contentions require diligence by the moving party and that new infringement and invalidity theories cannot be introduced through expert reports. The Standing Patent Rules that the parties were following were initially set forth by Judge Guilford of the Central District of California. It has been noted that “Judge Guilford’s Standing Patent Rules are similar to the Local Patent Rules adopted by the Northern District of California.” Mort. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1321(Fed. Cir. 2016). And, relatedly, the District of New Jersey “adopted verbatim [its] Local Patent Rules from the Northern District of California.” TFH Publ’n, Inc....

New Jersey’s Patent Filings Place It Fifth in the Nation for Innovation

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Posted in Patent / USPTO

On December 8, 2020

NJBIZ recently reported on a study from CommericalCafe that named New Jersey the fifth most innovative state based on the number of patents filed and granted in New Jersey from 1975 through 2019. Of those patents, New Jersey’s top sections were: (1) Chemistry and Metallurgy, (2) Electricity, (3) Human Necessities, (4) Physics, and (5) Emerging Cross-Sectional Technologies. New Jersey’s standing is not limited to the acquisition of patent rights, but includes the enforcement and protection of those rights as well. This year, the Administrative Office of the U.S. Courts reported that the United States District Court for the District of New Jersey ranks seventh in the nation for the number of intellectual property cases filed in the 12-month period ending on March 31, 2020. Given the importance of development and enforcement of intellectual property rights in New Jersey, Gibbons P.C.’s Intellectual Property Department, headquartered in Newark, New Jersey, is routinely called on to represent its New Jersey clients in handling both patent prosecution and litigation across a vast number of industries.

28 Days to Amend Contentions Following Disclosure of Preliminary Claim Constructions

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Posted in Patent

On August 31, 2020

In an interesting decision applying California’s Local Patent Rules, Northern District of California District Court Judge William Alsup held that “after receiving the other side’s preliminary claim construction disclosure under Rule 4-2, a party in a patent litigation must move promptly to disclose any back-up contentions it may wish (or eventually wish) to make for its infringement or invalidity case, in the event the other side’s claim construction is thereafter adopted or else any such back-up contentions will be deemed waived. Promptly means within 28 days at the latest.” Fluidigm Corp., et al. v. IONpath, Inc. at 4. Judge Alsup’s decision was his answer to “the question of the extent to which our patent local rules require infringement and invalidity contentions to set forth not only a party’s primary theory but also its backup theory in case its opponent’s claim construction prevails.” Id. at 1. In answering that question, Judge Alsup provided a brief exposition on California’s Local Patent Rules. “Before our local patent rules, parties struggled to determine the opposing party’s theory of liability via discovery requests, such as contentions interrogatories.” Id. at 6. The adoption of local patent rules “replaced the bone-crushing burden of scrutinizing and investigating discovery responses with the parties’ infringement and invalidity contentions.” In alleviating that burden, local patent rules...

Paragraph IV to Paragraph III Conversion Does Not Deprive a District Court of Subject Matter Jurisdiction in Hatch-Waxman Cases

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Posted in Patent / Pharmaceuticals

On July 7, 2020

In a significant Hatch-Waxman decision, a Delaware District Court recently denied the defendants’ motion to dismiss under Federal Rule of Civil Procedure 12(b)(1), rejecting the argument that the conversion of the defendants’ Paragraph IV certifications to Paragraph III certifications deprived the court of subject matter jurisdiction, but granted the defendants’ motion for partial judgment on the pleadings under Federal Rule of Civil Procedure 12(c). In H. Lundbeck A/S v. Apotex Inc., the defendants converted their Paragraph IV certifications for certain patents at issue to Paragraph III certifications. Under 21 U.S.C. § 355(j)(2)(A)(viii), an ANDA filer must make any one of four (I-IV) certifications for each Orange Book listed patent. A Paragraph IV certification is an ANDA filer’s statement that it intends to market its bioequivalent pharmaceutical product before the expiration of a patent listed as covering that product because the ANDA filer believes such patent is either not infringed or invalid. A Paragraph III certification is an ANDA filer’s statement that it will not market its bioequivalent product until after the expiration of a patent listed as covering that product. The Court reasoned that in a Hatch-Waxman action, subject matter jurisdiction exists when a patent owner alleges that the filing of an ANDA infringes its patent under 35 U.S.C. § 271(e)(2) and conversion from a...

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