intellectual property review—updates and changes from 2020

Cosponsored by the Intellectual Property Section

Friday, February 19, 2021 9 a.m.–1:35 p.m.

4 General CLE credits

Intellectual Property Review—Updates and Changes from 2020

iiIntellectual Property Review—Updates and Changes from 2020

INTELLECTUAL PROPERTY REVIEW—UPDATES AND CHANGES FROM 2020

PLANNING COMMITTEE

Ian Gates, Dascenzo Gates Intellectual Property Law PC, PortlandKelly Lusk, Dunn Carney LLP, Portland

Parna Mehrbani, Tonkon Torp LLP, PortlandMark Wilson, Klarquist Sparkman LLP, Portland

OREGON STATE BAR INTELLECTUAL PROPERTY EXECUTIVE COMMITTEE

Mark W. Wilson, ChairChristopher D. Erickson, Chair-Elect

Parna A. Mehrbani, Past ChairCassandra L. Mercer, Treasurer

Kelly R. Lusk, SecretaryBryan D. BeelAlicia M. BellSean Clancy

Daniel L. EvansKimberly Nicole Fisher

Tomas Gomez-ArosteguiAndrew J. Harrington

Somya KaushikKevin S. Ross

P. McCoy SmithMarie A. Weiskopf

The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification of these materials.

Copyright © 2021OREGON STATE BAR

16037 SW Upper Boones Ferry RoadP.O. Box 231935

Tigard, OR 97281-1935

iiiIntellectual Property Review—Updates and Changes from 2020

TABLE OF CONTENTS

Schedule. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . v

Faculty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . vii

1. Presentation Slides: Trademark 2020 Update . . . . . . . . . . . . . . . . . . . . . . . 1–i— Kelly Lusk, Dunn Carney LLP, Portland, Oregon

2. Presentation Slides: 2020 Patent Law Review. . . . . . . . . . . . . . . . . . . . . . . 2–i— Alexa Johnston, Klarquist Sparkman LLP, Portland, Oregon— J. Christopher Carraway, Klarquist Sparkman LLP, Portland, Oregon

3. Presentation Slides: What Did I Miss? 2020: A Copyright Year in Review. . . . . . . . 3–i— Ryan Mauck, Mauck Law, Bend, Oregon

4. Presentation Slides: The Intersection Between Artificial Intelligence and Intellectual Property: What You Should Know. . . . . . . . . . . . . . . . . . . . . . . 4–i— Helen Fengling Li, Intel Corporation, Santa Clara, California— Philip Pedigo, Intel Corporation, Hillsboro, Oregon

ivIntellectual Property Review—Updates and Changes from 2020

vIntellectual Property Review—Updates and Changes from 2020

SCHEDULE

9:00 Trademark Law ReviewF Federal casesF Trademark Trial and Appeal Board proceedingsKelly Lusk, Dunn Carney LLP, Portland

10:00 Transition

10:05 Patent Law UpdateF Relevant patent decisions from the Supreme Court and federal circuitsF Pending Supreme Court casesF Developments at the Patent OfficeAlexa Johnston, Klarquist Sparkman LLP, PortlandJ. Christopher Carraway, Klarquist Sparkman LLP, Portland

11:05 Break

11:15 What Did I Miss? A Copyright Year in ReviewF Copyright Alternative in Small-Claims Enforcement ActF Protecting Lawful Streaming Act of 2020F New case law—Skidmore v. Led Zeppelin, Georgia v. Public.Resource.Org Inc., Cohen v.

G&M Realty LP, McGucken v. NewsweekF The new Group Registration for Short Online Literary Works applicationF New feesRyan Mauck, Mauck Law, Bend

12:30 Transition

12:35 The Intersection Between Artificial Intelligence and Intellectual Property: What You Should KnowF Overview of AI and IP protectionF Patent protection of AI and inventorshipF Copyright protection of AI and authorshipHelen Fengling Li, Intel Corporation, Santa Clara, CaliforniaPhilip Pedigo, Intel Corporation, Hillsboro

1:35 Adjourn

viIntellectual Property Review—Updates and Changes from 2020

viiIntellectual Property Review—Updates and Changes from 2020

FACULTY

J. Christopher Carraway, Klarquist Sparkman LLP, Portland. Mr. Carraway focuses his practice exclusively on intellectual property litigation, representing clients in federal courts nationwide. He has particular experience litigating patents involving computer software, computer hardware, video game technology, and e-commerce. Mr. Carraway is a member of the Federal Circuit Bar Association and the American Intellectual Property Law Association. He is a regular speaker on patent law topics. Mr. Carraway is admitted to practice in Oregon, Washington, and Montana and before the United States Supreme Court.

Alexa Johnston, Klarquist Sparkman LLP, Portland. Ms. Johnston’s practice includes all areas of intellectual property law, with a focus on the preparation and prosecution of patent applications. She represents a broad range of clients and industries, including mechanical and electromechanical devices, medical devices and related delivery systems, laboratory and diagnostic equipment, processes and manufacturing equipment, and consumer products. She was a Justice Joseph Story Intellectual Property Law Fellow from 2015 to 2017.

Helen Fengling Li, Intel Corporation, Santa Clara, California. Ms. Li is Senior Patent Counsel at Intel Corporation. She has extensive experience in developing and managing patent portfolio and counseling technical and business teams.

Kelly Lusk, Dunn Carney LLP, Portland. Ms. Lusk focuses on all aspects of the acquisition, protection, enforcement, monetization, and litigation of trademarks, patents, and copyrights, including licensing, litigation, and prosecution. She is a member of Dunn Carney’s Business Team. She is a certified licensing professional and member of the Licensing Executive Society. She is admitted to prosecute patent applications before the U.S. Patent and Trademark Office, and she is licensed to practice law in Oregon and Colorado.

Ryan Mauck, Mauck Law, Bend. Mr. Mauck advises clients with a dual emphasis on art and entertainment work and dispute resolution, including a wide variety of litigation and arbitration matters. He has represented clients in state and federal lawsuits, appeals, mediations, arbitrations, and administrative law proceedings. Mr. Mauck is admitted to practice in California and Oregon.

Philip Pedigo, Intel Corporation, Hillsboro.

viiiIntellectual Property Review—Updates and Changes from 2020

Chapter 1

Presentation Slides: Trademark 2020 UpdateKelly Lusk

Dunn Carney LLPPortland, Oregon

Chapter 1—Presentation Slides: Trademark 2020 Update

1–iiIntellectual Property Review—Updates and Changes from 2020


1–1Intellectual Property Review—Updates and Changes from 2020

Trademark 2020 Update

February 19, 2021 | Portland, Oregon

The U.S. Supreme Court held the trademark, BOOKING.COM, is not generic.

• The Justices rejected the bright line rule proposed by the USPTO.

• USPTO had proposed a per se rule which would render any mark comprised

of GENERIC.TLD as intrinsically generic and therefore unregistrable.

• The Supreme Court held that the proper test is whether consumers

perceive the GENERIC.TLD as a generic term of a source identifier.

U.S. Supreme Court: USPTO v. Booking.com



The U.S. Supreme Court held a party is not precluded by claim preclusion from

raising defenses submitted in an earlier litigation where the subsequent lawsuit

relates to different conduct and/or claims.

• Multiple litigations between the Parties

• 2003 Litigation - Settlement Agreement Releasing Claims Between the

Parties

• 2005 Litigation - Lucky asserted a defense that the 2003 Settlement

Agreement’s Release of Claims Asserted by Marcel

• 2011 Litigation and U.S. Supreme Court Ruling – claim preclusion did not

apply because the lawsuits did not have a “common nucleus of facts.”

U.S. Supreme Court: Lucky Brand v. Marcel Fashions

The U.S. Supreme Court held willfulness is not required for disgorgement of

profits.

• The Court found significant Section 15 U.S.C. § 1125(a) silence as to

willfulness when compared to other sections of the Lanham Act.

• However, the Court noted that the defendant’s mental state is highly

important to consider when deciding whether to award profits.

U.S. Supreme Court: Romag Fasteners v. Fossil



The Federal Circuit rejected USPTO’s bright line rule that a “color mark which is

not combined with a distinctive well-defined shape, pattern or other distinctive

design is not inherently distinctive.”

Federal Circuit: In re Forney Industries

The Second Circuit overturned summary judgment in favor of Tiffany.

• The Appellate Court overturned a summary judgment win in favor of

Tiffany, which awarded over $21,000,000 for trademark infringement.

• The Second Circuit found that there were triable issues of facts in the

following aspects of the litigation: (1) three of the contested likelihood of

confusion factors – actual confusion, Costco’s bad faith, and sophistication

of the consumers; (2) Costco’s fair use defense; and (3) the counterfeit

claim.

Second Circuit: Tiffany and Company v. Costco



NOTABLE TTAB DECISIONS IN 2020

The Board held that laches and acquiescence barred Plaintiff’s petition to cancel

Defendant’s mark.

• Marks at Issue: Defendant’s BROOKLYN BREW SHOP & Design and

Plaintiff’s BROOKLYN and BROOKLYN BREWERY.

• Parties had previously corroborated on beer-making kit.

• Plaintiff was aware of Defendant for at least four years.

TTAB: The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC



The Board reversed Examining Attorney’s refusal to register on the Supplemental

Register.

TTAB: In re Medline Industries, Inc.

The Board held an oral intra-family license with informal control sufficient to

establish the licensee as a related company.

TTAB: Sock It To Me, Inc. v. Aiping Fan



• FDCA prohibits “[t]he introduction or delivery for

introduction into interstate commerce of any food to which

has been added … a drug or biological product for which

substantial clinical investigations have been instituted and

for which the existence of such investigations has been made

public ….” 21 U.S.C. §331(ll).

• General Rule: Registration generally will not be refused

based on unlawful use in commerce unless either (1) a

violation of federal law is indicated by the application record

or other evidence, or (2) when the applicant's application-

relevant activities involve a per se violation of a federal law.

TTAB: In Re Stanley Brothers Social Enterprises

TTAB: In re MK Diamond Products, Inc.

The Board affirmed a Section 2(e)(5) refusal to register the product configuration mark

shown below, for "circular saw blades for power operated saws," finding the proposed mark

to be de jure functional. Alternatively, the Board also agreed with the USPTO that Applicant

MK Diamond failed to carry its “unusually high burden” of proving that the configuration has

acquired distinctiveness.



TTAB: Wirecard AG v. Striatum Ventures B.V.

Abandonment occurs when “use [of a mark] has been discontinued with intent

not to resume such use. Intent not to resume use may be inferred from

circumstances,” and that “[n]onuse for 3 consecutive years shall be prima facie

evidence of abandonment."

The presumption of abandonment shifts the burden of production to the party

contesting the abandonment claim.

However, burden of persuasion always remains with the claimant.

TTAB: Société des Produits Nestlé S.A. v. CándidoViñualesTaboada

Proving Bona Fide Intent: A business plan developed two years after the filing of an application and lists obtaining a registration is insufficient to prove bona fide intent.



TTAB: In re Team Jesus LLC

Failure to Function as a Mark: The Board pointed out once again that "[m]atter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark."

TTAB: In re Vox Populi Registry Ltd.

“Despite applicant’s attempts to use .SUCKS in the manner of a source-identifier, "the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark."



TTAB: In re Tapio GmbH

The Board held that Tapio to be primarily merely a surname under Section

2(e)(4). The Board refused to adopt applicant's proposed standard requiring

"celebrity status," "national notoriety," or "significant media attention" in order

to establish that a surname, although not common, has sufficient public

exposure to be deemed primarily merely a surname under Section 2(e)(4).

Questions?

Email: [email protected]

Phone: 503-417-5519

Chapter 2

Presentation Slides: 2020 Patent Law ReviewAlexa Johnston

Klarquist Sparkman LLPPortland, Oregon

J. Christopher CarrawayKlarquist Sparkman LLP

Portland, Oregon

Chapter 2—Presentation Slides: 2020 Patent Law Review




2020 Patent Law Review

Presented by:

February 19, 2021CHRIS CARRAWAY and ALEXA JOHNSTON

Overview

1. 2020 Case Law Developments

2. Pending Supreme Court Cases

3. Developments at the Patent Office

2



Overview




3

Thryv v. Click-to-Call (U.S. April 20,2020) (7-2)

Section 315(b):An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Section 314(d):The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

4

Cuozzo (2016): § 314(d) precludes review of institution decision and “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review”

Issue: Appealability of IPR institution decisions



Thryv v. Click-to-Call (U.S. April 20,2020) (7-2)

Holding (7-2, maj. of 5): Cuozzo controls; time bar of § 315 is “closely tied” to “the decision to initiate inter partes review”

Dissent (Gorsuch, joined in parts by Sotomayor): Attempts to limit judicial review should be strictly construed.

5

C.R. Bard (Fed. Cir. Nov. 10, 2020)

6

Issue: Does printed matter have patentable weight when it is not functionally related to other claim elements?

Fact(s): Claims require the presence of a radio-graphic marker identifying the claimed port as power-injectable. Bard argued that the printed matter added new functionality to the port because it makes the port “self-identifying” and that the physician performs the step “based on” such identification.



C.R. Bard (Fed. Cir. Nov. 10, 2020)

7

Claim 1:

Holding: The printed matter has no functional weight because it is not structurally or functionally related to the claimed feature; nonetheless, the claims are patentable because not solely directed to the printed matter.

Section 101 and the Alice TestAlice Test:

1. Are the claims “directed to” a law of nature or natural phenomenon? (i.e., do they claim the discovery of the natural phenomenon itself?)

2. If yes, do the limitations of the claim apart from the natural phenomenon “transform the nature of the claim into a patent-eligible application”?

35 U.S.C. § 101:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.



Biogen (Fed. Cir. Sept. 28, 2020)

Issue: Is a recombinant version of a naturally occurring product made by a new process patent eligible under 35 USC §101?

Fact(s):• Claims directed to a method of treatment by administering a recombinant polypeptide

related to human interferon-β (IFN-β).• Natural, human produced interferon was prior art except that it was not produced by

the process described in the claim.

Holding:• The process by which a product is made has no patentable weight unless it affects the

structure of the product.• The recombinant nature of the product alone cannot confer novelty.

9

Illumina v. Ariosa (Fed. Cir. March 17, 2020; Modified August 3, 2020)

Issue: Can method claims that exploit a natural phenomenon be patent eligible?

Fact(s): Claims are directed to a method of preparing DNA fragments that increase the relative ratios of maternal DNA and cffDNA in the sample.

Holding:• Claims directed to a method “that exploits the natural phenomenon” can be patent

eligible. • The claimed methods achieve more than simply observing that cffDNA is shorter, they

include steps that change the DNA ratios in the composition such that it is different from what occurs in nature.

10



Illumina v. Ariosa (Fed. Cir. March 17, 2020; Modified August 3, 2020)

American Axle (Fed. Cir. May 8, 2020)

Issue: Are claims “directed to” a natural law (Hooke’s law) if they recite a result without reciting a particular way the result is achieved?

Fact(s):• Claim language= “tuning at least one liner to attenuate at least two types of vibration

transmitted through the shaft member”• D.Ct. held that the claim amounted to merely instructing one to apply Hooke’s law to

achieve a desired result (attenuation) without providing a particular way to do so.

12



American Axle (Fed. Cir. May 8, 2020)

Holding:• Nothing in the claim qualifies as an

“inventive concept” to transform the claim into patent eligible subject matter.

• Claiming a desired functional result without explaining how to do it is not sufficient to serve as an inventive concept.

13

Egenera (Fed. Cir. Aug. 28, 2020)

Issue: Does judicial estoppel prevent a previously removed inventor from being re-added using 35 USC § 256(b)?

Fact(s):• Egenera sued Cisco for infringement. Cisco filed an IPR. Egenera separately

petitioned the PTO to remove an inventor to get around prior art cited in the IPR.• “logic to modify” in the claim was interpreted as means-plus-function corresponding

to a tripartite LAN structure.• D. Ct. found that the removed inventor had been the one to invent the tripartite

structure and that Egenera was judicially estopped from re-adding the removed inventor.

14




15

§ 256(b)PATENT VALID IF ERROR CORRECTED.—The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.


Holding:• “Error” in § 256(b) includes all mistakes—both honest and dishonest.• Judicial estoppel did not apply because Egenera’s earlier position in removing the

inventor was not ‘clearly inconsistent’ with their later position that he should be included.

• D. Ct’s interpretation that “Logic to modify” triggers 112(6/f) interpretation was correct because the phrase does not amount to “sufficient structure” for performing the function.

Takeaways:• If using 112(6/f) limitations, make sure listed inventors include inventors of any of

the ‘how’ steps included in the specification.

16



Bio-Rad (Fed. Cir. August 3, 2020)

Issue: Can a comparable license theory of reasonable royalty damages insulate the patentee from doing an apportionment analysis?

Fact(s):• Bio-Rad sued 10X Genomics for infringement of 3 patents. Jury found infringement for

all 3 patents.• Bio-Rad argued that apportionment wasn’t necessary because under its comparable

license theory the royalty rate in the comparable license was applied to the entire revenue of the product comparable to the accused product.

17

Bio-Rad (Fed. Cir. August 3, 2020)

Holding: • Fed. Cir. vacated the judgement of infringement on 2 of 3 patents, but affirmed the entirety

of the jury’s award—24 million in damages.• The jury’s verdict and instructions made clear that the award wasn’t divvied up by patent.• “No blanket rule of quantitative apportionment in every comparable license case.”

18



GlaxoSmithKline (Fed. Cir. Oct. 2, 2020)

Issue: Can the maker of a drug induce infringement if they do not state the infringing use on their label?

Fact(s):• Patent claimed method of using carvedilol to treat congestive heart failure. Teva applied

for ANDA approval of a generic carvedilol, specifically omitting that use from its original application. Teva marketed their generic product as an equivalent of the branded product.

• Cardiologists testified that they knew the various uses of the generic before FDA required Teva to amend its label.

19

GlaxoSmithKline (Fed. Cir. Oct. 2, 2020)

20

Holding:• “When the provider of an identical product knows of and markets the same

product for intended direct infringing activity, the criteria of induced infringement are met”

• Marketing as an equivalent to the branded product implied the same potential uses.

Dissent: Skinny labels were designed specifically so that generic drugs could be marked for only non-infringing uses. No evidence found that Teva actually caused infringement via it’s label.



Eagle Pharma (Fed. Cir. May 8, 2020)

Issue: When does the disclosure/disclaimer rule bar infringement under the Doctrine of Equivalents (DOE)?

Fact(s):• Claim required “propylene glycol”; defendant’s drug used ethanol. • Patent owner argued that ethanol was equivalent• Patent described ethanol as an alternative to propylene glycol, but it was used in a

different embodiment (not what was claimed)

Holding: Described but unclaimed alternatives (even in the background and alternate embodiments) cannot be equivalents

21

Two Cases on Patent Venue

22

Patent Venue Statue (28 U.S.C. § 1400(b)

Any civil action for patent infringement may be brought in the judicial district:

[a] where the defendant resides, or

[b] where the defendant [i] has committed acts of infringement

and[ii] has a regular and established place

of business.

“Reside” Until 2017: personal jurisd’n

“Reside” Now: incorporation



In re: Google LLC (Fed. Cir. Feb. 13, 2020)

Issue: Is defendant’s server hosted in a third party’s datacenter sufficient as a “regular and established place of business” (REPB)?

Google: Several Google Global Cache (GGC) servers (local caches for Google’s data) were installed at ISP datacenters (not Google datacenters).

Holding:• REPB: “generally requires regular, physical presence of an employee or other agent of the

defendant conducting the defendant’s business at the alleged ‘place of business’”• Agent Activity: excludes “activities, such as maintenance, that are merely connected to, but

do not themselves constitute, the defendant’s conduct of business in the sense of production, storage, transport, and exchange of goods or services”

23

Valeant (Fed. Cir. Nov. 5, 2020)

Issue: Where do “acts of infringement” occur for Abbreviated New Drug Application (ANDA) claims brought pursuant to the Hatch-Waxman Act?

Facts:• Mylan incorporated in West Virginia, submitted ANDA from there• Valeant sued in N.J., alleging that venue was proper because Mylan was “likely to sell the

generic product in New Jersey”

Holding: • Act of Infringement = submitting the ANDA to the FDA• Venue proper where defendant both has REPB and submitted the ANDA

• Not in all future locations of distribution of the generic product• Future questions: Where preparation acts occurred? Where ANDA received?

24



Samsung (Fed. Cir. February 4, 2020)

Issues:1. Can the PTAB cancel claims challenged in an IPR for indefiniteness (35 U.S.C. § 112)? 2. Can the PTAB cancel claims under 35 U.S.C. § 102 (anticipation) or §

103(obviousness) if the claims are indefinite?

Facts:• In IPR, Samsung challenged claims under 35 U.S.C. §§ 102-103• PTAB: declined to decide whether claims were unpatentable because it concluded

that the claims were indefinite• Samsung: PTAB should have either cancelled the indefinite claims or assessed them

for anticipation/obviousness25

Samsung (Fed. Cir. February 4, 2020)

26

Holdings:

1. PTAB lacks power to cancel claims for indefiniteness. IPRs only provide that claims can be cancelled under 102 or 103 grounds (35 USC § 311(b)).

2. If PTAB finds claims indefinite, it may or may not compare claims to prior art:• If PTAB “cannot ascertain the scope of a claim with reasonable certainty for

purposes of assessing patentability,” then should decline• If claims can be construed (but are still indefinite), PTAB may be able to apply

claims to prior art (e.g., IPXL indefiniteness)



ABS Global, Inc.(Fed. Cir. January 6, 2021)

Issue: Does an IPR petitioner have standing to appeal an IPR decision by PTAB after a final, not appealed judgment of non-infringement in district court?

27

D. Court

PTAB

Complaint

IPRPetition

FWD

SJ-NI

No Appeal

Appeal

ABS Global, Inc.(Fed. Cir. January 6, 2021)

28

Holding: • Challenger failed to establish that it had standing to appeal IPR decision.

• Challenger did not contend it had any concrete plans for a different product that might infringe.

Takeaway: If appealing an IPR loss where standing may be in question, argue in alternative for vacatur of PTAB FWD in event you are found to lack standing.



Overview




29

Arthrex v. Smith & Nephew (Cert. Granted Oct. 13, 2020)

Issue: Are Administrative Patent Judges (APJs) of the PTAB appointed in a Constitutional manner?Facts:• APJs are appointed by Sec Commerce in consultation with PTO Director. • They serve on panels of (typically) three, deciding IPRs and other patent challengesFederal Circuit:• Because of a provision restricting their removal, APJs are “principal officers,” who

the Appointments Clause (II.2.2) requires to be appointed by the President and confirmed by the Senate, not “inferior officers”

• To remedy, Fed. Cir. severed portion of Patent Act restricting removal of APJs, thereby making them inferior officers.

• Vacated 100+ decisionsPossible Outcomes: Status quo, mild annoyance, or chaos.30



Minerva Surgical v. Hologic, Inc. (Cert. granted Jan. 8, 2021)

Issue: Is an assignor of a patent (or privy) estopped from raising an invalidity defense?Fact(s):• Inventor assigned patent rights then left and founded Minerva. • Hologic (assignee) sued Minerva for infringement• Minerva filed IPR• District court granted summary judgment that assignor estoppel precluded any

invalidity challenge by Minerva• PTAB canceled claims during IPR for unpatentability • Fed Cir. found assignor estoppel properly precluded validity challenge in district court

litigation but not in IPR proceeding• Cross cert petitions: one granted one deniedPrediction: Amici mostly opposing assignor estoppel; S.Ct. threw out licensee estoppel

31

Other Potential Cases

American Axle Mfg. v. Neapco Holdings

Issue: Is the claim “directed to” a natural law (Hooke’s law)?

Fact(s): Claiming a desired result without explaining how to do it when the desired result is a natural law, means the claim is directed to the natural law.

Notes: This may be the vehicle that the Supreme Court uses to address 101. Federal Circuit voted 6-6 not to hear the case en banc.

32

Idenix Pharma. v. Gilead Sciences

Issue: Do genus claims that encompass a large genus meet the enablement requirement?

Fact(s): Fed. Cir. ruled patent was invalid because it didn’t enable a person to make/use invention. Found non-enablement because the patent claims a genus that describes thousands of compounds, each of which would have to be screened.

Notes: Supreme Ct. may decline to take this case because it is deep in the weeds of patent law.



Overview




33

PTAB: Discretionary Denial in Post-Grant Proceedings

Apple v Fintiv (PTAB March 20, 2020)

Issue: When should the PTAB deny institution based on parallel D. Ct. litigation?

Fintiv Factors:1. whether the district court likely to grant a stay (or already has);2. proximity of D. Ct. trial date to PTAB’s projected deadline for a final decision;3. investment in D. Ct. proceeding by the court and the parties;4. overlap of issues;

[NOTE: stipulation by petitioner may address concerns of duplicative effort]5. whether both PTAB and D. Ct. proceedings involve the same parties;6. other circumstances, including the merits and delay by petitioner.

34



PTAB: Final Rule On Institution Of Trials

Published December 9, 2020Effective For All Petitions Filed On Or After January 8, 2021

• Eliminates presumption that genuine issues of fact resolved in petitioner’s favor at the institution stage

• New Rule: the Board will consider all evidence presented (including any testimony submitted by Patent Owner) in determining whether petitioner has shown a reasonable likelihood of establishing unpatentability

35

PTAB: Final Rules On Motions To Amend

Published December 21, 2020Effective For All Petitions Filed On Or After January 20, 2021

• Burdens:• PO burden to show satisfaction of statutory and regulatory requirements• Petitioner burden to show unpatentability of any substitute claims

• Board, in “interests of justice,” may exercise discretion to decide MTA based on “readily identifiable and persuasive evidence of record”• Must give parties an opportunity to respond• Interests of justice a big factor; provides leeway when adversarial process

falters, e.g., petitioner stops litigating IPR due to settlement

36



Consolidated Appropriations Act (COVID Relief Bill)

• Biological Product Patent Transparency

• Requires manufacturers of approved biological products to disclose and list any patents covering those products with the FDA.

• Similar to the Hatch-Waxman act requirements for small-molecule drugs.

37

COVID-19-Related Rule Changes

• All PTAB proceedings conducted remotely.

• Prioritized Examination for COVID-19-related application filed by small and micro-entities.

• Fee waivers: Patent owners who were unable to reply to certain communications in time can petition to revive an abandoned application without needing to pay the fee.

• Does not grant wavier/extension of dates set by statute

38



COVID-19-Related Rule Changes (Cont.)

• Waiver of Original Handwritten Signature Requirement• Previously a ‘wet’ signature was required for certain documents (relating to

practicing before the USPTO, disciplinary proceedings, or payments via credit card), now a copy of a handwritten signature of an S-Signature that meets the requirements of 37 CFR 1.4(d)(2) can be used.

39

USPTO Director

• Director Iancu resigned on January 20, after serving since 2017.

• Drew Hirshfield currently interim USPTO Director.



Questions?

Thank You

Chapter 3

Presentation Slides: What Did I Miss? 2020: A Copyright Year in Review

Ryan MauckMauck Law

Bend, Oregon

Chapter 3—Presentation Slides: What Did I Miss? 2020: A Copyright Year in Review




WWhhaatt DDiidd II MMiissss??

2020: A Copyright Year in Review

22002200:: AA CCooppyyrriigghhtt YYeeaarr iinn RReevviieeww

New Statutes• CASE Act• Protecting Lawful Streaming

Act of 2020

New Copyright Rules and Regs• The GRTX application

New Caselaw• Skidmore v. Zeppelin• Georgia v.

Public.Resource.Org• Cohen v. G&M Realty LP• McGucken v. Newsweek• Corbello v. DeVito



CCAASSEE AAcctt –– CCooppyyrriigghhtt SSmmaallll CCllaaiimmss CCoouurrtt

Creates Copyright “Small Claims Court” (Copyright Claims Board)

Three copyright experts sit as judge/jury

Infringement, Dec Judgment, DMCA Claims

Voluntary Process

Streamlined Procedures

- Coming Spring/Summer 2022 -

CCAASSEE AAcctt –– CCooppyyrriigghhtt SSmmaallll CCllaaiimmss CCoouurrtt

Limited to Small Claims

Damages Caps

$30,000 total

$15,000 / $7,500 statutory damages per work

No attorneys’ fees or costs except for “bad faith” cases

Capped at $5,000



PPrrootteeccttiinngg LLaawwffuull SSttrreeaammiinngg AAcctt ooff 22002200

Pirate Streaming Services Are Now Felons Applies to “Digital Transmission Services”

Criminal Intent – primary purpose is to stream without permission

Penalties

Up to 3 years in prison

5 years for pre-release works

10 years for subsequent acts

Not applicable to internet providers, individuals using legit DTS.

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New Group Application For Short Internet Literary Works

• Max. 50 posts over 3 calendar months

• 50 - 17,500 Words

• Originally published online

• Only covers text (no photos, podcasts, vlogs)

- Available Now -



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Did Jimmy Page Steal Stairway to Heaven?

The Long and Winding Road to No…

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Why Do We Care?

Limited Scope of Pre-’78 Music Copyrights

Clarified Methodology for Copyright Infringement

No More “Inverse Ratio” Rule

Confirmed Which Musical Elements Are Protected



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Can The Government’s Annotations Be Copyrighted?

The Government Edicts Doctrine:

Officials empowered to speak with the force of law cannot be the

authors of the works they create in the course of their official duties

Does Doctrine extend to works that lack the force of law?

5:4 – Yes, it does.

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5Pointz Art Center and an Act of “Pure Pique and Revenge

Photo courtesy of Ezmosis via Wikimedia Commons



CCoohheenn vv.. GG&&MM RReeaallttyy LLPP

The VARA Gets Teeth

VARA’s Recognized Stature Determined By Art Community

VARA Extends to Street Art/Temporary Works

Affirmed $6.75 Million Award

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Instagram Infringement (Or Not)

Is Embedding an Instagram Photo Permitted?

April – SDNY finds implied sublicense to Marshable

June – SDNY finds no implied sublicense to Newsweek

Instagram: We don’t give automatic sublicenses



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Biographies Are Not Fiction

Jersey Boys and its source material

No copyright protection for historical facts

“Feature, not a bug” – biographers get “incomplete” protection

“Asserted Truths’ Doctrine” – no changing your story

WWhhaatt DDiidd II MMiissss??

2020: A Copyright Year in Review

Mauck Lawwww.maucklaw.com

[email protected]

Chapter 4

Presentation Slides: The Intersection Between Artificial Intelligence and Intellectual

Property: What You Should KnowHelen Fengling Li

Intel CorporationSanta Clara, California

Philip PedigoIntel CorporationHillsboro, Oregon

Chapter 4—Slides: The Intersection Between Artificial Intelligence and Intellectual Property




THE INTERSECTION BETWEEN ARTIFICIAL INTELLIGENCE AND

INTELLECTUAL PROPERTY: WHAT YOU SHOULD KNOW

Helen Li and Philip PedigoFebruary 19, 2021

2/19/2021 Helen Li & Philip Pedigo 1

Agenda• Overview of AI and IP Protection• Patent Protection of AI and Inventorship• Copyright Protection of AI and Authorship




32/19/2021

AI IS EVERYWHERE

Helen Li & Philip Pedigo

IP Protection of Ai Innovations

IP Conundrum

AIInnovation




What is ai Many different definitions and subject to change in the

future “Software and/or hardware that can learn to solve complex

problems, … undertake tasks that require human-like …, cognition, planning, learning, communication, or physical action” (NIST)

“Computer functionality that mimics cognitive functions associated with the human mind (e.g., the ability to learn)” (IBM, etc.)

AI = Capability of a machine to mimic intelligent human behavior

AI inventions can be categorized as follows: New types of AI techniques (e.g., a new neural network

structure of an improved ML model or algorithm) New applications of existing AI techniques (e.g., to a field

other than AI)

52/19/2021

Machine Learning

DeepLearning

Artificial Intelligence


Ai patent landscapeAI Patent Filings Publications - nearly 340,000 between 1960 and early

2018 Annual filing rate - grew by a factor of 6.5 between 2011

and 2017Autonomous Driving Patents: Filings – a 42% increase from 2007 to 2018 5,500+ filings in 2016 alone

62/19/2021 Helen Li & Philip Pedigo



Inventing aiMLex Summary Patent filings with USPTO –

more than doubled each year between 2002 and 2018• 2002 – 30,000 patent filings• 2018 – 60,000 patent filings

Top 5 US patent owners from 1976 to 2018• IBM, Microsoft, Google, Hewlett

Packard and Intel

72/19/2021

IBM Microsoft Google HP Intel

46,752

22,067

10,928 7,072 7,021

Top 5 U.S. AI Patent Owners-at-Grant, 1976-2018

Source: Number 5, October 2020, Office of the Chief Economist, USPTO


Patent protection and inventorship

Patent

82/19/2021

Inventor?




Ai inventorship – “dabus” applications In 2019, two patent applications were filed in US, UK and EU

patent offices naming AI system “DABUS” as inventor.

DABUS = the Device for the Autonomous Bootstrapping of Unified Sentience

DABUS alleged to have invented two concepts without human input or intervention: a food container a flashing light

Two designs by DABUS represent a landmark challenge to the international patent regime


Ai cannot be an inventor“an inventor designated in the application has to be a human being, not a machine”EPO

However, EPO accepted that DABUS created the inventions in the patent applications.

only a natural person can be an inventorUKIPOUKIPO also accepted that DABUS created the inventions in the patent

applications.DABUS has no rights to the invention.

an inventor is limited to a “natural person,” i.e., machines are not inventors.USPTO

The USPTO decision does not address what, if any, legal protections are available for AI created inventions.




Who is the inventor U.S. patent law basic requirements

• An inventor must contribute to the conception of an invention.

• Conception “is the complete performance of the mental part of the inventive act.”

35 U.S.C. § 115 – inventor must be a natural person• Current AI characterized as a tool to aid natural

person in the inventive process Joint inventors

• Joint inventors must be “aware” of each other’s work on the invention.

• Merely adding routine knowledge or skill is notan inventive contribution

11

A I

Helen Li & Philip Pedigo2/19/2021 11

Action plan• Human inventor contribution

– Identify human inventors to name in patent application– Claim subject matter invented by human inventors– Clarify who owns what in R&D environments– Document the analysis used to determine inventorship

• Alternative IP protection– Copyright– Trade secret




Are AI-generated works copyrightable?

MusicBot Dylan

PaintingsThe Next

Rembrandt

JournalismTencent’s

Dreamwriter


Are AI-generated works copyrightable?• Under the Copyright Act, copyright

protection is available for an: –“original work of authorship fixed in a tangible

medium of expression”

• The Copyright Act, however, does not define “authorship.”




The Human authorship requirement

• U.S. courts and the Copyright Office have recognized the human authorship requirement for over 140 years.– The copyright law only protects “the fruits of intellectual labor” that

“are founded in the creative powers of the mind.” Trade-Mark Cases, 100 U.S. 82, 94 (1879)

– “The U.S. Copyright Office will register an original work of authorship, provided that the work was created by a human being.” See U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 306 (3rd ed. 2017) (emphasis added).


Framing the inquiry

The wrong question: Can AI be an author?

A better question: Can we establish a human author?




Establishing authorship – mapmaker + Assistant

• Mapmaker who directs another to give concrete form to the mapmaker’s conception is the author.

• Andrien v. S. Ocean Cty. Chamber of Commerce, 927 F.2nd 132 (3d Cir. 1991)


Establishing authorship – Photographer + camera

• Photographs that represent “original intellectual conceptions of the author” are copyrightable

• Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58-59 (1884)




Establishing authorship – Human + Crested Macaques (Naruto)

• Naruto may be adorable but he cannot be an author because he is not human.

• Naruto v. Slater, 888 F.3d 418 (9th Cir. 2018)


AI and Copyright – hypothetical 1• Fact Pattern

–Slater knows the macaques are observing him

–Positions the camera; frames the shot

–Selects lighting and perspective –Waits for curious Naruto to

walk into the setup • Questions

–Who is the author? – Is the photograph copyrightable?




Action Plan• Human authorship contribution

– Identify human authors who contributed to the work–Did humans and AI co-produce the work? Document the human

contribution–Did humans select the work (discernment in selection)? –Document the analysis used to determine authorship

• Alternative IP protection–Patent–Trade secret


Thank you


intellectual property review—updates and changes from 2020

Documents