Inventors, Not Ai-Ventors: The Patent Act Requires an “Inventor” to be a Natural Person
In Thaler v. Vidal, Appeal No. 21-2347, the Federal Circuit held that under the Patent Act , an “inventor” must be a natural person. Therefore, an AI system cannot be an inventor.
Thaler filed two patent applications with the PTO listing DABUS, an AI system, as the sole inventor. The PTO sent Thaler Notices to File Missing Parts requesting that Thaler identify valid inventors. Thaler petitioned the PTO director to vacate the Notices. The PTO denied the petitions on the ground that a machine does not qualify as an inventor. Thaler sought review, and the parties cross-moved for summary judgment. The District Court granted the PTO’s motion for summary judgement, denied Thaler’s request to reinstate the applications, and concluded that an inventor under the Patent Act must be an “individual,” which as used in the statute is a natural person.
On appeal, the Federal Circuit concluded that the Patent Act was unambiguous in that it requires inventors to be natural persons. The Federal Circuit explained that although the Patent Act does not define “individual,” the Supreme Court has stated that when used in a statute, “individual” ordinarily means a human being unless there is an indication Congress intended a different meaning. Finding no such indication, the Court concluded that the term “individual,” in the context of the Patent Act, includes only human beings. The Federal Circuit affirmed the Districts Court’s decision.
(Inventorship; Prepared by Cesar Estrada)
No Recapturing of Surrendered Patent-Ineligible Subject Matter
In Re Mcdonald, Appeal No. 21-1697, the Federal Circuit held that when applying for reissue, a patent applicant may not recapture subject matter that was intentionally surrendered to overcome a § 101 rejection.
Inventor John McDonald applied for a patent on methods and systems related to the display of search results in response to search queries. In response to a § 101 rejection, McDonald amended certain claims to include a “processor” and the rejection was withdrawn. The application ultimately issued as U.S. Patent No. 8,280,901 (“the ’901 patent”). Before the ’901 patent issued, McDonald filed a continuation with similar claims that also included the “processor” limitations and this application ultimately issued as U.S. Patent No. 8,572,111 (“the ’111 patent”). McDonald then filed a reissue application seeking to amend the claims of the ’111 patent by adding several new limitations and removing the “processor” limitations. The examiner rejected claims 1-7, 10, 12-16, and 18-38 (“the reissue claims”) as obvious and McDonald appealed to the Patent Trial and Appeal Board.
The Board entered two new grounds of rejection: first, that the reissue claims were based on a defective reissue declaration and, second, that a subset of the reissue claims also impermissibly attempted to reclaim subject matter intentionally surrendered during prosecution when the “processor” limitations were added. McDonald appealed to the Federal Circuit.
The Federal Circuit affirmed the Board’s decision. The Court applied a three-step analysis on the issue of recapture. First, it found that the subset of reissue claims under consideration were broader than the original patent claims. Second, it found that the broader aspects directly related to surrendered subject matter (i.e. methods and systems that did not use a processor). Third, it found that the surrendered subject matter had “crept into the reissue claim[s].” The Court clarified that the recapture rule is not limited to subject matter surrendered to overcome prior art rejections under 35 U.S.C. §§ 102–103, and applies equally to subject matter surrendered to overcome subject matter eligibility rejections under 35 U.S.C. § 101. The Court reasoned that the “public’s reliance interest on a patent’s public record” applies equally to subject matter surrendered to overcome rejections under any of these grounds and that the Court had never “expressly preclude[d] the application of the recapture rule to amendments made for other reasons.”
Addressing the Board’s rejection based on a defective reissue declaration, the Court held that the “the statement of error in the Reissue Declaration relates to an error that is uncorrectable by reissue.” The Court reasoned that the supposed error (inclusion of the “processor” limitations) could not be corrected without violating the recapture rule.
(Software & Information Technology, Patent Prosecution, Reissue Applications; Prepared by Logan Young)
Claim Cancellation Before Assignment Does Not Preclude Assignor Estoppel
In Hologic, Inc. v. Minerva Surgical, Inc. Appeal No. 19-2054, the Federal Circuit held that despite cancelling a claim prior to assignment, assignor estoppel still applied to bar invalidity defenses against a related claim because the assignor warranted the validity of the cancelled claim and the cancelled claim was not directed to subject matter materially broader than the related claim.
Hologic, Inc. (“Hologic”) sued Minerva Surgical, Inc. (“Minerva) for patent infringement and the district court barred Minerva’s invalidity defenses under the doctrine of assignor estoppel. The Federal Circuit affirmed the decision and Minerva petitioned the Supreme Court, requesting that the Court “discard this century-old form of estoppel.” The Supreme Court held that assignor estoppel remains a valid doctrine, but that it comes with limits, and remanded the case for the Federal Circuit to determine whether the asserted claim was “materially broader” than the claims assigned to Hologic such that assigner estoppel should not apply. On remand, the Federal Circuit affirmed upon analyzing whether (1) the inventor warranted the validity of a claim from a parent application that was cancelled prior to assignment; and (2) whether the cancelled claim was materially broader than an asserted claim.
Regarding validity, Minerva argued that the inventor had not warranted validity of the cancelled claim because it was cancelled prior to assignment. The Federal Circuit rejected this argument because the claim was cancelled “without prejudice” due to a restriction requirement. Moreover, the inventor successfully overcame the Examiner’s rejection of the claim for anticipation prior to its cancellation. Given this posture, the Federal Circuit explained that the cancellation was for reasons other than patentability and was not a concession of unpatentability. Furthermore, the Federal Circuit explained that cancellation did not nullify the claim, that it remained viable for further prosecution in a divisional application, and the inventor’s assignment conveyed rights to any divisional applications not yet filed. Thus, the cancelled claim traveled with the assignment to Hologic and its validity had been warranted by its original filing, its successful defense during prosecution, and in the inventor’s assignment stating that he had “no present knowledge from which [he] could reasonably conclude” that the assigned rights were invalid or unenforceable.
As for claim breadth, Minerva argued that the cancelled claim was “materially broader” because it was limited to a “moisture-permeable” device while the asserted claim was limited to a “moisture-impermeable” device. The Federal Circuit disagreed upon analyzing the claim language (which did not contain an express limitation), the written description (which described “moisture-permeability” only as being “preferable”), and applied the doctrine of claim differentiation to hold that the cancelled claim was not limited to “moisture-permeable” devices and instead encompassed both “moisture-permeable” and “moisture-impermeable” devices. Thus, the asserted claim was not materially broader than the cancelled claim, and assignor estoppel applied.
(Medical Devices & Procedures, Assignor Estoppel; Prepared by Nefi Oliva)