Patent Docs

Top Stories of 2022: #5 to #7

By Donald Zuhn –-

After reflecting upon the events of the past twelve months, Patent Docs presents its 16th annual list of top patent stories.  For 2022, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  On Monday, we counted down stories #10 to #8, and today we count down stories #7 to #5, as we work our way towards the top four stories of 2022.  As with our other lists (2021, 2020, 2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2022" on January 24, 2023 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a few of the most important stories on this year's list, can be found here.

7.  PTAB Issues Decisions in CRISPR Interferences and University of California/Berkeley Appeals to Federal Circuit

Seven years ago, the journal Science picked the CRISPR (clustered regularly interspaced short palindromic repeats) technology as its "Breakthrough of the Year," declaring that the technology had "matured into a molecular marvel."  Not surprisingly, CRISPR's status as breakthrough molecular marvel has resulted in a battle over who has the best patent position with respect to this technology.  Interferences between the Broad Institute, Harvard University, and the Massachusetts Institute of Technology (as Senior Party) and the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (as Junior Party) (No. 106,115), between Toolgen as Senior Party and the parties in Interference No. 106,115 as Junior Parties, and between Sigma-Aldrich as Senior Party and the parties in Interference No. 106,115 as Junior Parties continued to move forward in 2022.

In February, in Interference No. 106,115, the Patent Trial and Appeal Board granted priority for eukaryotic CRISPR to the Broad Institute, Harvard University, and MIT ("Broad") as Senior Party and against Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier ("CVC").  Accordingly, all of Broad's patents and applications in interference remain and CVC's applications having claims directed to eukaryotic CRISPR were finally rejected for lack of priority.  In November, CVC filed its brief on appeal to the Federal Circuit seeking to convince the Court that correction of the PTAB's decision is in order.

CRISPR interferences have now made five of our last six top stories lists, and the dispute over the protection of this technology could very well be on next year's list as well.

For information regarding this and other related topics, please see:

• "PTAB Redeclares Interference No. 106,132 and Suspends Priority Phase Proceedings," December 26, 2022
• "PTAB Decides Parties' Motions in CRISPR Interference," December 22, 2022
• "A Better, CRISPR World Assayed in The New York Times," December 13, 2022
• "Regeneron Files Amicus Brief in Support of CVC and Reversal in Interference No. 106,115*," November 16, 2022
• "Oral Arguments Scheduled in CRISPR Interferences," November 13, 2022
• "Scientists File Amicus Brief in Interference No. 106,115," November 8, 2022
• "CVC Files Appeal Brief in Interference No. 106,115," November 2, 2022
• "PTAB Renders Decisions in Interference No. 106,127," October 23, 2022
• "PTAB Renders Decisions in Interference No. 106,126," October 18, 2022
• "PTAB Suspends ToolGen Interferences," October 17, 2022
• "Oral Hearing in Interference No. 106,127," September 21, 2022
• "Oral Hearing in Interference No. 106,126," September 20, 2022
• "Oral Arguments Rescheduled in CRISPR Interferences," August 28, 2022
• "Oral Arguments Scheduled in CRISPR Interferences," August 4, 2022
• "Tell Us What You Really Think: CVC Asserts Board Decision in '115 Interference Negates Jurisdiction in Interference Nos. 106,127 and 106,132," June 9, 2022
• "Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Broad Preliminary Motion No. 3 in Interference No. 106,133," June 1, 2022
• "Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Broad Contingent Motion No. 2," May 30, 2022
• "Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Substantive Preliminary Motion No. 1 in Interference No. 106,133," May 22, 2022
• "Sigma-Aldrich Files Reply to Broad’s Opposition to Sigma's Substantive Preliminary Motion No. 1 to Deny Priority Benefit in Interference No. 106,133," May 19, 2022
• "CVC Files Reply to Sigma-Aldrich Opposition to CVC's Responsive Motion No. 1," May 16, 2022
• "Junior Party CVC Files Reply to Sigma-Aldrich's Opposition to Its Preliminary Motion No. 4," May 15, 2022
• "CVC Files Reply to Senior Party Sigma-Aldrich's Opposition to CVC's Substantive Preliminary Motion No. 3 in Interference No. 106,132," May 11, 2022
• "CVC Files Reply to Sigma-Aldrich Opposition to CVC Substantive Preliminary Motion No. 1 to be Accorded Priority Benefit," May 9, 2022
• "Senior Party Sigma-Aldrich Files Reply to Junior Party CVC'S Opposition to Its Substantive Preliminary Motion No. 1 to Change Count in Interference No. 106,132," May 8, 2022
• "Senior Party Sigma-Aldrich Files Opposition to Junior Party's Preliminary Motion No. 3 in Interference No. 106,133," May 4, 2022
• "Senior Party Sigma-Aldrich Files Opposition to Broad Contingent Motion No. 2," April 21, 2022
• "Senior Party Sigma-Aldrich Files Opposition to Junior Party Substantive Preliminary Motion No. 1 in Interference No. 106,133," April 18, 2022
• "Junior Party Broad Files Opposition to Senior Party Sigma-Aldrich's Substantive Preliminary Motion No. 1 in Interference No. 106,133," April 11, 2022
• "CVC Files Opposition to Senior Party Sigma-Aldrich's Substantive Preliminary Motion No. 1 to Change Count in Interference No. 106,132," March 27, 2022
• "Senior Party Sigma-Aldrich's Opposition to CVC's Substantive Preliminary Motion No. 4 in Interference No. 106,132," March 22, 2022
• "Senior Party Sigma-Aldrich's Opposition to CVC's Substantive Preliminary Motion No. 3 in Interference No. 106,132," March 20, 2022
• "Sigma-Aldrich Files Opposition to CVC Substantive Preliminary Motion No. 1 to be Accorded Priority Benefit," March 15, 2022
• "PTAB Holds for Broad in CRISPR Interference: The Reasoning," March 7, 2022
• "PTAB Grants Priority for Eukaryotic CRISPR to Broad in Interference No. 106,115," February 28, 2022
• "Sigma-Aldrich Files Substantive Preliminary Motion No. 2 to Remove Broad Application from Interference," February 20, 2022
• "Sigma-Aldrich Files Substantive Preliminary Motion No. 1 to Deny Broad Priority Benefit to Its Earliest-filed Provisional Application," February 16, 2022
• "Broad Files Substantive Preliminary Motion No. 3 to Designate Claims as not Corresponding to Count in Interference No. 106,133," February 13, 2022
• "Broad Files Contingent Preliminary Motion No. 2 to Designate Claims Corresponding to Substitute Count 3," February 10, 2022
• "PTAB Hears Oral Argument in Interference No. 106,115," February 7, 2022
• "Broad Files Substantive Preliminary Motion No. 1 to Substitute the Count," February 2, 2022
• "CVC Files Responsive Preliminary Motion No. 1 for Priority Benefit," January 31, 2022
• "Patent Trial and Appeal Board Set Date for Oral Hearing in Interference No. 106,115," January 30, 2022
• "Sigma-Aldrich Files Substantive Preliminary Motion 1 to Change the Count in Interference No. 106,133," January 19, 2022
• "CVC Files Substantive Miscellaneous Motion No. 4 to Add Senior Party Patents and Designate Claims Corresponding to the Count," January 13, 2022
• "CVC Files Substantive Preliminary Motion No. 3 to Substiture the Count," January 12, 2022
• "CVC Substantive Preliminary Motion No. 1 for Priority Benefit," January 10, 2022

6.  Federal Circuit Continues to Focus on Written Description

In 2017, the Federal Circuit's decision in Amgen Inc. v. Sanofi brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to monoclonal antibodies, and that decision came in at #11 on our top stories list.  Last year, the Federal Circuit issued several decisions implicating the written description and enablement requirements, and the Federal Circuit's continuing development (and limitation of) § 112 made it to #5 on our top stories list.

Last year, the Federal Circuit continued to focus on the written description requirement.  For example, in June, in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the Federal Circuit granted a panel rehearing and vacated a panel decision between these parties that had been decided in January.  In the panel rehearing, Chief Judge Moore (who dissented in January) was joined by Judge Hughes (who replaced Judge O'Malley, who left the Court in May) in vacating the January decision (over a dissent by Judge Linn, who had joined Judge O'Malley in the majority in January).  The panel majority opinion tracks the Chief Judge's dissent in the Court's earlier decision, that negative limitations do bear a burden of disclosure different from affirmative ones.  According to the Chief Judge, this burden can be satisfied, for example, by including "a reason to exclude the relevant [element]," or by including "'statements in the specification expressly listing the disadvantages of using' that element," or by distinguishing among the excluded element and advantageous alternatives.  The opinion calls "the common denominator" of all these rubrics disclosure of the element to be excluded, repeating the Chief's aphorism from her earlier dissent that "silence is not disclosure."  While not disputing the principle that "a negative limitation need not be recited in the specification in haec verba," the majority opinion asserts the need for "something" to be disclosed in the specification "that conveys to a skilled artisan that the inventor intended the exclusion, such as a discussion of disadvantages or alternatives."

For information regarding this and other related topics, please see:

• "Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)," June 21, 2022
• "Federal Circuit Denies Petition for Rehearing en Banc in Biogen Int'l GmbH v. Mylan Pharmaceuticals Inc.," March 17, 2022
• "Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)," January 4, 2022

5.  UPC Postpones Start of Sunrise Period

Last month, the Unified Patent Court (UPC) announced that the start of Sunrise Period –- when patent owners can begin to remove European patents and European patent applications from the jurisdiction of the UPC, i.e., opt-out -- was being postponed by two months from January 1, 2023 to March 1, 2023.  The UPC indicated that the initial plan called for the Sunrise Period to begin on January 1, 2023, with the Agreement on a Unified Patent Court (UPCA) coming into force on April 1, 2023.  However, following the UPC's adjustment, the Sunrise Period will begin on March 1, 2023, and the UPCA will come into force on June 1, 2023.  The UPC also noted that it "expect[s] no further delay of the start of the UPC beyond 1 June 2023."

For information regarding this and other related topics, please see:

• "UPC Postpones Start of Sunrise Period to March 1, 2023," December 12, 2022

Top Stories of 2022: #8 to #10

By Donald Zuhn –-

After reflecting upon the events of the past twelve months, Patent Docs presents its 16th annual list of top patent stories.  For 2022, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  Today, we count down stories #10 to #8, and later this week we will count down the remaining top stories of 2022.  As with our other lists (2021, 2020, 2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2022" on January 24, 2023 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a few of the most important stories on this year's list, can be found here.

10.  Federal Circuit Denies En Banc Review in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA

The 2020 decision by a divided Federal Circuit panel in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA regarding the extent to which an ANDA applicant who obtained regulatory approval under the carve-out provisions of 21 U.S.C. § 355(j)(2)(A)(viii) could be liable for inducement of infringement under 35 U.S.C. § 271(b) caused something of an uproar, leading to a panel rehearing on the matter but ultimately coming to the same conclusion.  Both decisions were issued in the face of a strong dissent by Judge Prost, in the first decision while she was Chief Judge.  In February, the Federal Circuit decided not to rehear the matter en banc, over the dissenting opinions of three of the judges (including Judge Prost).  The decision by the full Court was announced in a simple Order to that effect, noting that Judges Lourie and Cunningham did not participate in the decision.  The Order was accompanied by three written dissents:  one by Judge Prost, joined by Judges Dyk and Reyna; another by Judge Dyk writing alone, and the third by Judge Reyna.  The majority consisted of Chief Judge Moore and Judges Newman (who was the third member of the original panels), O'Malley, Taranto, Chen, and Stoll.  Provided that the panel decision does not significantly inhibit "skinny-label" practice, these issues are sure to recur and be the subject of additional Federal Circuit decisions which will make the consequences of this decision, and the Federal Circuit's decision not to review the panel opinion en banc, more evident.

For information regarding this and other related topics, please see:

• "GlaxoSmithKline LLC v. Teva Pharmaceuticals USA (Fed. Cir. 2022)," February 15, 2022

9.  New York Times Reopens Attack on U.S. Patent System

Over the years, this blog has found itself at odds with The New York Times on the issue of patenting.  See, e.g., "Anti-Patent ("Sullivan?") Malice by The New York Times," January 29, 2007; "Science Fiction in The New York Times," February 13, 2007; "The Anti-Patent Beat Goes on at The New York Times," July 1, 2007; "The Continuing Assault on Innovation at The New York Times," July 15, 2007; "New York Times to Innovation: Drop Dead," April 30, 2008; "New Attack on Patenting in The New York Times," September 7, 2008; "More Patent Nonsense from The New York Times," April 17, 2011.

In April, The New York Times published an editorial opinion entitled "Save America's Patent System," in which the paper bemoaned the purported prevalence of "bad patents" -- including "uninspiring tweaks" to existing products -- that supposedly undermine innovation.  The Times Editorial Board decided that it was time to announce that the "United States Patent and Trademark Office is in dire need of reform."  Were that the case, the Times' rhetoric would deserve serious consideration; as it is, the paper continues a history of wrongheaded, faux populist rhetoric that comes to the entirely wrong conclusion.

For information regarding this and other related topics, please see:

• "Faux-Populist Patent Fantasies from The New York Times," April 17, 2022
• "Before You Complain About So-Called Bad Patents, Read This," April 17, 2022

8.  Senator Tillis Releases Proposal to Reform 35 U.S.C. § 101

In August, Republican Senator Thom Tillis of North Carolina released a new proposal to reform the text of 35 U.S.C. § 101.  The Senator's last effort in doing so died on the vine in 2019, purportedly due to stakeholders being too far apart in their visions of what patent eligibility should be all about.  But there seems to be a renewed interest in addressing at least some of the ambiguities introduced by the Supreme Court in Alice Corp. v. CLS Bank Int'l and Mayo Collaborative Services v. Prometheus Laboratories, Inc.  Those decisions, which came down in 2014 and 2012, respectively, led to the current state of affairs in which diagnostic methods are effectively unpatentable and software patents can be invalidated based on fuzzy, conclusory reasoning.  Senator Tillis' proposed revisions to § 101 attempt to find a middle ground between varying stakeholder concerns by overruling some aspects of the Supreme Court's recent eligibility jurisprudence and codifying other aspects.  It is unlikely that any one stakeholder will be entirely satisfied with this proposal, but as a starting point the patent community could do much worse.

For information regarding this and other related topics, please see:

• "The EFF is Patently Wrong," August 24, 2022 (Tillis bill)
• "More on Professor Sarnoff's Perspective on Tillis Patent Eligibility Bill," August 9, 2022
• "Professor Sarnoff Provides His Perspective on Tillis Bill," August 8, 2022
• "Senator Tillis' Patent Eligibility Reform Proposal: A Biopharma Perspective," August 3, 2022
• "Senator Tillis Proposes Patent Eligibility Reform (Again)," August 3, 2022

Conference & CLE Calendar

January 17, 2023 - Overview of Patent Public Search tool (U.S. Patent and Trademark Office) - 2:00 pm to 3:00 pm ET

January 17, 2023 - "China IP Developments: A View from the Ground" (U.S. Patent and Trademark Office) - 7:00 pm to 8:00 pm (ET)

January 18, 2023 - "Exploring the Future of Innovation-driven Growth & the Role of IP" (Intellectual Property Owners Association and World Intellectual Property Organization) - 9:00 am to 11:30 am (ET) / 3:00 pm to 5:30 pm (CET)

January 18, 2023 - "The Unitary Patent (UP) and Unified Patent Court (UPC)" (Patent Information Users Group) - 10:00 am (EST)

January 18, 2023 - Women's Entrepreneurship (WE) event (U.S. Patent and Trademark Office) - 12:00 pm to 1:00 pm (ET) - Naples, FL

January 18, 2023 - Advanced Tips on Patent Public Search tool (U.S. Patent and Trademark Office) - 2:00 pm to 3:00 pm ET

January 19, 2023 - Joint public listening session (U.S. Patent and Trademark Office and U.S. Food and Drug Administration) - 10:00 am to 5:00 pm (ET) - Alexandria, VA

January 19, 2023 - "2022 PTAB Year in Review" (Intellectual Property Owners Association) - 12:00 pm to 1:00 pm (ET)

January 19, 2023 - "Europe's New Unitary Patent & Unified Patent Court: Strategies for Canadian Applicants & Patent Holders" (Bereskin & Parr) - 12:30 pm (EST)

USPTO & FDA Public Listening Session on Collaboration Initiatives

The U.S. Patent and Trademark Office and U.S. Food and Drug Administration (FDA) will be holding a joint public listening session regarding areas for collaboration and engagement between the agencies.  The event is being held from 10:00 am to 5:00 pm (ET) on January 19, 2023 at the Clara Barton Auditorium at the USPTO Headquarters in Alexandria, VA.  The event will also be available for viewing virtually.  An agenda for the event can be found here.

Those interested in registering for the event, can do so here.

IPO 2022 PTAB Year in Review

The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "2022 PTAB Year in Review" on January 19, 2023 from 12:00 pm to 1:00 pm (ET).  Joshua Goldberg, Tom Irving, Sydney Kestle, Gracie Mills, and Trenton Ward of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP will discuss some of the most significant developments in PTAB practice in 2022 and how those developments will impact future cases, important precedent promulgated last year, and Director Vidal's impact on the PTAB during 2022, including a summary of those cases where Director Review was granted.

The registration fee for the webinar is $150 for non-members or free for IPO members (government and academic rates are available upon request).  Those interested in attending the webinar should register here.

Webinar on Unitary Patent and Unified Patent Court

Bereskin & Parr will be offering a presentation entitled "Europe's New Unitary Patent & Unified Patent Court: Strategies for Canadian Applicants & Patent Holders" at 12:30 pm (EST) on January 19, 2023.  Denis V. Keseris of Bereskin & Parr will review Europe's new Unitary Patent (UP) and Unified Patent Court (UPC) and set out strategies for taking advantage of (or avoiding) this new system.

Those wishing to register for the presentation can do so here.

USPTO Webinar on Patent Public Search Tool

The U.S. Patent and Trademark Office will be offering an overview of the Patent Public Search tool from 2:00 pm to 3:00 pm ET on January 17, 2023.  Librarians from the Patent and Trademark Resource Center Program, who are experienced with educating users on USPTO search tools, will show attendees how to use the new tool.

Those interested in registering for the webinar can do so here.

USPTO Webinar on IP Developments in China

The U.S. Patent and Trademark Office will offer a one-hour webinar entitled "China IP Developments: A View from the Ground" from 7:00 pm to 8:00 pm (ET) on January 17, 2023.  On-the-ground China intellectual property experts from the USPTO will provide important information about the current status of IP protection and enforcement in China.  The program will feature presentations by three current or recent USPTO IP attachés posted to China:  Conrad Wong, an attorney-advisor in the USPTO’s Office of Policy and International Affairs, and until 2022 the IP attaché with the U.S. Consulate General in Guangzhou, China; Duncan Willson, IP Counselor at the U.S. Embassy in Beijing, China; and Juli Schwartz, IP attaché with the U.S. Consulate General in Shanghai, China.

Those interested in registering for the webinar can do so here.

IPO and WIPO Webinar on Future of Innovation-driven Growth and Role of IP

The Intellectual Property Owners Association (IPO) and World Intellectual Property Organization (WIPO) will offer a webinar entitled "Exploring the Future of Innovation-driven Growth & the Role of IP" from 9:00 am to 11:30 am (ET) / 3:00 pm to 5:30 pm (CET) on January 18, 2023.  U.S. industry leaders from Cargill, Dell, DuPont, Google, Hewlett Packard, Tenneco and Thermo Fisher Scientific Inc. will be discussing:

• What is the role of IP in unleashing the Digital Age and the Deep Science wave: "business as usual" or something novel?
• What are the ramifications of these innovation waves on the use and impact of IP?
• What relationship exists between innovation-related growth, IP, and global challenges?

Remarks will be provided by WIPO Assistant Director General Marco Aleman, USPTO Director Kathi Vidal, IPO Vice President Krish Gupta, and IPO Executive Director Jessica Landacre.

There is no registration fee to attend the webinar, but advance registration is required.  Additional information regarding the webcast can be found here.

PIUG Webinar on Unitary Patent and Unified Patent Court

Patent Information Users Group, Inc. (PIUG) will be offering a webinar on "The Unitary Patent (UP) and Unified Patent Court (UPC)" at 10:00 am (EST) on January 18, 2023.  Julia Gwilt and Kate Hickinson of Appleyard Lees will discuss how the UP and UPC will impact existing European patents and applications, and key decisions patent owners will need to make for their European portfolios.

Attendees must be PIUG Members or PIUG Public Discussion Members to attend.  Those interested in attending the webinar can register here.

USPTO Women's Entrepreneurship Event

The U.S. Patent and Trademark Office will be offering its next Women's Entrepreneurship (WE) event from 12:00 pm to 1:00 pm (ET) on January 18, 2023 at the Collier Museum at Government Center in Naples, FL.  Leaders in the intellectual property community and women entrepreneurs will share their stories and tips on why protecting IP—via patents, trademarks, copyrights, or trade secrets—is key to starting and maintaining a successful business.  Among the speakers will be the Honorable Kate O'Malley (Ret.), U.S. Court of Appeals for the Federal Circuit; Chrissybil Boulin, Founder, Jump Start Tutoring Center; Vaishali Udupa, Commissioner for Patents, USPTO; and Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

Those interested in registering for the event, can do so here.

USPTO Webinar on Advanced Tips for Using Patent Public Search Tool

The U.S. Patent and Trademark Office will be offering a webinar providing advanced tips for frequent users of the Patent Public Search tool from 2:00 pm to 3:00 pm ET on January 18, 2023.  Librarians from the Patent and Trademark Resource Center Program will show attendees how to use additional features of the Patent Public Search tool to save time and conduct a more thorough patent search, and cover the following topics:

• Tag patent documents based on criteria you set.
• Write notes on documents as you review them.
• View only those sections of a patent that have your search words.
• Use other features to make your search easier.

Those interested in registering for the webinar can do so here.

The Existence of ChatGPT Does Not Justify Attempts to Equate Human and Machine Cognition

By Michael Borella --

In a recent article, we argued that patent law's current subjective and inconsistently-applied mental process doctrine is erroneously based on a false equivalence between human and machine cognition.  Notably, inventions that would require machine implementation to be of any practical use at all are mistakenly barred from patentability because they are allegedly directed to "mental" processes.  This mental process doctrine has been growing and expanding over the last 50 years despite having at best a poor grounding in both fact and law.

In the meantime, the talk of the Internet these days is ChatGPT, a large language model that is capable of producing remarkably human-like text.  Trained on a corpus of millions of human language documents, ChatGPT can generate impressive results from a simple prompt.

For example, I asked ChatGPT to "write a rap song about trickle-down economics invoking Adam Smith and Ronald Reagan."  It came back with the following (from which two verses and the chorus are excerpted):

Adam Smith and Ronald Reagan,
Two icons of the trickle down scene.
They preached the gospel of supply and demand,
And said the economy would be freed from government's hand.

The theory goes like this: the rich invest,
And the benefits of their success will be expressed.
Through higher wages and more jobs, it's a win-win,
But some say the reality is much more grim.

It's the trickle down, the trickle down,
Where the wealth flows from the top to the ground.
It's the trickle down, the trickle down,
Where the rich get richer and the poor get poorer, it's the trickle down.

Not bad.  ChatGPT can also explain the difference between a patent and a trademark:

A patent is a form of intellectual property that gives the person who holds the patent the exclusive right to prevent others from making, using, selling, and importing an invention for a limited period of time, usually 20 years from the filing date of the patent application.  Patents are granted for new, useful, and non-obvious inventions or discoveries.

A trademark is a word, phrase, symbol, or design, or a combination of these, that identifies and distinguishes the source of the goods or services of one party from those of others.  A trademark can be a brand name, slogan, logo, or other distinctive mark that is used in connection with a product or service.  Trademarks are used to protect brand identity and ensure that consumers can easily identify and distinguish one company's products or services from those of another.

In summary, a patent protects an invention, while a trademark protects a brand or logo.

Also not bad.  In addition, ChatGPT can write text in the style of a particular author, essays on virtually any topic, and even computer code.[1]  It can also answer questions.  Thus, the text that it generates encompasses the functionality of search engines and Wikipedia, but adds a new aspect -- it can create.  That is where things get sticky.

Not only are ChatGPT creations cogent enough to make school teachers reach for their aspirin bottles, they may suggest to naïve users that ChatGPT is intelligent, wise, and human-like.  While ChatGPT would not pass the Turing Test in its current incarnation, it is good enough to fool the easily fooled.

And those, naïve, easily fooled types might attempt to use ChatGPT's impressive performance on some tasks to justify patent law's mental process doctrine.  After all, ChatGPT output sure seems to be based on something at least similar to human cognition.

But even if it quacks like a duck that does not mean that it flies south for the winter.  ChatGPT's internal operation is little like that of a human brain, even if you limit your analysis of the human brain to language.

In short, ChatGPT is autocomplete on steroids.  Underlying ChatGPT is a transformer-based large language model that is trained by a massive amount of text to predict the next word of a sentence given the first n words of that sentence.  In order to get it to respond to queries, a second model is trained, one in which thousands of prompts and associated responses are generated (some automatically, some manually), and human reviewers rate the quality of each response with respect to its prompt.  A further model is trained to predict how well a human would rate each response.  Then, ChatGPT is trained to generate responses that would be highly-rated by a human.[2]

This does not resemble our current understanding of human cognition.  For example, as far as we know human beings use cognitive models to represent real-world objects and their behavior.  Based on these models, humans can make predictions of what these objects would do in new situations.  Thus, a child might (hopefully) be able to infer that a stove hot enough to boil water will be painful to touch.

In contrast, modern computer language models struggle making such predictions.  This is a general problem in artificial intelligence -- unless a model is specifically programmed or trained with data representing a scenario, its prediction of what may occur or what it should do in that scenario may be way off the mark.

For an example of this, ask ChatGPT to write a review of a well-known movie, such as Star Wars or Titanic.  The result will be impressive.  Then ask it to write a review of a lesser known, newer movie.  Prepare for disappointment.  A number of comical and disturbing ChatGPT fails have been noted.

Further, human beings have a theory of mind, in that we assign mental states to other persons in order to understand their behavior.  ChatGPT does not do this and therefore cannot modulate its output based on the emotions exhibited by a user.  Despite the fact that ChatGPT can provide you with a definition of a person, it does not actually understand what a person is and it lacks the ability to emote.  It might be able to simulate various emotions but it does not have the ability to have emotions of its own or to exhibit true empathy.[3]

Moreover, ChatGPT does not know whether it is generating text that represents the truth.  It has no concept of "truth" and no way of verifying that what it is saying is accurate, much less a moral compass to guide its actions.  And it has been known to generate very convincing falsehoods.

So don't ask ChatGPT for psychological help, dating advice, or who to vote for.  And if you do, take its output with a huge dose of skepticism.  ChatGPT creations are merely sophisticated pastiches of the writing on which it was trained.

What this all leads to is the inevitable conclusion that ChatGPT's often remarkable language skills are not anything like a human mental process.  Therefore, using the existence of ChatGPT to justify mental process doctrine in patent law is disingenuous at best.  So let's cut off that avenue of inquiry before anyone foolishly decides to venture down its path.

[1] On the other hand, I asked ChatGPT to "write an article about Alice v CLS Bank in the style of Kurt Vonnegut," and the result was rather bland with mild sarcasm sandwiching a textbook description of the case.  So it goes.

[2] See https://pub.towardsai.net/chatgpt-how-does-it-work-internally-e0b3e23601a1 for a more detailed technical description.

[3] Here, I am not trying to contend that there is something magical about human beings, just that AI models still have a long way to go in their ability to simulate human intelligence and may continue doing so in a way that is quite distinct from human cognition.

Dionex Softron GmbH v. Agilent Technologies, Inc. (Fed. Cir. 2023)

By Kevin E. Noonan --

As the dodo of patent practice, the number of interferences has been steadily dwindling since enactment of the Leahy-Smith America Invents Act in 2012 abolished the practice in favor of a "first inventor to file" regime and a derivation proceeding for instances where a patentee is found to have taken the invention from the true inventor (35 U.S.C. § 135).  And while the various CRISPR interferences between The Broad Institute and the University of California (Nos. 105,048 and 105,115) and those parties and ToolGen (Nos. 106,126 and 106,127) and Sigma-Aldrich (Nos. 106,132 and 106,133) have garnered more attention than other interferences combined, there remain a few other remaining interferences and in one of them, Dionex Softron GmbH v. Agilent Technologies, Inc., the Federal Circuit affirmed a determination by the Patent Trial and Appeal Board in favor of the Junior Party.

This interference was in an interesting procedural posture, wherein both parties copied each other's claims to provoke an interference.  Agilent made the first attempt and failed, copying claims to Dionex's U.S. Application No. 15/596,738, now U.S. Patent No. 10,031,112.  After Agilent amended its claims in U.S. Application No. 15/965,402, Dionex copied those claims in its U.S. Application No. 16/016,866, and the interference was declared.  The Count in Interference No. 106,109 was Claim 1 of Agilent's application:

A method of operating a liquid chromatography system, the liquid chromatography system comprising a liquid chromatography column and an injection valve, the method comprising:
    isolating a sample loop of the liquid chromatography system from a high-pressure fluidic path in fluid communication with the liquid chromatography column, wherein the high-pressure fluidic path is at a pump pressure, wherein the sample loop is in fluid communication with the injection valve and the sample loop comprises a metering device for loading a sample on the sample loop, and isolating the sample loop comprises placing the injection valve in a PRESSURE COMPENSATION position, wherein a volume of the metering device is defined by a chamber in which a piston is reciprocatingly mounted;
    determining a movement amount of the piston within the chamber from a first position to a second position to increase a pressure in the sample loop from an essentially atmospheric pressure to the pump pressure, based on the pump pressure; and
    while the sample loop is isolated from the high pressure fluidic path, decreasing the volume of the metering device to increase the pressure in the sample loop from the essentially atmospheric pressure to essentially correspond to the pump pressure of the high-pressure fluidic path;
    wherein decreasing the volume includes forwarding the piston within the chamber by the determined movement amount from the first position to the second position;
    wherein the metering device and the sample loop are in fluid communication in each position of the injection valve.

(wherein the italicized limitations were relevant to the issues before the Federal Circuit on appeal).

The PTAB denied Dionex's motion that Agilent's claims were not supported by an adequate written description under 35 U.S.C. § 112, first paragraph, finding that the specification whose adequacy was required was Agilent's '402 application because that was the application from which the claim was copied.  The issue, regarding the italicized limitation above was whether "determining a movement amount" needed to occur before "forwarding the piston" based on the disclosure of Dionex's '116 application (although Dionex conceded that certain terms, like "determining," should be construed under Agilent's '402 specification).  The Board held that Agilent's '402 specification provided an adequate written description under § 112, first paragraph, because using the "broadest reasonable interpretation" standard there was no basis for Dionex's asserted temporal limitation (i.e., that there was a movement determination prior to piston movement).  Under the Board's construction, there could be such a determination while the piston was moving and the limitation under this interpretation was adequately described by the '402 specification.

On the priority merits, the Board held for Agilent on corroborated evidence that its inventor had reduced the invention to practice (June 1, 2007) prior to Dionex's earliest asserted conception date (December 4, 2007).  The evidence was provided by testimony of one of two co-inventors, Kretz, corroborated by two co-workers, Berndt and Bäuerle.  Their corroborating testimony was that Kretz had successfully tested a prototype of the claimed invention by his asserted June 1, 2007 reduction to practice date.  This testimony was consistent with documentary evidence initially created on April 4, 2006 and having modifications as late as November 11, 2008, which document was attested by Agilent's expert to describe a functional apparatus falling within the interference Count.  The Board rejected Dionex's argument that the described apparatus did not have a pressure sensor needed to provide equalized pressure as recited in the Count, based on testimony by Bäuerle that the pump used in the prototype had an internal pressure sensor.  Finally, the Board refused to draw an adverse inference against Agilent from the failure of the second named inventor, Glatz, to testify or from the absence of contemporaneous technical drawings, schematics, and other documentary evidence in light of the adequacy of the testimony introduced by Agilent.  This appeal followed.

The Federal Circuit affirmed, in an opinion by Judge Stark joined by Judges Reyna and Chen.  Regarding the § 112, first paragraph, issue, the Federal Circuit agreed with the PTAB that the '402 application was the proper source of an adequate written description, as the "originating specification" under Agilent Techs., Inc v. Affymetrix, Inc., 567 F.3d 1366, 1374 (Fed. Cir. 2009); Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997); and In re Spina, 975 F.2d 854 (Fed. Cir. 1992).  Agilent's earlier failure to provoke an interference by coping Dionex's claims did not change this result according to the panel.  The Federal Circuit also agreed with the PTAB's claim construction regarding whether there was a temporal component in the claim language, i.e., whether the "determining" activity must antecede "forwarding" of the piston.  While conceding the general rule that a method claim does not necessarily require steps to be performed in the order they are recited in the claim, the opinion notes that there are instances where "logic or grammar" requires a particular order, citing Mformation Techs, Inc v. Rsch. in Motion, Ltd., 764 F3d 1392 (Fed. Cir. 2014).  This was not such a case, the panel concluded, and thus the Board's determination was supported by substantial evidence (including expert testimony) as a question of fact.

The Federal Circuit also affirmed the Board's priority determination, based on actual reduction to practice having been achieved prior to Dionex's conception date and being supported by sufficient corroborating evidence.  The panel affirmed the Board's application of the "rule of reason" regarding corroborating testimony under Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998), where there is "sufficient circumstantial evidence of an independent nature" to support inventor Kretz's testimony concerning his actual reduction to practice.  The opinion characterizes Dionex's arguments on these issues to be "mistaken" insofar as the Board properly credited testimony of contemporary witnesses of inventor Kretz's work and actual reduction-to-practice of an apparatus within the scope of the interference Count.  While the witnesses, particularly Bäuerle, may not have known every detail of the apparatus the Court held that "omniscience is unnecessary under the rule of reason" in Cooper and that any inadequacy in witness Berndt's understanding that was the basis of his testimony was not disqualifying because it was independent of inventor Kretz's testimony and the Board could find "some collaborative value" in it.  Regarding the exhibit, the panel rejected Dionex's challenge, saying it was "without merit" because the Board relied on the exhibit "as it existed at the relevant date" (emphasis in opinion), as corroborated by witness Bäuerle.  Finally, the Court rejected Dionex's argument that the Board should have drawn an adverse inference from second inventor Glatz's failure to provide testimony, saying there is no per se requirement to infer that an inventor's failure to testify should be considered harmful to her co-inventor, citing Borror v. Herz, 666 F.2d 574 (C.C.PA. 1981), and that the Board had discretion that it had not abused on this record regarding inventor Glatz's failure to testify.  In the absence of such a mandate that the Board draw the adverse inference, the Court held there was no error by the Board in not doing so and thus affirmed the Board's priority determination in favor of Agilent.

Dionex Softron GmbH v. Agilent Technologies, Inc. (Fed. Cir. 2023)
Panel: Circuit Judges Reyna, Chen, and Stark
Opinion by Circuit Judge Stark