USPTO Releases Guidance for Examining Mean-Plus-Function Claims but Some Questions Remain

By Christopher Bearne L‘26

On March 18, Vaishali Udapa, USPTO Commissioner for Patents, sent a memorandum entitled, “Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))” (“memo”) to all patent examiners. The memo did not introduce any changes in examiner practices but served to reinforce proper examiner procedure for interpreting means-plus-function claim limitations and outline examiner training opportunities.

Means-plus-function claims involve claiming based on functionality rather than structure, by describing a feature by what it does and not what it is. This is often not a preferred claiming method, and has encountered difficulty in the Federal Circuit, especially for computer-implemented inventions. Although, functional claiming is expressly authorized in 35 U.S.C. § 112(f):

An element in a claim for a combination may be expressed as a means or step for performing a specific function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts describes in the specification and equivalents thereof. (emphasis added)

The memo explains a potential benefit to applicants offered by functional claiming: “allowing [applicants] to recite a function in a claim and rely on the specification for the corresponding structure, material, or acts that perform the function and equivalents thereof.” That is, the ability to claim a function without reciting specific means or steps for performing the claimed function[RC1] [CB2] , and instead pointing to “a more robust description of the means or steps in the specification.” This language reinforces the idea that § 112(f) is not meant to allow for broader claiming, but only claims that are supported by the “robust description” in the specification.

The broadest reasonable interpretation (BRI) of a claim under § 112(f) is “limited to the structure, material, or acts described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material, or acts.” This may result in a narrower interpretation than claims not crafted in means-plus-function language. The memo notes this is an important distinction when searching for and applying prior art. As explained below, the memo does not provide examiners with instruction on the exact application of BRI in the § 112(f) interpretation nor the support required for equivalent structures.

The memo also reminds examiners that all claim types, including product and process claims, should be reviewed for means-plus-function limitations because structural elements may appear in both. But how should examiners interpret these claims to determine whether such limitations are present?

To determine whether to apply § 112(f) to a claim limitation, examiners should apply a 3-prong analysis:

(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;

(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and

(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

            Claims are presumed to invoke § 112(f) when they explicitly use the term “means” or “step,” but the presumption may be overcome by including further structure for performing the functions in the claim. On the other hand, if a claim does not use such language, it is presumed not to invoke § 112(f), but reciting function “without reciting sufficient structure . . . for performing that function” invokes § 112(f) limitations. According to Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc), “[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name for structure.”

            The memo noted that there is not an exhaustive list of terms that invoke § 112(f). Instead, examiners must “consider the term in light of the specification and the commonly accepted meaning in the technological art.” For example, “code” or “user interface” may not be generic terms when a person having ordinary skill in the art (PHOSITA) would understand those terms as describing structure, when combined with the function performed. While “module for” and “machine for,” for instance, have been found to be generic terms invoking § 112(f). The memo emphasized, “[e]stablishing the interpretation of § 112(f) limitations in writing during prosecution is critical in supporting the agency goal of establishing a clear prosecution record.” The memo encourages using form paragraphs to explain § 112(f) analysis in a claim interpretation section of the office action. This suggests that examiners may begin to more consistently describe their claim construction methods in office actions, which they traditionally haven’t.

            A problem with this guidance, pointed out by Professor Dennis Crouch, is that it lacks instruction on the application of BRI to the first step of determining whether § 112(f) applies. As the memo points out, means-plus-function language could narrow the scope of claims if the corresponding structure and/or equivalents are described in a constricted way, however, if the specification discloses broader or more generic corresponding structures, this could expand the scope of the claim. Examiners may opt to choose whichever interpretation could invalidate the claim or take another approach, but the memo does not provide explicit instruction.

Another potential problem is that means-plus-function claims cover disclosed embodiments and their “equivalents” – but there remains an open question of whether the written description must support the equivalents. In Xencor, the PTO held equivalents must be supported, but the case is now before the Appeal Review Panel following remand from the Federal Circuit. The memo did not provide instruction regarding equivalent structures and their required support in the specification.

            The memo does provide instruction on assessing the adequacy of the supporting disclosure. Invoking § 112(f) allows a claim to “recite a function” and rely on the specification to describe the structure performing the claimed function.

The disclosure is evaluated under §§ 112(a) and (b) to ensure definiteness, adequate written description, and enablement. To be definite, the structure must be described in a way that clearly links it to the claimed function and ensures a PHOSITA would understand the structure performs the entire recited function. For computer-implemented claims, “the specification must disclose an algorithm for performing the claimed specific computer function, or the claim should be found indefinite.” This is from the point of view of a PHOSITA, and only disclosing a generic computer as the structure designed to perform a specific computer-implemented function would not be adequate disclosure of corresponding structure.

An indefinite claim under § 112(b) will also fail the written description requirement and may not enable the full scope of the claim under § 112(a). Examiners must apply the usual written description requirement and enablement analysis, to ensure the specification demonstrates possession of the claimed invention at filing and contains sufficient detail to enable a PHOSITA to make and use the claimed invention.

In a press release entitled, “USPTO advances clarity of patent record by tackling means-plus-function and step-plus-function claim limitations,” the USPTO said that clearer communications, “provide both the applicant and the public with notice as to the claim interpretation used by the patent examiner during prosecution, and if the applicant intends a different claim interpretation, the issue can be clarified early in prosecution.” Kathi Vidal, Under Secretary of Commerce for Intellectual Property, Director of the USPTO, and Penn Law alumnus (L’97), stated the guidance is, “part of [the USPTO’s] continued work to create more robust and reliable intellectual property rights on which patent applicants, inventors, and the public can rely and use to build a stronger economy.” The § 112(f) guidance builds on previous § 101 and recently released § 103 guidance “to ensure the USPTO is using consistent interpretations of the law across the agency.”

The USPTO may consider providing additional guidance on the application of BRI when determining whether means-plus-function limitations apply and whether equivalent corresponding structures must be supported by the specification. Comments may be provided to the USPTO here.

PERA Debate Rages On

By Dallas Nguyen '26

 On March 11, 2024, a coalition of businesses, technology companies, and think tanks released a letter to the Chairman and Ranking Member of the Senate Judiciary Committee, urging them not to move forward with the proposed Patent Eligibility Restoration Act (PERA), S. 2140. The act, introduced by Senators Tillis and Coons on June 22, 2023, aims to provide clarity by changing the language for patent subject matter eligibility.

Currently, inventions must fall into one of four categories of subject matter – process, machine, manufacture, and composition of matter – to be eligible for patenting under Section 101 of the Patent Act (Section 101). However, the U.S. Supreme Court has noted three “judicial exceptions” – laws of nature, natural phenomena, and abstract ideas – that require further scrutiny for patent eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). PERA attempts to replace these exceptions with a more specific list of ineligible subject matter, such as certain mathematical formulas, substantial economic processes, and unmodified human genes. Notably, these categories themselves have exceptions. This means specific inventions within the proposed list of ineligible subject matter may still qualify for patents. For example, a substantial process can be patent-eligible if it “cannot practically be performed without the use of a machine (including a computer) or manufacture.” Likewise, a human gene or other natural material can be patented if it is “isolated, purified, enriched, or otherwise altered by human activity” or “otherwise employed in a useful invention or discovery.”

Since the act’s introduction, PERA opponents have cited two common arguments against it. First, it would disrupt two centuries of established U.S. patent law and make eligibility requirements even more confusing with its specificity, defeating the main purpose of the act. Second, and perhaps more contentious, PERA would allow the patenting of several ideas that would previously have been ineligible, leading to an expansion that some consider extreme. For instance, the March letter, signed off on by organizations from Amazon and Google to Domino’s and Berkshire Hathaway, claimed that many areas of daily modern life that require computers or similar technology, like business methods or data-storing devices, would suddenly become patentable under PERA. 

In January, a separate opposition letter to the Senate from a coalition of public interest groups, including the ACLU, echoed concerns about the impact of gene patenting under PERA. The letter warned that PERA could allow patents on isolated genes linked to diseases like Alzheimer’s or even pathogens like Covid-19. More importantly, the groups argued, PERA could grant companies ownership over how this genetic information is used and shared. This could lead to exclusive rights to diagnose and treat diseases based on these genes, potentially limiting access to these life-saving tools. The letter pointed to the successful, rapid development of the Covid vaccine, hinged on the free sharing of information about the virus’s genetic variations among researchers and biotech companies, that would not have happened had PERA been in effect; a single company could have patented the entire viral genome, potentially delaying further research and development.

But PERA also has its share of proponents, who see the bill as a catalyst for innovation. Six of the eight witnesses who testified during a Senate Judiciary Committee hearing on the act were largely in support of passing it. One of them, Courtenay Brinckerhoff of Foley & Lardner, swung on the opposite end of the public interest groups’ concerns, seeing the ‘isolated’ provision as one that would encourage scientific development. PERA would not only open the door to progress for medications and chemicals isolated from plants and bacteria but also align the American patent system to other international jurisdictions that are already permitting ownership over these natural products. Professor Adam Mossoff of the Antonin Scalia Law School added weight to this argument, citing data showing that nearly 1,700 US-rejected patent applications between 2014 and 2019 were granted patents in China and the EU. PERA would thus boost American innovation and competitiveness, while also providing investor confidence through clearer patent eligibility rules. Other patent limitations also still exist to prevent overly broad patent protection. For example, AI or Machine Learning-based inventions are still subject to laws outside Section 101 that require significant contribution by a real person as the inventor.

PERA remains stuck in legislative limbo, even as additional groups, like the EFF, join the debate. For the foreseeable future, both sides will likely continue their efforts to sway the Senate, as the course of American innovation potentially hangs in the balance.

Supreme Court Declines to Hear Case Seeking to Limit Inter Partes Review (IPR) Joinder

By Andrew Borgdorff ‘26

On February 20th, 2024 the U.S. Supreme Court declined to consider the appeal of VirnetX Inc. v. Mangrove Partners Masters Fund, Ltd. from the Federal Circuit. The Federal Circuit’s decision frees Apple from an earlier $576M infringement jury verdict by joining a third-party’s IPR proceeding against the allegedly infringed patent. This is based on a broad statutory reading of the joinder rules for IPR that allowed Apple to join despite the statute of limitations on Apple’s case having run.

The original jury verdict was from a case in 2020 where Apple was accused of infringing network security patents held by VernetX with virtual private network (VPN) functions on their iPhones. Apple was previously refused on timeliness grounds when they attempted an IPR challenge to VernetX’s network security patents because the one-year time limit from the infringement suit had expired.

In a separate case, Mangrove Partners challenged VernetX’s patent in an IPR proceeding within the one-year of the corresponding infringement suit. Apple successfully joined Mangrove Partners’ challenge which ultimately led Patent Trial and Appeal Board (PTAB) to invalidate the network security patents. One issue on appeal was whether it was appropriate to allow Apple to join the PTAB proceeding when they were previously denied for missing the deadline.

Allowing challenges in this manner provides a means for well-funded accused patent infringers to escape potential liability by circumventing the timing rules for filing a challenge. VirnetX alleged that “[e]ntities with no discernable stake file IPR petitions challenging patents successfully asserted in litigation - only for well-heeled but time-barred infringement defendants to conveniently join the proceedings and shoulder the cost.” If VirnetX’s accusation is true, it appears to be a manipulation of IPR rules.

The USPTO supported the Federal Circuit’s decision because Apple’s joinder did not affect the case and the cause of action was moot because the patents were invalidated in a separate proceeding anyway.

The Federal Circuit’s ruling that there is not a timeliness bar to joining a valid IPR challenge will stand because SCOTUS declined to review the case. While it does allow for potential manipulation of the time requirements by creating a new challenge, the effect is not that concerning because it does not create a new avenue to invalidating patents would otherwise be valid. However, there is a cost-burden associated with defending additional patent challenges and there will never be a certainty that potential IPR challenges are in the past because under this interpretation a challenge opportunity arises every time another party challenges the same patents as an alleged infringer progressing through litigation. There is an interest protected by not allowing damage recovery on patents that may have been found invalid, but it comes at the expense of those that have to mount additional patent defenses.

Supreme Court to Decide Whether Restrictions on Speech in Trademark Regime Violate First Amendment

By Jessie Hess ‘26

The Supreme Court heard Vidal v. Elster and will weigh in on restrictions on free speech in violation of the First Amendment contained in the Lanham Act. Steve Elster attempted to trademark the phrase “TRUMP TOO SMALL” for use on shirts intended to serve as political criticism of Donald Trump. A USPTO examiner rejected Elster’s mark as invalid under 15 U.S.C. 1052(a) which states that a trademark can be refused when a mark may falsely suggest a connection with a person and 15 U.S.C. 1052(c) which states a mark may be refused when it comprises a name identifying a particular individual without their consent.

Elster appealed both bases of rejection to the Trademark Trial and Appeal Board who affirmed the decision solely under 15 U.S.C. 1052(c) grounds. Elster then appealed to the Federal Circuit who reversed the Trademark Trial and Appeal Board’s decision and held that the application of 15 U.S.C. 1052(c) was unconstitutional as applied to Elster’s proposed mark. The court reasoned that a standard of either intermediate or strict scrutiny applied because the trademark registration offers substantial advantages and since the mark is in a context where controversial speech is part of the trademark function it must be judged under First Amendment scrutiny.

The Federal Circuit then weighed the First Amendment interests against the governmental interests and found for Elster. The Federal Circuit noted that speech concerning public affairs plays a vital role in self-government and the importance outweighs that of even general self-expression, so the fullest First Amendment protection applies to speech concerning public officials. The government’s interests are primarily grounded in privacy and publicity rights however the right to privacy does not extend to public officials absent malice and the government has no interest in protecting the privacy of a public individual from political criticism. As to the right to publicity, the court reasoned that there was no claim that Trump’s name was being used in a way that misappropriated his value and the mark does not plausibly suggest that Trump endorsed Elster’s product. The Federal Circuit also reasoned the right to publicity is constrained when applied to criticisms of public officials as in the case of Elster’s mark. Although only dicta because Elster raised an as applied challenge to the constitutionality of the provision, the court also noted that 15 U.S.C. 1052(c) may be constitutionally overbroad under the First Amendment Overbreadth Doctrine.

The USPTO then filed a petition for a writ of certiorari which was granted by the Supreme Court of the United States on June 5, 2023. Oral argument took place on November 1, 2023, and SCOTUS seemed hesitant to overturn the statute as unconstitutional.

The USPTO raised three arguments. First, trademark registration is a federal benefit and thus, denying the trademark does not impede Elster’s speech. Second, 15 U.S.C. 1052(c) is viewpoint neutral because it only looks at whether a person has consented and not whether the mark is critical or flattering. Third, granting the trademark registration about a political figure would hamper free speech because it would be giving Elster an exclusive right to exclude others. The government pushed the court to adopt a rational basis test.

Although the court seemed skeptical of the benefits theory, particularly Justice Alito who cited his decision in Tam where he had stated a contrasting view on whether trademark registration qualified as a federal benefit, Justice Gorsuch emphasized the long tradition of similar restrictions in common law and the court seemed more receptive to the viewpoint neutral argument and the fact that granting a trademark would restrict other speech. Justice Barrett raised concerns about a third-party getting Trump’s consent and then registering the trademark to exclude Elster from his speech. The government answered that to do so the third party would have to be actively using the mark as a source identifier. .

Elster argued strict scrutiny should apply. He stated three propositions. First, the provision withholds valuable legal protections for certain speech which impedes free speech. Second, the provision is unrelated to the purposes of the trademark regime. Third, speaker-based discrimination lends itself to viewpoint-based discrimination because people are more likely to consent to favorable marks than critical ones.

Justice Jackson questioned whether the clause is unrelated to the purposes of trademark registration if it helps ensure that consumers do not confuse the product for having an association to the person. Elster asserted that 15 U.S.C. 1052(a) serves that same function. Justice Roberts raised questions about the registration of trademarks around political figures hampering free speech and Elster responded that the mark must function as a source identifier which alleviates the majority of those concerns.

This case raises questions about the importance of free speech, particularly when criticizing public officials, and whether facially neutral restrictions may violate viewpoint-discrimination based on practical effect. How the justices view the purpose of trademark law may be outcome determinative, because the case highlights a tension between limiting the free speech of those excluded and enhancing the free speech of the markholder. Since it is an as applied challenge, SCOTUS may hold the statute unconstitutional as applied to Elster without striking it down. However, oral argument raised questions about the practical effect a finding that the provision is unconstitutional would have and whether Congress could draft a similar provision with a narrower reach.

AI on Trial: Demystifying the Legal Drama Between The New York Times, OpenAI, and Microsoft

By Rachel Buckland ‘26

In late December 2024, The New York Times Company (“The Times”) sued OpenAI and Microsoft, claiming that OpenAI and Microsoft illegally used The Times’s intellectual property while developing AI tools such as ChatGPT. This case, if it goes to trial, could have far-reaching effects on both the future of AI tools and the media industry. But in order to determine whether The Times has a strong copyright infringement claim, one first needs to understand the underlying technology and how it uses The Times’s content.

The Technology

AI models, such as OpenAI’s ChatGPT and Microsoft’s Copilot, rely on large-language models (“LLMs”) which are a type of generative AI that “remembers” patterns and structures of language in order to translate, generate, or predict text. When developing an LLM, the model is trained using a massive set of text data, including books, articles, and websites (such as Wikipedia). Training is an iterative process where the model adjusts parameter values until it is able to correctly predict the next piece of text. Understandably, the quality of the text used during training has a big impact on resulting LLM capabilities. OpenAI admitted that “datasets we view as higher quality are sampled more frequently” during training, including content from The Times. With the increase in size of the datasets comes the increased likelihood of memorization, a phenomenon in which the LLM will regurgitate large parts of training documents when prompted. More common than these memorizations are hallucinations, which are coherent but factually incorrect LLM outputs.

The Complaint

At the heart of the complaint is that OpenAI and Microsoft rely on high-quality journalism to train their LLMs and have not compensated The Times for the usage of this content. The Times makes the claim that failing to compensate them for their intellectual property jeopardizes The Times’s ability to continue to produce quality independent journalism. Undoubtably, The Times’s content was used in training the defendants’ LLMs, especially considering recent licensing partnerships between OpenAI and media companies such as Axel-Springer and The Associated Press. Additionally, The Times strengthens its argument by alleging infringing instances of memorization. To generate these memorization outputs, 100 examples of which are included in the complaint, The Times input the article URL and a prompt containing a short snippet from the article. In response, the LLM output copies of the articles themselves, despite these articles being protected by a paywall. Since The Times's articles are copyrighted, this reproduction may be a violation of 17 USC §106. The Times also claims that the LLMs will closely summarize its articles, mimic its expressive style, and wrongly attribute false information to it in the form of hallucinations, all of which denigrate the value of The Times’s intellectual property and reputation.

OpenAI responded to the complaint by explaining that including URLs in the prompts violates OpenAI’s terms of service, and that OpenAI is constantly working to make its products more resistant to this “type of misuse.” Given the security and intellectual property concerns around memorization, whether OpenAI and Microsoft are able to demonstrate that memorization of training data is a flaw, or a feature could be determinative.

What’s Next?

It’s likely that this case will settle out of court because of the uncertain legal precedent and the disparity in economic bargaining power between The Times and its Big Tech opponents. In cases like Sony Corp of America v. Universal City Studios, Inc. and Authors Guild v. Google, courts have found that reproductions of copyrighted media may be transformative and therefore fair use. Both these precedents involved a change in the form of the media (digitization of books or tape recording of broadcasted content). If the case goes to trial, we could see new standards being set that could change the course of AI development, or we could see courts sticking to previous norms, resulting in economically devastating effects for the media industry.

Take-home Definitions:

LLM: large-language models – works by predicting words that are likely to follow a given string of text based on the potentially billions of examples used to train it.

Training: process of teaching an AI model to perform a certain task, such as producing natural language text in a variety of styles, by exposing it to large volumes of data.

Memorization: a behavior in LLMs where, given the right prompt, the model will repeat large portions of materials they were trained on. This behavior indicates that LLM parameters encode retrievable copies of many of those training works.

Hallucinations: LLM text outputs that are factually incorrect or misleading. 

Patentability of Genetically Modified, Selectively Bred, or De-Extinct Animals

By Lulu Lipman, L’26

In 1987, the United States Patent and Trademark Office (USPTO) issued a historic notice stating that “[n]on-naturally occurring, nonhuman, multicellular living organisms, including animals,” were patentable. Since then, the USPTO has issued patents to hundreds of animal models. As the practice of patenting animals has exploded, it has sparked ethical concerns and questions, especially concerning where we draw the line on patenting living things.

For an animal to be eligible to be patented, it must be genetically modified and thus not naturally occurring or found in nature. This criterion can include animals “produced through selective breeding.” In 2012, the USPTO rejected an application to patent the Pixie-Bob (a cross between a bobcat and a domestic cat) under §101 because the two species could naturally breed without human involvement, thus rendering them a product of nature and not patent-eligible. However, the USPTO distinguished the Pixie-Bob case from other instances where animals are selectively bred to have specific traits, like in U.S. Patent 5,603,302, where scientists bred guinea pigs to be bronchial hypersensitive to be used for research. In differentiating between when selective breeding is patent-eligible, the Office of the Solicitor clarified that “[the] claims recite a specific desired trait and [the] patent discloses a specific method of breeding used to obtain that trait, distinguishing [the] claimed guinea pigs from those in nature.”

The guinea pigs described in Patent 5,603,302 are representative of the most commonly patented species in the United States: transgenic animals altered by scientists to exhibit traits that make them advantageous for research. For example, the first “higher form” animal patented was the OncoMouse in 1988. Scientists at Harvard University genetically engineered mice to be predisposed to cancer, thus allowing them to “study the disease in an intact living organism” and, in turn, “transform cancer research.” Advocates of patenting animals have cited its benefits as expediting scientific discovery, increasing favorable health outcomes, and contributing to medical breakthroughs.

The practice of animal patenting has also been the subject of staunch criticism. One of the most outspoken critics is the American Anti-Vivisection Society (AAVS). The organization believes that patenting animals is cruel and incentivizes harming animals “in the interest of profit, but under the guise of scientific research, testing, and experimentation.” In 2004, AAVS challenged U.S. Patent 6,444,872, claiming it was unethical. The patent, which was granted to scientists at UT Austin, involved inducing invasive pulmonary aspergillosis in beagles to test the efficacy of a new drug intended to treat leukemia in humans. The patent covered both the novel methodology of infecting the dogs and the immunocompromised dogs themselves. In May 2004, following public backlash, the USPTO agreed to re-examine the patent, and the Board of Regents of UT Austin chose to “disclaim …the entire remaining term of all the claims.” AAVS called this a “tremendous victory.” Another win for AAVS came in 2008, when, after three years of lobbying, it successfully convinced the USPTO to revoke U.S. Patent 6,924,413. The patent covered rabbits whose eyes were wounded to imitate the effects of humans who have dry eyes.

Based on the proliferation of animal patents since the OncoMouse debuted thirty-five years ago, it seems like the practice is not slowing down. However, mounting ethical concerns must be weighed against the emerging scientific advancements facilitated by animal patents. So, where does the future lie for animal patents? Some, like Harvard geneticist George Church and the Colossal Laboratories & Biosciences team, envision “patenting’ de-extinct animal species” as the next frontier of animal patents. The Colossal Laboratories team hopes to resurrect a wooly mammoth within the next five years; however, the process of “de-extinction” will introduce new complexities regarding which revived species can be patented. Thus, the question remains: “Can someone really patent a mammoth? And if they can, should they?”

Supreme Court Set to Weigh-In on Scope of Patent Law’s Enablement Requirement

By Sophie Roling, L’25

In a few weeks, the Supreme Court will hear the argument for Amgen Inc. v. Sanofi, a case that could change the future of patent law. The case explores the appropriate application of 35 U.S.C. § 112’s enablement requirement, which stipulates that a patent’s disclosure must enable a person with ordinary skill in the art to make and use the claimed invention. Courts have expanded on the §112 requirement, adding that a skilled artisan must be able to make and use the claimed invention without undue experimentation.

The Court of Appeals for the Federal Circuit has employed a “full scope” test for enabling the claimed invention: if the claim is overly broad, and only one working example is disclosed in the specification, the claim might not be sufficiently enabled. At issue in Amgen is the high burden the Federal Circuit’s test poses on pharmaceutical companies to cumulatively identify all possible embodiments of the invention to make genus claims, or claims that cover many compounds by identifying common characteristics.

Amgen is claiming monoclonal antibodies that bind to the PCSK9 protein. These antibodies inhibit PCSK9 from blocking the body’s low-density lipoprotein receptors to regulate cholesterol levels and assist in treating diseases such as diabetes mellitus. The District of Delaware, however, granted Sanofi JMOL for Amgen’s lack of enablement.

Amgen’s genus claim focuses on the functional aspects of how the antibody binds to amino acid residues, rather than the antibody’s structure. The debate over how generic the enablement can be dates back over 100 years to the Incandescent Lamp Patent[KS1]  case, in which the Court stated that a patent for a lamp cannot claim something as broad as “all fibrous and textile materials” without properly enabling people skilled in the art to independently construct the lamp from the listed materials. Sanofi analogizes Amgen’s genus claim to the claim in the Incandescent Lamp case, arguing that the PCSK9 claim is similarly too broad in scope.

The issue of what constitutes a proper enablement, Amgen argues, hinges on the difference between qualitative and quantitative experimentation. While the Federal Circuit believes a person of ordinary skill in monoclonal antibodies would use undue experimentation to quantitatively identify all possible embodiments, Amgen believes that the quality of experimentation is what matters. Amgen argues that genus claims will adequately enable a skilled artisan to make and use the invention as long as the patent describes how to determine whether the specimen is in the genus.

Amgen’s position is backed by many large pharmaceutical companies, as the outcome of this decision could affect many patents with functional genus claims. In an amicus brief, GSK argued that genus claims are critical to protecting innovation in the pharmaceutical and biotechnology worlds. The upcoming decision will shed light on the proper standards of patent enablement.

AI Image Generation and Copyright

By Rebecca Conway, L‘25

The question of artificial intelligence (AI) for image creation and copyright has been lurking with limited case law since GANs (Generative Adversarial Networks) took to the scene in 2014. GANs revolutionized AI by creating a two part system that “learned” a data set of previous art and then checked its own generated image against the dataset to look for differences. The first AI-generated portrait sold in auction fetched over 400k in 2018. The rapid improvement of such technologies and the rise in popularity of DALL-E over the last two years bring to the forefront the questions of who owns the works created by these programs and what happens if one of the programs infringes on another's work.

AI tools may not themselves own or copyright the works they create. While the US’s copyright law does not explicitly mandate a human inventor, courts have found this to be a requirement. In Naruto v Slater the 9th circuit found that a monkey which had taken a selfie could not sue for infringement on the grounds that if the legislature had wanted nonhumans to be able to own copyrights and sue for infringement they should have expressly written it into the statutes. 

While it has been largely settled that AI may not own the copyright of its work, it is not clear who would own the copyright. The popular assumption in these discussions is to treat AI as a consumer product, similar to Photoshop or Illustrator rather than as an agent of the coders that built it. For further discussion of the implication of copyright and AI as an agent of a principal that originally created the program see here. 

Presuming that AI is a consumer product, the question of whether humans may claim authorship of the works they prompt AI to make depends on the level of input and control a prompter has. Kris Kashtanova’s comic book with AI-generated artwork has been a test case for these arguments and is currently being considered by the US Copyright Office. Kashtanova points out that it was arduous to find the right wording for the image generation and that they came in with a vision and merely used AI as a tool to create their vision. 

Additionally, AI programs require the use of past works in order to "learn" how to produce new works. For a work to be copyrightable, the Supreme Court has found it must contain at least a “modicum” of creativity. Suits questioning whether an AI work may be considered creative, as well as whether it is fair use to teach an AI with another's art are currently also being filed.

Panel Discusses Past, Present, and Future of Patentable Subject Matter

By Kevin Seltzer, L’24

On November 10th, the Penn Intellectual Property Group and Penn Carey Law School’s Center for Technology Innovation and Competition hosted a panel discussion about the legal landscape of patent law’s section 101. The provision, which sets the scope of what innovations are eligible to receive patent protection, has received increased scrutiny as courts, practitioners, and industry actors have struggled to apply Supreme Court precedent.

David Taylor—Professor of Law at the SMU Dedman School of Law and the founder and co-director of SMU’s Tsai Center for Law, Science, and Innovation—kicked of the discussion with a brief overview of the history of the Patent Act and how patent eligibility evolved through changes to the statute, and ultimately, the Supreme Court’s decisions in Mayo,Myriad, and Alice. For the remainder of the event, the panel discussed how the current eligibility framework has led to uncertainty in patent litigation, patent prosecution, patent examination, and for industry actors.

Gabriel Bell, who is a Partner at the Washington D.C. office of Latham and Watkins in their IP, Supreme Court, and Appellate practice groups, described how the intra-case uncertainty surrounding how the Supreme Court would develop the doctrine on patent eligibility evolved into case-by-case uncertainty in how courts should apply the doctrine. Bell noted that the initial wave of ineligibility findings post Alice seemed to have reached both substantive and procedural inflection points in the Enfish and Burkheimer decisions, respectively. Since the Supreme Court’s surprise denial of certiorari in American Axle, questions remain for actors looking to litigate their patents including whether they are susceptible to a 101 defense, when that defense will be brought, and whether it would survive review at the Federal Circuit.

Speaking to the uncertainty for patent prosecutors, Usman Khan—an associate at the Washington D.C. office of Fish & Richardson—described the state of eligibility law as challenging and frustrating. Khan explained that a § 101 rejection on a patent application poses an uphill battle for prosecutors as it signals skepticism from the examiner. The frustration originates from the sense that the § 101 standard has been applied differently on an examiner-by-examiner basis. Khan also spoke to the challenge of prosecuting an application when the law is in a state of flux. Prosecutors, Khan said, should be mindful of how the record that they create may affect litigation years down the line when the eligibility standard may well have changed.

Panel moderator Waseem Moorad spoke to how patent examiners responded to uncertainty in the eligibility. Moorad, who is a Visiting Practice Assistant Professor and Director of Penn’s Detkin IP & Technology Clinic, served at the United States Patent and Trademark Office for fifteen years as a patent examiner and supervisory patent examiner. In that time, Prof. Moorad saw the Patent Office react to the Supreme Court’s eligibility decisions. In the ensuing confusion, Prof. Moorad worked on the Patent Examination Guidance (“PEG”) documents that sought to obtain consistent eligibility interpretation across examiners. Prof. Moorad saw the PEGs as a successful step along the path to clarity in the § 101 landscape.

Finally, Professor Taylor discussed research he conducted on how investors have responded to the uncertainty in the eligibility landscape. Focusing on the biotech industry, Professor Taylor conducted a survey of venture capitalists and private equity firms and found that, as a result of uncertainty surrounding patent eligibility—particularly after Mayo and Myriad found certain diagnostics tools ineligible—there was a noted shift away from investment in life sciences industries. This policy failure suggests the potential need to change eligibility law to better promote innovation.

The panel concluded with discussion about how the U.S.’s system compares to other patent systems around the world and how that may inform future revision of the eligibility standard. The discussion zeroed in on the European Patent Convention’s inclusion of certain negative categories in its eligibility provision. The panel considered how including similar classes of unpatentable subject matter in the statute might add some clarity to US Patent Law.

PIPG looks forward to hosting our annual symposium in Spring 2023 and other events related to intellectual property and technology law throughout the year.

PIPG Convenes Symposium Discussing IP Opportunities and Hazards for Small Content Creators

By Kevin Seltzer, L’24

The Penn Intellectual Property Group held its annual symposium on October 14th, 2022. The event—titled “Creative Control: IP in a World of Decentralized Content Creation”—brought together students, faculty, practitioners, and industry members to discuss how changes in structure of content creation have—and will—change intellectual property law. As the entertainment industry has shifted from centralized studios determining whose creation would be distributed to the current ecosystem where Internet platforms have democratized content creation and distribution, how has intellectual property law responded?

The event’s first panel, “The Value of Online Identity,” brought together Karl Fowlkes, Craig Kurland, and Penn Law Professor Anita Allen for a discussion of the challenges and opportunities that face small creators seeking to monetize their identity. The panel opened with the simple question from Professor Allen: what is online identity? In the ensuing discussion, Fowlkes—founder of The Fowlkes Firm, which provides legal service to musical artists and athletes, and Music Business Professor at Drexel University—and Kurland—a leader in the entertainment industry with many years of executive experience in the development, production, and licensing of episodic content—discussed how traditional intellectual property law has merged with the common law to create a bundle of rights that small creators can assert or license. Fowlkes also recounted his experience in aiding NCAA athletes develop their brands after restrictions on such licensing was recently lifted, while Kurland discussed the challenges in launching the premium short-form content network Quibi, which gave some content creators opportunities for participation in larger, studio-caliber programming.

In the second panel, “Licensing in an Era of Small Creators,” Penn Law Professor and Associate General Counsel at Nexxt, Rebecca Clayton, lead a discussion of how to best advise small creators with a group of former and current entertainment lawyers. The panel included Anne Kennedy McGuire, who advises television, movie, and podcast clients as a partner at Loeb and Loeb LLP, Gabrielle Sellei, the founder of Sellei Law LLC and Board Vice President of Philadelphia Volunteer Lawyers for the Arts, and Alan Lewine, a former transactional lawyer and the founder-CEO of his own music production company, Owlsong Productions Inc. The speakers shared the view that dealing with the established channels of content distribution posed challenges for small content creators due to the restrictive terms of the default agreements. In one instance, Sellei shared, a production company seeking to sign an influencer for a show included terms in the signing agreement that would require that influencer to effectively discontinue their online presence. The panelists also provided advice to small creators on obtaining legal assistance: see if you can find help through a Volunteer Lawyers for the Arts (VLA) chapter, seek a recommendation from a lawyer that you already know, or even seek help at a local law school. Moreover, small creators may want to seek legal help early. Often, by the time that creators reached out to one of our panelists, they had already agreed to terms of service that might restrict their rights.

PIPG looks forward to hosting its next symposium in Spring 2023.

Penn Intellectual Property Group Anticipates Exciting Year in IP Law

By Kevin Seltzer, L’24

The Board of the Penn Intellectual Property Group is kicking off another year of discussing IP Law here on the Useful Arts and Sciences Blog. The summer has brought stories in patent, copyright, and trademark law that foreshadow an exciting year of news across the IP fields.

To start, we will be tracking recent developments in a few cases that stand to potentially have a lasting impact on the patent law landscape. First, the Supreme Court declined to grant certiorari in the contentious American Axle case that sought clarity on the notoriously murky Alice/Mayo framework for analyzing patentable subject matter. In the wake of this decision, Senator Thom Thillis introduced new patent legislation that seeks to address the confusion. Second, in an August decision, the Federal Circuit held that artificial intelligence programs could not be named as inventors on patent applications. The decision puts the ball in Congress’s court to amend the patent act’s requirement that only an “individual” may obtain a patent. Finally, in a high-profile move, Moderna filed suit against Pfizer and BioNTech for infringement of its foundational mRNA patent. This existing mRNA vaccine technology was integral to the unprecedented development speed of the COVID-19 vaccines. The move came as a surprise to some as Moderna had asserted it did not intend to enforce its patents during the pandemic.

In copyright law, the Supreme Court will hear oral argument in October in Andy Warhol Foundation for the Visual Arts v. Goldsmith. The cert petition, which the court granted in late March of this year, asks for clarity in the “transformative” test under the fair use defense. The Court will consider whether to uphold or overturn a Second Circuit decision that found that Andy Warhol’s Prince Series failed to sufficiently “transform” the Lynn Goldsmith photograph upon which the series was based.

Finally, perennial NBA all-star Luka Doncic recently filed a petition for cancellation at the Trademark Office that will raise new issues about the revocability of trademark rights. At issue is a trademark—"Luka Doncic 7”— which Doncic's mother registered for Doncic when the 2019 rookie of the year was still a teenaged rising star in Spain’s professional league. This existing registration has prevented Doncic from obtaining registration on a new mark—simply, “Luka Doncic.” (The star now wears number 77 for the Dallas Mavericks.) Because registration tied to a person’s name requires that person’s consent, the question for the TTAB is whether Doncic can revoke the consent he originally granted to cancel the old mark and register the new mark.

The Useful Arts and Sciences Blog looks forward to covering these stories and other emerging IP issues throughout the year.

PTAB Pro Bono Program Sets Out to Level the Playing Field

By Erin Higgins, PhD, L’24

The United States relies on an vibrant innovation ecosystem to support the country’s productivity and economic prosperity. Innovation is not only important for maximizing the nation’s potential, but it also offers numerous benefits and rewards to innovators who can protect their IP and commercialize their; however, a 2018 study showed that there are many “lost Einsteins” among women, minorities, and individuals from low income families for whom access to the innovation ecosystem is limited. Recognizing that diversity is a crucial element for maintaining a thriving innovation ecosystem, the United States Patent and Trademark Office (USPTO) has implemented a number of programs in an effort to make the US patent system, which can be intimidating and may seem prohibitively complex to some, more accessible, especially to innovators belonging to underrepresented groups.

On March 24th, 2022 the USPTO, in collaboration with the PTAB Bar Association, announced the launch of the new Patent Trial and Appeal Board (PTAB) Pro Bono Program. Under the new program, the PTAB Bar Association will serve as a national clearing house, connecting volunteer patent practitioners with eligible inventors in need of legal assistance with ex parte appeals before the PTAB. The program will be expanded to include AIA trials at a later date. According to Drew Hirsfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, this program, developed in furtherance of the USPTO’s commitment to “level the playing field” amongst inventors and provide equitable access to all aspects of the innovation ecosystem, aims to eliminate the barrier of pricy legal fees for under-resourced inventors. The program builds off the success of the USPTO’s Patent Pro Bono Program (PPBP), launched in June 2011.

Much like the PTAB Pro Bono Program, PPBP consists of a network of independently operated academic and nonprofit organizations that match volunteer patent professionals with under-resourced inventors and small businesses for the purpose of securing patent protection. To date, PPBP, with a presence in all 50 states, has matched more than 3,400 inventors and small businesses with patent practitioners. These practitioners have donated more than 84,000 hours of legal services and the program has led to the filing of over 1,800 patent applications. 

In 2021, regional patent pro bono programs conducted a voluntary survey to collect demographic data from PPBP applicants, in an effort to better understand trends in program use. Findings of the survey revealed a number of positive trends. According to survey results, 30% of respondents identified as African American or Black, 1.5% identified as Native American, 5.6% identified as either Asian, Pacific Islander, or Hawaiian Native. Additionally, 14% of respondents self-identified as Hispanic and 41% self- identified as female. To compare, a USPTO study found that in 2016 only 12.8% of all inventors named on U.S. patents were women.

The reasoning behind the gender and race disparities amongst U.S. inventors is complex, including financial factors, barriers to entry, STEM education, and early exposure to innovation; however, this promising data suggests that USPTO programs and services along with proposed legislative recommendations, aimed at expanding access to the U.S. patent system, may serve as one step toward addressing the effects of these imbalances.

ALICE ABYSS: A BEGINNER’S GUIDE TO § 101 CONFUSION

By Brandon Merrill, L’24

“[N]ary a week passes without another decision that highlights the confusion and uncertainty in patent-eligibility law,” writes Judge Paul R. Michel (Ret.), the former Chief Judge of the Federal Circuit, in support of petitioner Universal Secure Registry’s (USR’s) appeal from the Court of Appeals for the Federal Circuit (CAFC) to the Supreme Court.

Since retiring from the Court in 2010, Judge Michel has remained active in discussing important matters of patent policy. In this amicus brief, Judge Michel contends that 35 U.S.C. § 101 has become the “de facto, critical barrier to reliable patent protection.” In essence, Judge Michel believes that since the adoption of the Mayo/Alice framework in the last decade, § 101 rulings have created a patent eligibility barrier that is “confusing, complex, unclear, inconsistent, and unpredictable.”

Specifically, Judge Michel believes that lower courts have overinterpreted the “inventive concept” principle supposed to exist within the Mayo/Alice framework. Judge Michel discusses the case precedent to Mayo/Alice––namely, Gottschalk v. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), and Diamond v. Diehr, 450 U.S. 175 (1981)––to argue the relatively non-existent presence of an “inventive concept” or “inventiveness” requirement in eligibility analysis. Thus, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the “inventive concept” requirement for patent eligibility was “resurrected from Flook after its burial in Diehr.” However, Judge Michel doesn’t compel the current Supreme Court to overrule the Mayo/Alice framework, but rather he asks the CAFC to provide lower courts “a more faithful application” of the § 101 judicial exception test.

In Mayo–Judge Michel argues–Justice Breyer conflated the idea of “conventional” as synonymous with a lack of “inventive concept”, leading to the alarming concern that § 101 analysis has become an “amorphous blob” consuming other requirements for patentability––§ 102 (novelty), § 103 (non-obviousness), and § 112 (specificity). In beginner’s terms, rather than asking the questions regarding whether or not an invention can receive patent protection, courts are fast-forwarding the analysis to whether an invention should be granted patent rights.

Judge Michel relies on recent Federal Circuit cases to elucidate the confusion among Circuit judges. Is an inventive concept “something more than the application of an abstract idea”? Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019). Is it “sufficient specificity”? USR, Inc. v. Apple, Inc., 10 F.4th 1342, 1346 (Fed. Cir. 2021). Is it “specific asserted improvements”? Mentone Solutions LLC v. Digi International Inc., 2021 WL 5291802 at *3 (Fed. Cir. 2021). Even to a patent law novice, it’s not hard to see how the Federal Circuit is contorting § 101 analysis to cover novelty, obviousness, and specification requirements.

But neither is Judge Michel alone in his concern that the Mayo/Alice framework has overstepped its responsibility as an initial screener to patent eligibility. Former USPTO director, David Kappos, has conveyed his belief that patent-eligibility law is “a mess.” Judge Alan Albright, a prominent patent jurist in W.D. Tex., has recently expressed that § 101 law is a “confusing abyss” that is “deeply challenging” to argue and adjudicate. Judge Richard Linn of the Federal Circuit believes that Mayo/Alice is “almost impossible to apply consistently and coherently” in cases concerning abstract ideas. Smart Sys. Innovations, LLC v. Chi. Transit Auth. 873 F.3d 1364, 1377 (Fed. Cir. 2017).

Judge Michel counters that the distinction between § 101 analysis and other statutory factors is much more than an “academic issue.” This conflation serves as a “barrier to patent eligibility” and that disserves both the big corporation and the little guy. Not only does confusion in patent-eligibility expectations deter independent inventors from pursuing IP protection––Judge Michel asks “how are innovators to have any clue as to what ‘something more’ means?––but even large corporations are concerned by the lack of patent-eligibility reform. Ericsson fears that even after being granted a patent after all of the USPTO hoops and proofs, they “may still face a significant likelihood of being declared ineligible”with insecure, yet strict § 101 barriers in litigation.

Further, Judge Michel discusses the broader implications of having a dis-unified patent-eligibility standard on the US’s innovation ecosystem. Because of Supreme Court and Congressional inaction, Judge Michel fears that the consequences are “extremely worrisome” given differing eligibility standards in the Europe and Asia.

Another tangential development in the existing confusion of § 101 jurisprudence is the recent confirmation of Judge Leonard Stark to the Federal Circuit from the District of Delaware. With a pedigree consisting of over 2,400 patent cases as the district court level, Judge Stark’s most notorious legacy has been his over-reaching decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 309 F.Supp.3d 218 (D. Del. 2018), aff’d, 939 F.3d 1355 (Fed. Cir. 2019). Here, Judge Stark characterized an otherwise patentable manufacturing method as a “mere application of Hooke’s law.” By expanding the “directed to a law of nature” inquiry in Mayo/Alice step 1, we’re left asking whether any patent can ever pass the test. To say the least, it will be interesting to watch the developments of the Federal Circuit’s “validity goulash” now that Judge Stark holds a seat at the table too. Id. at 1375 (Moore, J. dissenting).

Though Judges Michel, Albright, and a whole host of other patent law scholars remain fixed on seeing what the Supreme Court will do, we finish by turning to the Biden administration, who has currently delayed their response to the Supreme Court’s cert inquiry on American Axle. After all, the Federal Circuit is “unanimous in [their] unprecedented plea for guidance. Am. Axle & Mfg. v. Neapco Holdings LLC, 977 F.3d 1379, 1382 (Moore, J. concurring). For the Biden administration, it isn’t a matter of deciding if patent-eligibility needs reform, but how to do it, and how to do it well.

For many, it appears that the best answer is found by having the Supreme Court grant cert in American Axle and USR, allowing the newest iteration of the Supreme Court constrict the Mayo/Alice framework in order to promote clarity, uniformity, and reliability among lower courts. As Judge Michel concludes, constricting the § 101 analysis will ensure that US patent law keeps the questions of eligibility separate from the other requirements for patent protection. For this 1L, I just hope it will make my course outline a little clearer too.

IP Suits Proliferate in Upstart NFT Field

By Kevin Seltzer, J.D. Candidate L’24

About a year ago, the term NFT appeared in headlines following the $69 million auction sale of a digital collage. Since then, NFTs have garnered more and more attention as artists and speculators seek to cash-in on the trend. NFTs – short for non-fungible tokens – are “digital assets” that use blockchain technology to establish unique ownership of anything from internet memes and JPEGs of cartoon monkeys, to the ownership right to a pair of sneakers in a warehouse. As a greater quantity and variety of NFTs have become available for purchase, legal questions about their status as securities and exactly what rights they confer have developed. Now, they even face challenges for intellectual property violations.

The spate of recent IP-related NFT suits kicked off in November 2021 with film production and distribution company Miramax filing suit against director Quentin Tarantino after he announced plans to auction off NFTs connected to the 1994 film Pulp Fiction. The NFTs grant the owner the ability to view certain unpublished portions of Tarantino’s original screenplay for the film along with other related content. Miramax took issue with this because, although Tarantino wrote the original screenplay and directed the film, he assigned the copyright and trademark rights to the film to Miramax in 1993. However, Tarantino maintained certain reserved rights during the assignment, which included the publication rights to the screenplay. So, the question arises: do the portions of screenplay which will be sold as NFTs fall under Tarantino’s reserved right to publish the screenplay or were the rights to minting the NFTs included in the assignment to Miramax? Commentators have also questioned whether the NFTs qualify as derivative works, in which case they could be considered the intellectual property of Miramax. Tarantino auctioned the first in a series of seven NFTs for $1.1 million. Potentially ominously, plans to sell the other six NFTs appear to have been put on hold.

In the months since Miramax filed its suit, additional trademark related suits have surfaced. In January, fashion designer Hermès International sued artist Mason Rothschild for creating a collection of NFT handbags dubbed MetaBirkins after the Hermès Birkin handbag. Hermès claimed trademark dilution in addition to other causes of action, and Rothschild has moved to dismiss the suit. In another suit filed in February, Nike brought an action against startup StockX for selling NFTs linked to Nike shoes that StockX would hold in a warehouse and allow users to trade without shipping the shoes themselves. Nike – who recently purchased digital sneaker company RTFKT in a move to potentially enter the NFT filed itself – claims the sale of NFTs based on Nike sneakers“are likely to confuse consumers, create a false association between those products and Nike” and dilute its trademarks.

Considering the expanding number of NFT-related suits, we may soon see courts weigh in on exactly how these digital assets interact with traditional IP rights.Scheduling forMiramax v. Tarantinohas gone forward with discovery set to conclude in late October 2022 and trial scheduled for February 2023.

The CASE Act's Copyright Claims Board Looks to Kick-off in 2022

By Ronni Mok, JD/MBA Candidate L’24

Enacted in 2020, the Copyright Alternative in Small-Claims Enforcement Act (CASE Act) established a Copyright Claims Board (CCB), effectively a small claims court-type system for relatively small copyright disputes, under the U.S. Copyright Office. The Office plans to open the new board, and to start hearing disputes, before late June of 2022.

Congress created the CCB as a voluntary low-cost alternative to federal court for relatively small copyright disputes. Once an author has registered with, or at minimum submitted an application to, the Copyright Office, any copyright infringement claims can be brought to the CCB. Unlike the federal courts, the CCB has limits to the damages it can award: up to $15,000 in statutory damages and no more than $5,000 in attorney’s fees (in cases of bad faith), unless a party shows unusual circumstances. Injunctions can be awarded, but only if the infringer agrees. The CCB will also have limited discovery, and will not apply the federal rules of evidence, allowing the case to be handled with lesser filing fees. Proceedings, however, are voluntary, as the accused infringer can opt out, leaving the federal courts as the only recourse.

Given that small claim proceedings are designed to be more efficient and affordable compared to traditional court filings, the CCB is anticipated to attract more copyright owners. The opt-out provision is a potential problem for creators as it may inhibit the CASE Act’s goal of providing a simpler venue to those who need it the most. Alternatively, copyright law professor Rebecca Thusnet of Harvard University has expressed concerns about potential abusers filing high volumes of claims. In a statement to Bloomberg, Tushnet warns of potential notice and understanding issues.

The initial deadline for implementing the tribunal was December 27, 2021, but the CASE Act allowed the Copyright Office to delay by 180 days, if necessary. Last year, Register of Copyrights Shira Perimutter decided to postpone the formal setup of the small claims copyright tribunal, giving the CCB until May 2022 to kick-off. With the announcement of judges for the board and continuous roll out of proposed regulations throughout 2021 and early 2022, the CCB is expected to start hearing claims as soon as the coming spring.

WHAT HAPPENS WHEN AN APPLICANT MAKES A MISTAKE REGISTERING A COPYRIGHT?

By Jessie Levin, J.D. Candidate L’24

This is the question that the Supreme Court is grappling with in Unicolors, Inc v. H&M Hennes & Mauritz, LP. In this case, Unicolors alleged copyright infringement of EH101, a two-dimensional design for textiles. Unicolors claims that H&M manufactured, sold, and profited from jackets and shirts that included designs that were substantially similar to EH101. In a copyright infringement lawsuit, the plaintiff has the burden of proving two elements: (1) that they own a copyright, and (2) that the defendant infringed it. To establish ownership of a valid copyright, a plaintiff must demonstrate that the work is original, and that it is subject to legal protection (i.e., registered with the United States Copyright Office.)

This litigation hinges on the validity of Unicolors’ copyright. More specifically, the issue before the Court is whether the “Ninth Circuit erred in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration."

Unicolors registered EH101 in a batch copyright application consisting of thirty-one total designs compiled as a single unit. Normally, when parties register copyrights for batches of works, the works must be publicized at the same time. Here, the Ninth Circuit reasoned that the Unicolors’ copyright may be invalid because Unicolors inaccurately registered its copyright by planning to publicize the designs in this batch in different ways and on different days. The Ninth Circuit remanded this case to determine whether the Copyright Office would have refused Unicolors’ registration had it known this information.

Unicolors thought that its error was a good-faith misunderstanding of copyright law, while H&M contends that Unicolors knew the law and used the batch copyright registration incorrectly to file meritless copyright infringement claims. 

The Supreme Court heard oral argument on November 8, 2021. The Court will now have to balance the possibility that parties might make honest mistakes with the fact that some parties are serial plaintiffs that bring shaky copyright claims. Columbia University law professor Shyamkrishana Balganesh predicts that the court will conclude that knowledge and intent is required to invalidate a copyright registration over a mistake. This would have huge implications in the copyright sphere since litigation is blocked without a copyright registration. For serial ‘copyright trolls’ like Unicolors, this could mean that their mechanism in using copyright litigation to drive revenue, instead of enforcing infringement, could be blocked. 

WELCOME BACK!

Welcome back Penn Law students, faculty, and various Useful Arts and Sciences blog visitors! We’re happy you’re here and are thrilled to kick off the 2021-2022 academic year. We hope you find the blog informative, collaborative, and useful for staying in the know on current IP events. The blog also serves to showcase our students and is driven by their passion and unique perspective.

In a few blog posts below, 2L and Managing Blog Editor Tyler Gruttadauria provides a quick recap of some of this summer’s important IP decisions. Stay tuned for more!

We love feedback and are always looking for contributions to the blog. Please don’t hesitate to reach out to us at pennlawip@gmail.com.

WALKER PROCESS CLAIMS ARE NOT NECESSARILY SUFFICIENT FOR THE FEDERAL CIRCUIT TO ASSERT SUBJECT MATTER JURISDICTION

By Tyler Gruttadauria J.D. Candidate L’23

The Federal Circuit held that it did not necessarily have jurisdiction over Walker Process antitrust claims involving a patent, where the cause of action was not derived from patent law nor was there a substantial patent law question left to resolve. 

Chandler, the plaintiff, alleged that Phoenix Services, the defendant, committed a Walker Process antitrust violation by maintaining and enforcing a patent on a fracking process that was unenforceable due to inequitable conduct. Prior to this suit, the Federal Circuit had affirmed the unenforceability of Phoenix’s patent in view of the applicant’s failure to disclose numerous public uses of the claimed subject matter more than one year before the application’s filing date.  

A Walker Process claim is a cause of action arising under antitrust law. A plaintiff is required to prove that the antitrust-defendant obtained its patent by fraud on the Patent Office and maintained and enforced that patent with knowledge of the fraudulent procurement, and that the plaintiff can satisfy all of the other elements necessary to establish a Sherman Act monopolization claim. 

Chandler alleged that a Walker Process violation existed because Phoenix continued to list its patent on the Phoenix website after it had been held unenforceable. Chandler alleged this represented continued maintenance and enforcement of the patent. The district court disagreed and granted summary judgment to Phoenix in 2019. Chandler appealed to the Federal Circuit. But Phoenix moved to transfer the case to the Fifth Circuit because it argued the Federal Circuit lacked jurisdiction.

Although the Federal Circuit has jurisdiction over any final decision of a district court in any civil action arising under any Act of Congress relating to patents, not all cases involving a patent fall withing its jurisdiction. A cause of action that involves an underlying patent is not sufficient to require Federal Circuit jurisdiction unless patent law creates the federal cause of action or the plaintiff’s right to relief necessarily depends on resolution of a substantial question of patent law. 

Here, the Federal Circuit determined that it lacked jurisdiction to hear the appeal of a final determination on this Walker Process claim because (1) the cause of action arose under the Sherman Act rather than patent law, and (2) the claims at issue did not depend on the resolution of a substantial question of patent law. Because the enforceability of the patent was no longer at issue given the Federal Circuit’s prior 2018 decision, there were no patent law questions left to answer. Thus, this case would have no effect on the real-world result of the prior federal patent litigation.

CLAIM CHARTS ARE NOT REQUIRED FOR PATENT INFRINGEMENT PLEADINGS

By Tyler Gruttadauria, J.D. Candidate L’23

In Bot M8, the Federal Circuit held that plaintiffs at the pleading stage in a patent infringement suit must meet the plausibility standard established by Iqbal/Twombly. But, plaintiffs are not necessarily required to plead infringement on an element-by-element basis to meet this standard. Thus, the district court erred in its dismissal of two of Bot M8’s patents because it applied an excessive pleading standard.

Bot M8 alleged that Sony infringed five patents that were related to gaming machines and directed to video games. Sony filed a motion to dismiss for failure to state a claim. After requiring Bot M8 to “explain in [the] complaint every element of every claim that you say is infringed and/or explain why it can’t be done,” the district court dismissed Bot M8’s allegations for four of the five patents.

Prior to 2016, a plaintiff could assert a claim for patent infringement alleging nothing more than the minimum set of facts required by Form 18 in the appendix of forms for the Federal Rules. That is, the plaintiff essentially only had to identify the patent, claim ownership of the patent, and allege the defendant infringed.

In 2016, the Supreme Court abrogated Form 18, and now patent claims have to satisfy the pleading standard established by Iqbal/Twombly. However, in the years since this abrogation, district courts have struggled to resolve a single, clear standard for what a plaintiff is required to allege in order to plead a claim for patent infringement that is plausible on its face. 

The Federal Circuit held that the Iqbal/Twombly pleading standard does not necessarily require a plaintiff to allege infringement with an element-by-element analysis. The court found that the district court simply required too much and that Bot M8 need not prove its case at the pleading stage. Instead, the relevant inquiry under Iqbal/Twombly is whether the factual allegations in the complaint are sufficient to show that the plaintiff has a plausible claim for relief. Given the context-specific nature of such an inquiry, the level of detail necessary for a pleading varies depending on the complexity of the technology, materiality of any given element, and the nature of the infringing device.

The court further noted that it was possible to plead too much. It chided Bot M8 for its “kitchen sink” pleading approach for two patents, which revealed inconsistencies in the pleadings that led to the district court’s proper dismissal of those claims of infringement.

Bot M8 supported two of its patent infringement claims with specific factual assertions identifying error codes displayed by Sony’s PlayStation 4 prior to a game starting that supported a plausible inference that the PS4’s fault inspection program can be concluded prior to the start of a game, rendering the claim of infringement at least plausible. To avoid a motion to dismiss under Rule 12, nothing more is required, and thus, the district court erred. 

IN MINERVA, SUPREME COURT CLARIFIES APPLICATION OF ASSIGNOR ESTOPPEL

By Tyler Gruttadauria, J.D. Candidate L’23

The Supreme Court’s 5-4 decision in Minerva v. Hologic, Inc., issued on June 29, 2021, reaffirmed that the judicial doctrine of assignor estoppel remains good patent law.  But, the Court held that the Federal Circuit’s application of the doctrine had been too rigid, and clarified that the doctrine only applies when its underlying principle of fair dealing comes into play.

Novacept, Inc. is the owner of a patent directed to a device capable of improving the treatment of abnormal uterine bleeding. Novacept’s device, the NovaSure System, uses a “moisture permeable” applicator head to avoid burning or ablation while the device operates to remove targeted cells in the uterine lining. The FDA approved the device in 2001. In a series of sales following the FDA’s approval, Hologic, Inc. acquired Novacept’s IP assets and sold Novacept’s device across the United States.

In 2008, Csaba Truckai, founder of Novacept and inventor-assignor of the original NovaSure patent, founded Minerva Surgical Inc., and developed a device similar to the NovaSure System. But, Minerva claimed its device was distinct because its applicator head is “moisture impermeable.” The FDA approved Minerva’s device in 2015.

Meanwhile, Hologic sought a continuation application for the NovaSure System. In a strategic play, Hologic drafted a broad claim covering applicator heads without regard to moisture permeability. The PTO issued the patent from Hologic’s continuing application in 2015, and Hologic filed suit just months later alleging that Minerva’s device infringed its new patent.  Minerva attempted to argue that the asserted patent was invalid because the broad new claims were not supported by the 2001 specification, which only addressed moisture-permeable applicator heads.  But, Hologic objected to Minerva’s validity challenge on the basis of assignor estoppel.

The doctrine of assignor estoppel is a judicially-created doctrine intended to prevent inconsistent representations about a patent’s validity. An assignor of a patent is estopped from challenging its validity.  It embodies the principle that the assignor of a patent cannot fairly attack the right he formerly sold.

Over time, the Supreme Court has clarified some of the doctrine’s limitations, while recognizing that other questions may have to be resolved at a later date. It has held that an assignor cannot later challenge the validity of a patent, but they may still use prior art to narrowly construe a claim to avoid infringement.  And, while the Court had speculated that assignor-estoppel may work differently for an issued patent than for a pending application, the Court had not had the occasion to decide that issue one way or another.

Here, the District Court applied the doctrine of assignor estoppel preventing Minerva from raising an invalidity defense, and the Federal Circuit affirmed. The Supreme Court granted certiorari to consider whether the doctrine of assignor estoppel was still good law, and if the Federal Circuit had applied it correctly.

A majority of the Court, led by Justice Kagan and joined by Justices Breyer, Sotomayor, Kavanaugh and Chief Justice Roberts, declined Minvera’s request to abolish assignor estoppel altogether.  The majority did not accept Minerva’s argument that Congress’s decision not to incorporate assignor estoppel into the 1952 Patent Act abrogated the doctrine, because many judicial doctrines, like res judicata, survive without being incorporated into statute.  Nor did the majority agree that its other opinions had effectively abrogated the doctrine already.  In particular, the Court’s decision to abolish the doctrine of licensee estoppel did not extend to the present case, because licensee estoppel could not be supported by the principle that parties should be bound by their representations in a negotiation in the same way that assignor estoppel could.  And, the Court did not accept that modern policy rationales favoring the elimination of bad patents justified abolishing the doctrine, because the fundamental fairness principles supporting the doctrine remained compelling. 

However, the majority did find the Federal Circuit’s application of assignor estoppel to be overly rigid, and held that the doctrine could only be applied where it implicated principles of fairness and fair dealing.  That is, assignor estoppel could only bar challenges to validity that purport to undermine the assignor’s implicit or explicit warranties and representations.  But, where an assignor could not reasonably make representations about the validity of an assignment, the doctrine cannot apply.  For example, common employment agreements to assign future inventions to the employer would not implicate the doctrine because the employee could not make representations regarding the validity of an invention that has not come into being.  Or, where the governing law changes following an assignment, the assignor can challenge the validity of a patent grounded in that change.  And most importantly here, if the claims of a pending application change and broaden after it is assigned, the doctrine does not apply because the assignor could not have warranted the validity of the new claims. 

The Federal Circuit had erred by holding that it was irrelevant whether the claims had been broadened after they were assigned.  The Court therefore remanded the case to consider that question.

The decision included two dissents, the first by Justice Alito writing for himself, and the second by Justice Barrett writing for the remaining dissenters.  Justice Barrett would have found that the 1952 Patent Act did not ratify prior precedent recognizing assignor estoppel.  Justice Alito largely focuses his attacks on his fellow dissenters, but dissents himself because he would have squarely addressed whether that underlying precedent should be overruled. 

The Court’s decision in Minvera extends a recent Supreme Court trend of eliminating clear but rigid Federal Circuit doctrines, in favor more nuanced and fact-specific approaches.  The doctrine of assignor estoppel remains good law, but courts must consider whether to apply it in view of what, specifically, the assignor warranted or could have warranted when the assignment was made.  This may greatly limit the application of the doctrine in cases concerning assignments of future inventions, such as in employment agreements, and in the assignment of pending applications where the claims are subject to change.  And, other implications may still need to be explored.