The term Artificial Intelligence itself has largely become the generic term used to describe a variety of related but different concepts, often wrapping together AI, Machine Learning and Generative AI as if they all relate to the same thing, or as if there is a single technology that is, in fact, AI. These related but different technologies differ in scope, function, techniques used, and they also differ in terms of trustworthiness and reliability. Much of what will discuss today will tackle the technical issues that face the industry and innovators in this space. Specifically, we will discuss the various practical manifestations of AI, ML, and Generative AI as they currently exist in 2024, and are likely to exist in the near future. We will attempt to separate fact from fiction with respect to what these technologies can currently do, what the technology does well versus what the technology struggles with, and what the industry can expect moving forward.

While obviousness-type double patenting (ODP) has a long history, Supreme Court precedent and common sense make it clear that the time has come to put ODP to rest. The original rationale for it has long passed, and it is a judicially-created exception to the patent statute that cannot stand. This dinosaur policy of patent law should be put down by the Federal Circuit, Congressional action, or the Supreme Court.

Filing a patent internationally demands attention to many considerations, including subject matter, where to file, budgets, timing, translations, and local legal and procedural frameworks. There are several jurisdiction-specific legal issues related to filing of patent applications that are more commonly appreciated such as the need to recognize where the subject invention was made and the citizenship and residency of the inventors.

On July 12, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Natera, Inc. v. NeoGenomics Laboratories, Inc. affirming a grant of preliminary injunction that prevents NeoGenomics from making or selling its RaDaR oncology testing assay. The Federal Circuit’s opinion, authored by Chief Judge Kimberly Moore, found no legal error in the district court conducting an infringement analysis without claim construction, and no clear error in finding that NeoGenomics failed to raise a substantial question of patent validity.

This week in Other Barks & Bites: A group of senators introduces the COPIED Act; WIPO begins its annual assemblies meetings; and the European Union publishes the final text of its landmark AI Act.

As software products and services increasingly take advantage of the emerging capabilities of artificial intelligence (AI), software developers and companies that license software face evolving legal risks and contractual considerations. Software developers and licensees that fail to negotiate clear software license agreements that account for unique aspects of licensing AI-powered software may find themselves facing unexpected liability or costly software license dispute litigation. When drafting and negotiating software license agreements, parties should carefully consider the legal implications of developing and using software that incorporates AI.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal published a Director’s blog post today addressing the Office’s current backlog of patent and trademark applications, which the latest USPTO data shows to be 785,387 unexamined applications/ 25.6 months total pendency for patents and 14.5 months total pendency for trademarks. Vidal said in her blog post that “unpredictable macro effects, including a pandemic that had an outsized impact on our application inventories, have created an ‘inherited backlog’ of both patent and trademark applications.”

Software as a Service (SaaS) has emerged as a dominant model for delivering software solutions. Before SaaS, we tended to buy and use increasingly powerful computers to run increasingly powerful software locally. The advent of high-speed, wireless, always-available Internet connectivity shifted this model towards cloud-based software execution, with our local devices acting mainly as “thin clients” that interface with remotely executed software. However, certain functions, such as highly sensitive encryption and low-latency tasks like conversational AI, still need to be performed locally. This results in a complex and fluid division of labor among distributed systems.

Bette Midler. Vanna White. Marylin Monroe. Each of these women has undoubtedly shaped pop culture in some meaningful way. Perhaps what is lesser known is that litigation surrounding each of these women has shaped the legal world’s understanding of an individual’s right to publicity. Many states still do not formally recognize a right to publicity, while other states that do recognize such a right are not uniform. Some of these states recognize the right by statute, others by common law. Some states allow for posthumous rights to publicity, while others terminate the right at death. And some states only accord rights of protection to certain characteristics (e.g., name and image), while other states extend rights of protection to other identifiers, such as one’s voice.

The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) notice of proposed rulemaking (NPRM) on terminal disclaimer practice was July 9 and several key organizations weighed in just as the door was closing. One of those commenters was the Federal Trade Commission (FTC), which claimed in its comment letter that “[t]he use of terminal disclaimers linking similar patent claims can exacerbate the exclusionary impact of patent thickets by forcing potential market entrants to incur the high cost of challenging multiple duplicative patents.”

This week, there were an average number of patent filings at the Patent Trial and Appeal Board (PTAB) with 38 new filings—two post grant reviews and 36 inter partes reviews (IPRs)—while the district court saw a below-average 48 new filings. At the PTAB, Directv filed seven petitions challenging as many Entropic Communications LLC [associated with FIG LLC (d/b/a Fortress Investment Group LLC)] patents. Amazon also filed seven petitions this week, challenging five Nokia Technologies Oy [associated with Nokia Corporation] patents. Apple filed four petitions challenging four Y.M.R. Tech Ltd. and S.M.R. Innovations Ltd. patents.

Last week, just before the holiday weekend, U.S. District Judge Ada Brown of the Northern District of Texas issued a memorandum opinion supporting the entry of a preliminary injunction against the Federal Trade Commission’s (FTC) final rule banning non-compete provisions from U.S. employment contracts. While the requested relief is limited to the plaintiffs named in the action, the ruling marks an important victory for business interests opposing the rule and intellectual property advocates warning about likely harms to trade secret protection within the United States.

“Ding-Dong, the Witch is Dead”—the Witch being the extraordinary agency overreach into law that Congress never passed, emboldened by the 1984 U.S. Supreme Court (SCOTUS) case of Chevron U.S.A. v. Natural Resources Defense Council, 467 U.S. 837, and enabled by a weakened judiciary told to give agency action presumptive deference on the construction and application of federal statutes. Loper Bright v. Raimondo, (603 U.S. ___ (2024)), issued June 28, 2024, almost 80 years after the 1946 enactment of the Administrative Procedure Act (APA) and 40 years after the Chevron decision, may usher in a new era with a breath of fresh air.

The U.S. District Court for the District of Columbia today dismissed the remaining counts in Judge Pauline Newman’s challenge to U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Kimberly Moore’s inquiry into her fitness to continue serving as a federal appellate judge. The decision sets the stage for an appeal, which Newman’s lawyer told IPWatchdog will happen “within days, not weeks.”

As in house counsel, I encounter many different managers and engineers with varying levels of support and enthusiasm for patents. I’m a big proponent of patent trainings because for most inventors identifying and submitting inventions isn’t obvious or intuitive, but that’s where a strong patent portfolio starts. The description below is more specific to a large global corporation but may be generally applicable to various corporate sizes and types.