Other Barks & Bites for Friday, September 22: CAFC Says Reasonable Expectation of Success Findings Can Be Implicit; Authors Guild Sues OpenAI for ‘Flagrant’ Copyright Infringement; EPO Report Finds Massive Growth in 3D Printer Patent Filings

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This week in Other Barks & Bites: The CAFC says reasonable expectation of success findings can be implicit when combined with other analyses; Yale University settles a ketamine patent royalty dispute with the Department of Veterans Affairs for $1.5 million; the USPTO announces Mary Fuller as the new director of the Silicon Valley Regional Office; a group of famous authors files a lawsuit against OpenAI accusing the generative AI company of copyright infringement.


CAFC Affirms PTAB Obviousness Finding in Precedential Decision on Radiation Therapy Patents

On Friday, September 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Patent Trial and Appeal Board (PTAB) decision finding certain claims of Elekta Limited’s U.S. Patent No. 7,295,648 unpatentable as obvious. Elekta challenged the Board’s findings regarding motivation to combine and reasonable expectation of success. In particular, the court said the Board’s findings on reasonable expectation of success, which it did not articulate explicitly,  were not in error because “a finding of reasonable expectation of success can be implicit.” Addressing the seeming tension with the Administrative Procedure Act (APA), which requires the Board to explain its findings with “sufficient precision,” the court said, “there is no such tension where the Board makes an implicit finding on reasonable expectation of success by considering and addressing other, intertwined arguments, including, as we hold today, a motivation to combine.” 

USPTO Updates Website Search Tool in Bid to Improve User Experience for All Visitors

On Thursday, September 21, the USPTO launched an updated tool to search for general information on its website. The updated search experience includes new features, functionality, and customization options for website visitors. “We are excited to launch this newly enhanced search tool, which will provide website visitors with a better, more efficient search experience,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal. The USPTO hopes the tool will allow visitors to more quickly access the content that they are looking for. 

Yale Settles Ketamine Patent Dispute with Department of Veteran Affairs

On Thursday, September 21, the Department of Justice announced that Yale University and one of its professors agreed to pay $1.5 million to the Department of Veteran Affairs (VA) for failure to share patent royalties. The patents covered an intranasal ketamine spray to treat depression. While the patent applications acknowledged VA funding, the government accused the applicants of failing to disclose the patents to the VA. “It is critical that inventions funded with taxpayer money be fully and timely disclosed to the government,” said U.S. Attorney Vanessa Roberts Avery for the District of Connecticut. “This settlement shows our commitment to ensuring that the government is fairly compensated for all taxpayer funded inventions.” 

Authors Guild Sues OpenAI for Copyright Infringement on Behalf of Popular Authors

On Tuesday, September 19, the Authors Guild filed a lawsuit on behalf of some of the most popular U.S. writers accusing OpenAI, the maker of ChatGPT, of copyright infringement. The group of authors including, John Grisham, George R.R. Martin, and Jodi Picoult, claimed the generative AI company flagrantly and harmfully infringed their copyright by copying their novels wholesale without permission. According to the lawsuit, OpenAI uses large language model algorithms to create human-sounding texts based on a prompt. Maya Shanbhag Lang, president of the Authors Guild said, “this case is merely the beginning of our battle to defend authors from theft by OpenAI and other generative AI.”

INTA Files Amicus Brief in Iceland Trademark Dispute

On Tuesday, September 19, The International Trademark Association (INTA) filed an amicus brief in a case before the General Court of the European Union (GCEU) that addresses the registrability of country names as EU trademarks. The trademarks in the case were registered in the EU by a British supermarket chain called Iceland, but the Icelandic government filed for a cancellation of the trademark. The INTA has argued that state names should not be excluded from trademark registration and asked the court to determine case-by-case if a specific state or geographical name is descriptive or non-distinctive with respect to the trademark’s specific designated goods/services.

EPO Report Finds Significant Growth in 3D Printer Patent Filings

On Tuesday, September 19, the European Patent Office (EPO) released a study that found 3D printing patent filings have grown eight times faster than the average of all technologies in the last decade. According to the report, 3D printer patent filings grew at a 26.3% annual rate between 2013 and 2020. The US leads the way in 3D printer patent filings at around 40%, followed by European countries at 33%. The EPO wrote, “this report shows how vital 3D printing is to fostering innovation and sustainability across sectors around the world.”


Copyright Office Extends Deadline for Comments on AI

On Thursday, September 21, the U.S. Copyright Office (USCO) extended the deadline for members of the public to submit written comments regarding artificial intelligence and copyright. The deadline for initial written comments is now October 30 and reply comments are due by November 29. AI has become an important topic of discussion for the USCO with several important decisions broadly outlining the Office’s intentions.

Patent Infringement Suit Becomes First Ever Live Transcription in an Indian Trial

According to Bar & Bench, on September 20, the first ever hearing recorded via live transcription in India took place at the Delhi High Court in a patent infringement suit. According to the report, this was “India’s first trial with live transcription of evidence and arguments.” The suit was brought by American-Canadian company, Communication Components Antenna Inc, against a German company, Rosenberger.

USPTO Patent Center Will Fully Replace Former Online Patent Application and Management System on November 8

On Wednesday, September 20, the USPTO announced the Patent Center system will fully replace the USPTO’s previous tools for the electronic filing and management of patent applications on November 8. The Patent Center launched six years ago, and the USPTO has performed user testing and made changes based on public feedback. “At the USPTO, we are dedicated to providing the most reliable tools to offer a seamless approach for our users,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

USPTO Announces Mary Fuller as New Director of Silicon Valley Regional Office

On Tuesday, September 19, the USPTO appointed Mary Fuller as the director of the Office’s Silicon Valley Regional Office. Fuller will assume the new role on September 25, replacing Steve Koziol the current Acting Regional Director, who will return to his previous role as Managing Assistant Regional Director. Fuller has experience in the region working at various startups and tech firms as well as at the Santa Clara University School of Law working as a Senior Clinical Fellow and adjunct professor. “With decades of experience as an engineer, patent attorney, general counsel, educator, and corporate advisor, Mary will help the USPTO spur innovation across the nation’s Western Region,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

USPTO Releases Streamlined Search Tools to Aid Innovators

On Monday, September 18, the USPTO announced upgrades to its website to improve the site’s search tools. The new improvements cover search tools for the whole website as well as patents and trademarks. The Public Patent Search (PPUBS) now allows full-text-search of patents, and the Office will soon release a beta version of an updated trademark search. “Through these and other improvements, we are committed to enhancing our services to America’s innovators to provide a better user experience,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal.

This Week on Wall Street

Rupert Murdoch Steps Down as Chairman of News Corp and Fox News

On Thursday, September 21, Rupert Murdoch stepped down as chairman of News Corp and Fox News and will be replaced by his son Lachlan. The announcement marked the end of a 70-year career that made Murdoch one of the most powerful figures in media. The end of his time as chairman comes at a tumultuous time for the media conglomerate with Fox News settling a defamation lawsuit for a record-breaking $787.5 million. Lachlan Murdoch is now the sole chair of News Corp and works as CEO of Fox Corporation.

Musk Hints at Subscription Fee for All Twitter/X Users

On Monday, September 18, Elon Musk owner of X, the social media platform formerly known as Twitter, suggested in a livestream with Israeli Prime Minister Benjamin Netanyahu that the platform may soon charge all users a monthly subscription fee. Musk has previously suggested putting the website behind a paywall after the was legally bound to purchase the company for an inflated $44 billion. In the hour-long conversation, Musk said that ad sales halved since he took over the company and claimed the only way to combat bots on the platform was to put the whole site behind a paywall.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2022 are announcing quarterly earnings next week (2022 rank in parentheses):

  • Monday: None
  • Tuesday: None
  • Wednesday: Micron Technology (17)
  • Thursday: Nike (111), Accenture (177)
  • Friday: None



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Join the Discussion

5 comments so far.

  • [Avatar for B]
    September 24, 2023 09:02 pm

    @ Josh “If everything can be declared implicitly obvious then there is no use in having patents.”

    This is Judge Reyna remember – followed by Stoll and Stark. It’s a clueless convention. Reyna cites nonsense from Hughes (https://casetext.com/case/cie-v-gnosis-s-pa#p841), and Hughes’ drivel is based on an idiotic assumption that Judge Newman tears apart in her dissent. Newman’s dissent is based on the idea that, while the PTAB rejected the idea that a reference “taught away” there was zero evidence presented of a likelihood of success. “The panel majority errs in law, in stating that ‘the PTAB impliedly found a reasonable expectation of success’ based on the PTAB’s finding of no ‘teaching away. Such ‘implication’ resides only in the backward-looking eye of the beholder.”

    No wonder the CAFC is trying to get rid of Newman given the confederacy of dunces ruling Madison Place

  • [Avatar for Josh Malone]
    Josh Malone
    September 24, 2023 01:38 pm

    Giberrish masquerading as law from the PTAB and Federal Circuit. If everything can be declared implicitly obvious then there is no use in having patents.

  • [Avatar for Alan]
    September 23, 2023 10:32 am

    I 100% agree with Pro Say – implicit reasonable expectation of success is sick. That is so wrong. I was on the wrong side of some very early PTAB FWDs where there was no mention of reasonable expectation of success … nor motivation to combine. Rule 36 Judgments for both.
    The burden was shifted to the patent owner to prove non-obviousness. Fed. Circuit judges had their head in the sand and didn’t want to do the work necessary to explain their position, since there wasn’t any evidence to support the judgment. With Judge Newman unavailable for the next year, which of these judges is going to stand up for the rights of patent holders and the law? This is going to further embolden APJs to not fairly address reasonable expectation of success. They can cite to this case and say it is implicit based on the record. That is so wrong, wrong, wrong.

  • [Avatar for Pro Say]
    Pro Say
    September 22, 2023 05:30 pm

    “CAFC Affirms PTAB Obviousness Finding …”

    Implicit reasonable expectation of success?! Implicit!?

    Intertwined with motivation to combine?! Intertwined!?

    Sick. Just sick.

    Yet another off-the-rails, innovation-killing tool they’ve added to their anti-patent bag o’ tricks.

    Congress: Time to end the experiment which is the CAFC.

    Long past time.

  • [Avatar for Anon]
    September 22, 2023 05:20 pm

    Not sure that I would put much weight in a study, just now concluding, on a data set that is three years removed (“EPO Report Finds Significant Growth in 3D Printer Patent Filings”).