Artificial Intelligence Systems Are Not Inventors… Yet.

Recently, an Artificial Intelligence (AI) named DABUS (“Device for Autonomous Bootstrapping of Unified Sentience”) made international media buzz when it was listed as an inventor on patent applications filed in the United States Patent and Trademark Office (USPTO), United Kingdom Intellectual Property Office (UKIPO) and the European Patent Office (EPO).  While there have been thousands of patent applications for various AI systems, from machine learning (ML) systems, to neural networks, generative adversarial networks (GANs) and beyond, this is at least one of the first AI systems to be listed as the inventor itself.

What is DABUS

Developed by Stephen Thaler, a well-known expert in the field of AI, DABUS is an implementation of a type of generative adversarial network (GAN), where two or more neural networks are used to play against one another in order to improve the outputs of at least one of the neural networks to create something different and new.

In the most common implementation, a GAN comprises two neural networks.  The first is a generator, which is used to generate new data (e.g., images, text).  The second is a discriminator, which is used to determine whether the data generated by the generator is real or fake.

In order to determine fakes, the discriminator is given a (preferably large) dataset of real data to compare the data generated by the generator against.  Like a high-tech game of cops and robbers, the discriminator is trying to identify the fake data provided to it from the generator.  Each time the generator fails to convince the discriminator of the validity of its generated data, it learns.  This process is repeated at the incredible rate that computing does these days.  The results, can be stunning.   In fact, a piece of artwork generated by such GANs recently sold at Christie’s for $432,000.

DABUS operates on this same principal.  Give a dataset to a discriminator as a training model and let the generator try to fool the discriminator.  Now, of course, Dr. Thaler uniquely calls his generator an Imagitron, and his discriminator a Perceptron, but ultimately it is still a GAN, doing what a GAN does.

What did DABUS “Invent”

Without getting into the debate or hype over what was actually “conceived” by DABUS, the actual products that were more aptly described as “designed” by DABUS are: 1) an interlocking food container; and 2) a light that flashes in a particular way that mimics neural activity.  I do not intend to go into the details of these inventions, as they have been discussed ad nauseum elsewhere.

Regardless of what DABUS designed, the inventions themselves were based on datasets and information provided to it.  As was said excellently elsewhere, “[DABUS] was ‘mentored’ by Dr. Thaler over a two month period to produce increasingly complex concepts.”  Put differently, DABUS did not set out on its own to solve the problem of interlocking containers or calming pulsating lights; rather, DABUS was tasked with solving these concerns.

The Patent Applications

The three patent applications were submitted by a group led by Ryan Abbott, a professor of law and health sciences at the University of Surrey in the United Kingdom.  Not unsurprisingly, a novel question of law has been raised by an academic.  And that is not a criticism, but rather an acknowledgement that patent law will have to address certain pressing questions about the patentability and ownership of inventions in a world that is increasingly being influenced by artificial intelligence and its effects.

The question at issue here is whether, given the “creative” output of DABUS qualifies it as an “inventor” under the laws of the patent offices the applications were filed in.  For instance, in the USPTO, the Manual for Patent Examining Procedure defines an inventor as a person who contributes to the conception of the invention.

Here, Dr. Abbott and his team are suggesting that DABUS, through its processing of the data into a useful invention, contributed to its conception in such a manner that it would have to be considered an inventor under that definition.  Others, such as Dr. Noam Shemtov, state that DABUS, and other AI systems are merely tools.  In a 2019 report commissioned by the EPO, Dr. Shemtov writes:

When it comes to a human actor that uses an AI system, whose identity may be inconsequential to the invention process, who simply uses a machine learning technique developed by another, the inventor may be the person who “tooled” the AI system in a particular way in order to generate the inventive output. Hence, under such circumstances the person that carries out the intelligent or creative conception of the invention may be the one who geared up the AI system towards producing the inventive output, taking decisions in relation to issues such as the choice of the algorithm employed, the selection of parameters and the design and choice of input data, even if the specific output was somewhat unpredictable[i].

While I tend to agree with Dr. Shemtov’s analysis of current AI systems as tools that individuals use to provide useful output, that is not to say that it is impossible to conceive that an AI system in the future will able to identify a problem, identify available materials/components/data, and solve the problem on its own, all without human intervention or direction.  And herein lies where Dr. Abbott’s filing of the patent applications with DABUS as an inventor is truly aimed at addressing – AIs as inventors.

AI Inventorship

Dr. Abbott’s true intention appears to be raising the debate over whether current statutory regimes at the various patent offices would allow for an AI to be listed as an inventor, given that even at present, it could be rationalized that the AI is part of the conception of the invention.  However, in the case of DABUS, it seems that there is a strong argument that the conception was at the hands of Dr. Thaler, and DABUS merely reduced the invention to practice.

Regardless, the issues related to having an AI system as an inventor are definitely worth bringing to light.  Dr. Abbott told BBC News, “These days, you commonly have AIs writing books and taking pictures – but if you don’t have a traditional author, you cannot get copyright protection in the US.”  And Dr. Abbott is not incorrect.  The United States Copyright Office published an opinion in 2014 stating that, “[O]nly works created by a human can be copyrighted under United States Law.”

Dr. Abbott continued, stating to BBC News, “So with patents, a patent office might say, ‘If you don’t have someone who traditionally meets human-inventorship criteria, there is nothing you can get a patent on.’ In which case, if AI is going to be how we’re inventing things in the future, the whole intellectual property system will fail to work.”  And again, Dr. Abbott is not incorrect.  35 U.S.C. § 100 defines an “inventor” as the “individual” who invented or discovered the subject matter of the invention.  If an AI system conceived of both the problem and the inventive solution to that problem, it becomes more difficult to say that the inventor of the AI system itself was the inventor of that invention, leaving that IP unable to be secured by patents under the current regime.

Similar inventorship issues arise in both the UK, where the UK Patents Act of 1977 requires an inventor to be a person, and the EPO, where in the EPO’s published opinion written by Dr. Shemtov states, “[I]t has been shown that is is unambiguously implicit that AI systems cannot be identified as inventors.”

All three patent offices where these DABUS patent applications have filed are aware of the issue and are reviewing options and requesting input from the community.  In fact, On August 27, 2019, the USPTO just released a Request for Comments on Patenting Artificial Intelligence on the Federal Register, asking for input on whether current US patent laws need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an invention.

 Conclusion

While lofty news articles have hyped the filing of these patents in DABUS’s name, let us not fall for the smoke and mirrors associated with the current state of AI systems.  At least in the vast majority of existing AI systems, they are not inventors as we define them for the purpose of patents in the US.  They are advanced tools that assist in the reduction to practice of inventive concepts and inventions themselves.  DABUS is not an inventor for the purpose of US patent law.  However, using the leverage and momentum of a good news cycle, DABUS has been able to push forward the conversation on what will inevitably be questions about ownership and protection of all forms of Intellectual Property generated by AI systems in the future.

[i] Dr Noam Shemtov, “A study on inventorship in inventions involving AI activity” (2019)

FaZe Clan Strikes Back – Brings Breach of Contract Suit Against TFUE in New York

In May if 2019, Turner Tenney (aka “TFUE”) brought suit in the Superior Court of California in an attempt to have the Court invalidate a “Gamer Agreement” he signed the year prior with FaZe Clan on the grounds that the Gamer Agreement was either: i) breached by FaZe Clan; or ii) unenforceable as being illegal or anti-competitive in light of California Law.

The filing of this lawsuit by TFUE tore through the eSports community and has opened up a discussion as to how eSports players are to be treated under the law, and put a microscope on a relatively new and largely underregulated industry that is skyrocketing in popularity.   In an industry where gamers like TFUE can go from relative unknowns to making $20 million in one year, actions such as these are inevitable.

Even though the Gamer Agreement (linked here) had a clear choice of law and forum selection clause that indicated the laws and courts of New York would be exclusively used to adjudicate disputes, TFUE’s legal team brought the initial suit in the Superior Court of California.  The reasons are obvious, in that California’s laws are much more protectionary than those of New York, and TFUE’s legal team tries to leverage provisions in California’s Talent Agency Act to claim that Faze Clan is in violation operating as an unlicensed talent agency, as well as certain provisions under California’s Business and Professions Code.

Now just a few months later, FaZe Clan strikes back by filing its own suit in the Federal District Court for the Southern District of New York (SDNY) for breaches of the Gamer Agreement by TFUE.  The complaint alleges that TFUE breached the Gamer Agreement by: i) failing to make payments to FaZe Clan in amounts owed under the agreement; ii) working with other organizations in violation of the agreement; iii) breaching confidentiality and trade secret clauses; iv) breach of non-disparagement obligations; and v) intentional interference with contracts (e.g., by taking actions that would induce others to leave or not engage in contracts with Faze Clan.

It is interesting to see these claims, as the main social media push from FaZe Clan representatives, such as Ricky Banks, in response to TFUE’s filing of the California based lawsuit was that they purposefully did not collect on TFUE’s earnings under the Gamer Agreement, and that they had no intention to collect. However, there is little doubt that, regardless of social media posturing, or actual intent to collect, using these contractually agreed upon terms to force settlement by TFUE on all matters, is just what one would do in this situation.

Also important to note is that concurrent with the filing of this lawsuit, FaZe Clan’s attorney’s filed a motion to dismiss the California suit as being brought in the incorrect forum (per the Gamer Agreement’s requirement that such suit be brought exclusively in New York), or, in the alternative, stayed until FaZe Clan’s action in the SDNY concludes.  This will be an interesting motion to watch and see how it plays out, given the non-contract related claims in the California matter.

TFUE’s attorney for the California Matter has already issued a statement on FaZe Clan’s lawsuit against TFUE to the Hollywood Reporter, stating:

“Faze Clan’s lawsuit in New York is a ridiculous and obvious attempt to avoid the consequences of its clear violations of California law. Filing the lawsuit in New York is actually an admission that Faze Clan has no defense to these violations of California law. Ask yourself, why is Faze Clan is afraid to litigate its wrongful conduct in California? The answer is obvious. Faze Clan will lose. In the New York lawsuit, Faze Clan actually admits to violating California’s Talent Agencies Act by procuring employment without a license. Equally egregious is the fact that Faze Clan is suing Turner under its illegal contract for the monies it publicly represented that it was not collecting. This is the first time in the history of Esports that an Organization has had the audacity to try and enforce contractual provisions that are so clearly illegal against one its gamers.”

While understandable that TFUE’s attorney would want to present his client’s actions in a positive light, I believe his assertions in his statement may be a bit of an embellishment.  I have read FaZe Clan’s compliant, and I am not so sure that it acts as an admission that FaZe Clan has no defense against the matter brought in California, or an admission that they violated the Talent Agency Act – in fact I believe that statement is a stretch.  I also find slightly humorous the engagement of, FaZe being “afraid” to litigate in California.  As attorneys, we rightfully select choice of law and forum provisions so that we can provide certainty to our clients as to what laws each party could expect to be bound by.  It’s a bit odd to say that a party is “afraid” to go to a forum they did not agree to, when both parties agreed to a different forum.  However, ultimately, these statements, coupled with the goading of Faze Clan by chiding them for filing a suit for fees they publicly said they had no interest in collecting on, are clearly meant for the court of public opinion, not the actual adjudicating bodies themselves.

We will have to wait to see what the public and social media backlash is against FaZe Clan, if any, for filing such a suit, after making claims that it had no intention on collecting on the amounts it was potentially due under the agreement.  If we learned anything from the filing of TFUE’s lawsuit, it should be an interesting couple days on the social media networks, as each side presents their case in the court of public opinion, while their lawsuits slowly make their way through the legal process.

 

Content Creators be Warned: Twitch’s New Subscriber Only Streams May be at Odds with Game Publishers’ Terms of Service

Just last week, Amazon owned preeminent streaming platform, Twitch, launched a beta program for providing a subscription-only streaming service.  Through the program, content creators can provide a stream that is only accessible to viewers who have a paid subscription to the content creator’s channel.

While it may be admirable that Twitch is attempting to create new revenue streams for content creators who can have a hard time generating revenue from their streams, this new program likely runs afoul of the terms of service of many major publishers.

 

Terms of Use Examples

Blizzard

Neither you nor the operator of any website where your Production(s) may be viewed can force a viewer to pay a “fee” to be able to view your Production(s).

Riot

We permit individual players to solicit personal donations or offer subscription-based content while live-streaming games, so long as non-subscribers can still watch the games concurrently.

Epic

[Videos] must have no commercial (i.e., monetary) objective. As an exception to this, fans are permitted to monetize web videos (such as YouTube) with advertisements, so long as those videos otherwise meet the requirements of this Policy.

Steam

Use of our content in videos must be non-commercial. By that we mean you can’t charge users to view or access your videos. You also can’t sell or license your videos to others for a payment of any kind.

 

Each of these policies seems to restrict the pay-for-subscription streaming model being pushed by Twitch’s new beta program.  Some of these Terms of Service do have additional caveats, but none of them specifically address whether a subscription-based model offered by Twitch would be covered by them.  For instance, Steam’s Terms of Service notes that, “You are free to monetize your videos via the YouTube partner program and similar programs on other video sharing sites,” but it is unclear whether Steam would view Twitch’s subscription model as something similar to YouTube’s partner program.

One thing to consider as a content creator is that the punishment for violations of these Terms of Service are likely to be only enforced against the content creator using Twitch’s subscriber view only model.  Content creators could face restrictions placed on their game accounts, or have their account banned altogether for using the service.  A risky proposition for most content creators.

However, banning an account is not the only action a publisher could take.  A published could take a content creator to court for copyright infringement and breach of their Terms of Service.  While unlikely, it is no longer unheard of.  For instance, Epic recently sued two gamers for copyright infringement for modifying Fortnite code.  This may be the extreme case, but it would technically be in the publisher’s right to bring content creators to court for making unauthorized derivative works of their copyrighted materials.

Given the size and clout that a platform like Twitch has, it is likely that the publishers will be quickly issuing insight on how Twitch’s subscription model fits into their Terms of Service.  Particularly since it is well known that having a large Twitch audience increases game sales.

Until then, it may be advisable for content creators to know the terms of service for the games they intend to stream under the subscription model, and take caution or avoid utilizing the subscription service until such time as the publisher of that game gives guidance on the acceptability of the model with their own Terms of Service.

Amazon’s New Patent Infringement Review Process is Boon to Patent Holders but Holds the Potential for Abuse

Amazon recently implemented a streamlined process for patent holders to assert claims of infringement against sellers of products on the Amazon marketplace.  The process, which Amazon is calling the Utility Patent Neutral Evaluation Procedure (UPNEP), allows for patent holders to request a neutral evaluator to determine whether a single claim of a granted utility patent is infringed by up to 50 separate products.

The timelines are tight, the stakes are high, and the process is over in a relatively short period of time.  With no current option for appeal or review, it is important for those that rely on Amazon for their profits to take these UPNEP reviews seriously.  Below, we discuss the process, the pitfalls and how the system can be potentially gamed, and how to navigate this new process as Amazon more fully rolls it out into production.

 

The Process

The patent holder initiates the process by submitting a simple complaint to Amazon, which largely identifies who the patent holder is, the patent and single claim to be reviewed, and the identification of products to be evaluated.  One submitted, the sellers are contacted and given three weeks to decide whether they wish to participate in the dispute.  The seller confirms its desire to participate by completing a similarly simple agreement that identifies the seller and the products the seller wishes to have reviewed.  Any identified seller that does not participate in the process will have their listing removed from Amazon.

Once the seller(s) and the patent holder have submitted the necessary paperwork, Amazon identifies a neutral patent attorney to act as an arbiter for the evaluation.  Each side must then submit $4,000 to the identified patent attorney, to be held in escrow until the resolution of the matter.  Where there are multiple sellers, the sellers split the $4,000 payment equally.  If the seller(s) fail to submit payment, their listings will be removed.  If the patent owner fails to submit the payment, any deposits paid by the seller(s) will be returned, and the listings will remain.

After the agreements and the escrow is handled, the Patent Neutral Evaluation Procedure begins, and with it, some very tight deadlines.  Unlike traditional litigation, where discovery, motion practice, settlement conferences and other matters can require years to complete, the UPNEP process takes less than four months.  While the shortened timeline is great for patent owners, it does create some issues, as there are no provisions for extensions, and the response and reply deadlines are tight.

The deadlines for the UPNEP are:

  • The patent owner has 21 days from the commencement of the UPNEP to submit its initial brief;
  • The seller(s) then have 14 days to respond to the initial brief; and
  • The patent owner then has 7 days to file a reply to the response.

The filings are similar to standard motion for summary judgment practice, with the first filing being from the patent owner attempting to show how the accused product(s) infringe the single identified claim, through use of images, claim charts, and written arguments.

The seller(s) then get the right to respond to the patent owner’s initial filing.   The three arguments seller(s) are allowed to make are: i) non-infringement of the claim of the patent; ii) invalidity of the patent based on prior ruling of the United States Patent and Trademark Office (USPTO), International Trade Commission (ITC), or a federal court of the United States; and iii) invalidity of the patent based on products being sold more than one year before the earliest priority date of the patent (i.e., the “on-sale bar”).

Finally, the patent owner can reply to the response of the seller(s), in order to counter any information submitted by the seller(s).  The reply is optional, but is generally advisable, and failure to file a reply will not trigger an automatic victory to the seller(s).

There are page limits for each of the above filings, making it important to focus on the best arguments and evidence available.  This also helps both sides, as it keeps the review laser focused, and not bogged down in tons of information collected in discovery, as would be the case in standard patent litigation practices.

After all the filings are completed, the neutral patent evaluator will return a decision within fourteen days.  The evaluator will determine whether the product(s) of the seller(s) “likely infringe” the claim of the patent at issue.  If the evaluator determines that the product(s) do likely infringe the patent, then the listings are removed and the patent owner is refunded her $4,000.  If the evaluator determines that the product(s) are not likely to infringe the claim, then the seller(s) get their $4,000 back and the listings are unaffected.

Before the conclusion of the evaluation, the parties may independently settle with one another.  If the patent owner and the seller(s) come to an agreement, then the evaluator keeps $1,000 from each of the parties (total $2,000), and the balance is returned to the parties.

 

Pros for Patent Owners

Ultimately, for valid patent owners that have their patents being infringed upon on Amazon, the Utility Patent Neutral Evaluation Procedure is a real boon.  It provides quick and easy resolution to infringement matters, and can be done across numerous sellers in a single filing.  If the patent owner were to do this through federal courts or other legal avenues, an action would need to be filed against each seller individually, and would take potentially years to complete.  The time and cost savings here are immense.

Another advantage of the Utility Patent Neutral Evaluation Procedure is that, given these are administrative filings with Amazon, the location of the sellers is irrelevant.  This means that troublesome jurisdictional issues, especially with regards to foreign sellers, are also not an issue that can complicate the proceedings.

With that said, there are strategies to be considered by patent owners with respect to how to file.  For instance, given that sellers can effectively pool their resources, allowing up to 50 sellers to assemble their finances to hire top patent counsel to submit a response on their behalf, it is important to consider the strength and weaknesses of any UPNEP before filing.  In some instances, filing individual complaints against sellers may be advantageous, in order to see which sellers are willing to pony up the $4,000 to fight a UPNEP proceeding by themselves – especially considering that the patent owner can have one initial brief prepared and file that brief individually against each separate seller that does continue to fight.

Conversely, where the case for infringement is strong, then assembling as many sellers into one big group can save the patent owner significantly on both expense and time, knocking out whole groups of competitors at one time.  For many patent owners, this could be an extremely enticing option, as bringing that many small sellers into

Further, where settlement is the desire, such as attempting to obtain a license from one or more sellers, patent owners may leverage the UPNEP process to force quick action on settlement negotiations, with the risk of the seller’s products being delisted from Amazon as a consequence of not taking prompt action on acquiring a license from the patent owner.  This may also play into the decision as to whether to bring the UPNEP against one or a group of sellers, as it may be easier to negotiate with one seller, as opposed to a group of sellers.

 

Potential for Abuse

Of course, the Utility Patent Neutral Evaluation Procedure comes with the potential for abuse as well.  Patent owners, even those with weak or otherwise questionable patents, may file actions against sellers, with the idea that at least some will not have the wherewithal to put up the $4,000 payment for the action, or be able to pay for counsel to prepare a response to submissions by the patent holder.  Amazon is filled with small mom and pop sellers that would be unable to proceed and would have to accept licensing terms from the patent owner or have their product delisted.

Further, given the limited ways in which a seller can defend against the claims of the patent owner, which consist of a smaller subset of the entire list of arguments defendants in federal court actions can use, patent holders with otherwise invalid patents may wield them as a sword in these UPNEP proceedings without fear of invalidation.  In fact, many non-practicing entities may look to capitalize on forcing settlement/licensing agreements with sellers, since there is no risk of invalidation through the UPNEP proceeding.

Finally, given the quick and tight deadlines, sellers may be under the gun to try to get representation and follow through with the filings in order to protect their listings.  For those sellers not currently engaged with counsel, it could take precious time away from their ability to prepare an adequate defense to a patent owner’s claim.  Where in federal courts or before the USPTO, a defendant can request extensions when counsel needs time to review a matter in full, that does not appear to be an option with Amazon’s UPNEP.

With all of the above said, however, nothing prevents sellers or patent owners from taking the matter to a federal court, ITC or the USPTO, if they do not get their way via Amazon’s UPNEP.

 

Conclusion

All-in-all, Amazon’s UPNEP is just one more way in which Amazon is getting serious about infringement on its platform.  The UPNEP offers a very viable and cost-effective platform for both patent owners and sellers to adjudicate their rights quickly and relatively easily.

No matter whether you are a patent owner or an Amazon seller, it is important to consider retaining counsel for these disputes.  Given the limited amount of back-and-forth, the short timelines, and the significance of what is on the line, ensuring that your submissions are as legally sound as possible is a must.

If you are a patent owner looking to file UPNEP complaints, speak first with a qualified patent attorney, preferably one with experience dealing with Amazon and sellers on Amazon.  If you are a seller that has received a UPNEP action against one or more of your listings, the same goes – quickly obtain patent counsel to provide a substantive defense, as the dates will pass quickly, and the more time counsel has, the better job they can do to protect your rights.

 

 

 

 

Federal Circuit Ruling Cast Shadow Over USPTO Subject Matter Eligibility Guidance

In January of 2019, the United States Patent and Trademark Office (USPTO) issued revised guidance relevant to 35 U.S.C. § 101 (Subject Matter Eligibility) rejections. Entitled, 2019 Revised Patent Subject Matter Eligibility Guidance, the document added a new pathway for patent eligibility, whereby a claim that includes a judicial exception is still subject matter eligible under 35. U.S.C. § 101, if the judicial exception, such as an abstract idea, is “integrated into a practical application” of the judicial exception.

A large portion of the legal community felt that the guidance would cut the number of rejections under 35 U.S.C. § 101.  The guidance provided much needed clarity on how to present claims in an application to avoid such rejections, which had become commonplace in several art units at the USPTO.

This updated guidance has been largely welcomed by the legal community.  In fact, in its comments to the USPTO on the matter, the American Bar Association stated, “[T]he guidelines are a significant improvement in the examination of patent eligibility by providing a greater degree of certainty and increased predictability in subject matter eligibility determinations at the USPTO.[i]”  However, with quite a bit of foreshadowing, the American Bar Association’s letter noted, “We understand that these Guidelines, however, do not constitute substantive rulemaking and thus do not ‘have the force and effect of law.’”

Fast forward to April 1, 2019, the Federal Circuit found two patents owned by Cleveland Clinic invalid for being directed to ineligible subject matter.  The patents in question were related to testing for cardiovascular disease, and in the opinion of the court, “invalid under 35 U.S.C. § 101 as directed to an ineligible natural law.[ii]

Cleveland Clinic had argued that the courts “failed to give the appropriate deference to subject matter eligibility guidelines published by the PTO.”  Relying on Skidmore v. Swift & Co., 323 U.S. 134 (1944), Cleveland Clinic argued that, “Skidmore ‘requires courts to give some deference to informal agency interpretations of ambiguous statutory dictates, with the degree of deference depending on the circumstances.’[iii]”.

However, the Federal Circuit noted, “While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.”

So while the USPTO appears to be loosening the reigns on subject matter eligibility, the Federal Circuit does not appear to be following suit.  And while the Cleveland Clinic v. True Health case did not specifically address the 2019 Revised Patent Subject Matter Eligibility Guidance, the courts opinion clearly noted that the USPTO’s guidance was not the ultimate arbiter on subject matter eligibility.

Ultimately, from a prosecution perspective, it may be wise to not solely rely on the broader interpretations of subject matter eligibility provided under the latest USPTO guidance, and include at least some claims that would survive more rigorous scrutiny under the tests outlined and applied by the Federal Circuit and the Supreme Court of the United States.

 

[i] https://www.uspto.gov/sites/default/files/documents/eligibility2019comments_a_abaipl_2019mar07.pdf

[ii] http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1218.Opinion.4-1-2019.pdf

[iii] See, Stephenson v. Office of Pers. Mgmt., 705 F.3d 1323, 1330) (Fed Cir. 2013)

5 Things you Need to Know about Software Patentability in 2019

If you are a developer, tech startup or otherwise considered trying to protect your amazing new idea or technology based in software, you probably have already looked into patents as a potential way to secure those technologies.  (I highlight idea, as we will come back to that very salient point in a minute).    Probably one of the first things you run across is everyone talking about Alice!

Who is Alice?  When people refer to Alice, they are referring to a Supreme Court decision in the case of Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).  In 2014, this was a landmark ruling that shifted the applicability of 35 U.S.C. § 101 to certain types of inventions.  One central component of this shift was related to the patent eligibility of inventions that were based in software (or those that were otherwise based on abstract ideas).

We will not dive too deep in the analysis of Alice in this article for two main reasons: 1) it has been covered ad nauseum elsewhere; and 2) the ruling is over 4 years old and while Alice is still the root to most eligibility analyses, there have been numerous rulings since that have broadened, extended and clarified exactly what is and is not patent eligible subject matter.

So let’s start with this, for all you developers and executives at software companies:

 

  1. Software is Patentable

Let us be clear, software is patentable, when done correctly.  Even things you and I may feel are simple processes are still protectable.  For instance, Gaming Arts, LLC. just received a patent for a software based “BINGO GAME WITH BONUS FEATURE” (See US Patent 10,242,531), and Sony Interactive Entertainment jut received a patent for playing a sound effect when a computer detects a user saying a trigger word (See US Patent No. 10,242,674).   Both were issued on March 26, 2019.

It is important to note that a utility patent covers the functionality of the software, through defining the software in terms of systems and methods.  What patents do not cover is the actual code.  Source code is covered largely by copyright, which can protect direct copying of the code, but does not provide protection against those who write their own code to do the same thing.  And that is exactly where patents step in.

Now, there is a certain bare minimum that must be reached for a software system and/or method to be patentable.  Which brings us back to why I highlighted idea back in the beginning.  Ideas are not patentable in and of themselves, as they are abstract and fall squarely into the realm of what is not patent eligible.

 

  1. An Idea is Not Enough

If you are forming the next great startup and you want to be the “Uber for X” or the “Instragram for Y”, that is not, in and of itself, going to get you cross the finish line for patent eligibility.   Remember, software patents are directed to covering systems and methods.  Software almost always is nothing more than a series of steps (i.e., instructions) that drive a computer to take some action (e.g., process data).  Some data goes in, software directs the computer as to what to do with that data, and the output is some generally useful result.  Whether it is finding the closest Uber, matching you to your next soulmate, adding two numbers together, or calculating the trajectory of a rocket for sending a payload into space, it all boils down to some data going in, being processed, and a result being output.

When putting together a patent to protect your invention, your invention must be more fully flushed out than simply stating in conclusory terms what your software will do.  The abstract idea alone is not protectable, but the steps you use to get to the solution (i.e., method) may be.  Develop the flowcharts for how your great idea gets from problem A, to solution B.  The road in between is your patentable method.  For some help on this topic, the United States Patent and Trademark Office (USPTO) has provided a useful resource in the form of a Quick Reference Sheet for Identifying Abstract Ideas.

Remember, the more flushed out your idea is, the more it becomes a methodology which may be protected.

 

  1. What you Disclose in your Patent is Important

The content you put into your disclosure is king when it comes to your patent filing, especially for software related inventions.   The basic requirement for a patent application is that the drawings and specification disclose the invention in enough detail that one of ordinary skill in the art would be able to practice the invention without undue experimentation.   While that is the bare minimum, remember, if it is in your application, you can use it later during examination to overcome examiner’s arguments related to novelty, obviousness and even indefiniteness.  Conversely, if you do not include detailed descriptions of the various aspects of your invention, you cannot later use them in your arguments.

One thing that should be remembered when preparing a patent application for software methods is that even though you may be filing a patent application for your unreleased software product that will be launched soon as an initial version (e.g., v1, beta), there is no need to limit the patent application disclosure to just the features that are in the software now.  In fact, there is no requirement to have a working prototype in order to file a patent application on an invention.  This is particularly important with software, where you may be going to market with a minimum viable product (MVP), but have a roadmap that goes through several iterations, versions and include numerous improvements and features not present in the MVP.

Since there is no requirement to have a working prototype, and the enablement requirements only require that you be able to describe the invention in enough detail that one or ordinary skill in the art would be able to practice the invention – something probably already at least partially contained in your roadmap – you should consider putting details of all your future concepts, features and improvements in your application.   What this does is secure your priority date for all of the future features and improvements you have planned.

This strategy also allows you to use these features and improvements in arguments and amendments during examination.  It generally takes 18-24 months to enter substantive examination at the USPTO.  By this time, you will have a greater insight as to what features and improvements became a big hit, and those that did not pan out as planned.  This allows you to focus the examination of the application on those key features that were later implemented, without the need to file additional patent applications on an ongoing basis.

Further, by disclosing additional features and improvements in the first application, you can later file one or more continuation applications at a later time to secure patents on the individual features and improvements at a later time.  Each of these continuation applications get the benefit of the earlier filing date, even though they may be filed years later.

 

  1. How you Write the Patent is as Important as the Technology

What you disclose in the application is only part of it.  How you write the application is critical.   The words you use can end up coming back to haunt you, by unnecessarily limiting the breadth and scope of your rights, or otherwise acting as self-sworn statements that you cannot back away from.

For instance, restrictive words, like, “only”, “must”, “always”, and “never” may limit the scope of an invention.   If in an application, the disclosure states, “The system always does X before Y”, then you have been committed to a system that either always does X before Y, or never does Y (if you don’t do X, you cannot do Y).  These kind of limitations can poke holes in the breadth of an application, particularly when related to software, where there are frequently dozens if not hundreds of other ways to accomplish a task.  Think to yourself when drafting or reviewing an application whether the statements you are making are really requirements, or just simply one way you have chosen to implement the solution.

In another example, statements about what have been done in the past or are done in an industry can act as prior art against your invention.  This is known as “Applicant Admitted Prior Art” (AAPA) and can be disastrous in certain cases.  Commonly found in the background section of a patent, some applicants (or their patent attorneys or agents) may end up making statements that go beyond what actually IS prior art and inadvertently giving up certain rights by making such statements.

Further, even beyond just admissions of prior art, statements in the application about what is well-understood, routine and conventional in the art can come back to haunt inventors and applicants, as this can give grounds to the examiner to provide a subject matter rejection under 35 U.S.C. § 101.  Avoid these statements at all cost, as they are generally unnecessary and add little value to the actual disclosure itself.

However, the recent federal circuit opinion in Berkheimer v. HP, Inc., 881 f.3d1360 (Fed Cir. 2018) also confirmed that the concept of applicant admissions in a patent specification works in the opposite direction as well.  In Berkheimer v. HP, Inc., and a later USPTO memo regarding implementation of the ruling as it relates to patent examination practice. In this case, the court found that the applicant’s statement that the novel improvements contained in the application were not convention, and represented an improvement over the art, created a factual dispute that would not permit a finding otherwise under a motion for summary judgment.  Simply put, feel free to include statements throughout the specification as to how the disclosed software works or functions differently than conventional software, and how it provides improvements over the conventional or routine functionality of other software.

 

  1. New Guidance Makes Obtaining Software Patents Easier

When it comes to patents on software based systems and methods, Alice’s spectre still haunts us to this day.  Examiners are still issuing subject matter eligibility rejections under 35 U.S.C. § 101 on otherwise valid and protectable systems and methods that are based in software.  Frequently, these rejections are held up only by loose accusations and conclusory statements about an abstract idea contained in the claims.

However, on January 4, 2019, the USPTO announced the issuance of revised guidance relevant to 35 U.S.C. § 101 (Subject Matter Eligibility) rejections. Entitled, 2019 Revised Patent Subject Matter Eligibility Guidance, the document adds a new pathway for patent eligibility, whereby a claim that includes a judicial exception is still subject matter eligible under 35. U.S.C. § 101, if the judicial exception, such as an abstract idea, is “integrated into a practical application” of the judicial exception.

Since the issuance of the new guidance, we have seen very favorable action on subject matter eligibility involving the “integration into a practical application” analysis as it relates to software patents.  For instance, on March 19, 2019, the USPTO marked as “Informative” the Patent Trial and Appeals Board (PTAB) finding in Ex parte Smith (2018-00064).  The matter involved “claims directed to a hybrid trading system for concurrently trading securities or derivatives through both electronic and open-outcry trading mechanisms.”

The board initially identified the claims as being directed to methods of organizing human activity, a category of inventions under 35 U.S.C. § 101 that constitutes an abstract idea, namely fundamental economic practices.  The board then reviewed the claims under the revised guidance relevant to 35 U.S.C. § 101 (Subject Matter Eligibility) rejections. Using this guidance, the board determined that the claims were “integrated into a practical application” of the abstract idea, and therefore patent eligible subject matter.

Interestingly enough, the board’s determination that the claims were “integrated into a practical application” was based on use of timers to delay automatically executing market orders (i.e., electronic) to allow “in-crowd” market orders (i.e., from “in the pits”).

However, we do have to be cautious with regards to this guidance, as the Court of Appeals for the Federal Circuit (CAFC) just stated in its opinion in Cleveland Clinic Foundation v. True Health Diagnostics LLC on April 1, 2019, that, “while we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance.”

 

 

Nike’s Deal to Bring Virtual Jordan Brand Air Jordan 1s to Fortnite is the Best Example of Crossover Branding Ever

 

 

With over 250 million registered players, Fortnite is unquestionably become a gaming phenomenon.  The free to play battle royale style game, where up to 100 players drop from flying bus into a large island in order to gun one another down in a slightly cartoonish style in order to become the last person standing, has taken over the gaming industry.  It’s no secret that the Fortnite style of game play, known as battle royale, has become ubiquitous in the gaming community, with most multiplayer game developers launching some form of the game play style on their own titles.

Fortnite is largely funded by players who, as opposed to paying anything for the game itself, pay for items that personalize their appearance (i.e., “skins”).   This is a strategy that has clearly worked for Epic Games, the developer of Fortnite, which reportedly grossed $3 billion in 2018 with this model.

Epic has been running a massively successful branding and advertising operation through Fortnite, having collaborations with the likes of Marvel’s Avengers: Endgame, Summit Entertainment’s John Wick, the NFL, and Wendy’s.

Now, in its latest move, Epic has teamed with Nike’s Jordan Brand to bring a set of skins that have the characters wearing classic Air Jordan 1s.  These virtual kicks will be offered in various color schemes, like the venerable red and black associated with the Chicago Bulls.  The skins, like most in Fortnite, will be offered only for a limited time.

This collaboration between Nike and Epic is perfect on so many levels.  Given the limited time offering of the skins in Fortnite, and the similar mass appeal of Jordan Brand shoes among a very dedicated type of consumer, the synergies are perfectly aligned.  There is little doubt that the sneaker heads will be dropping plenty of V-Bucks (the in-game currency used in Fortnite, which can be earned over time or purchased with real world currencies) on these new skins.

Another great aspect of this collaboration is that we are seeing real world companies put branded products in virtual worlds, and capitalizing off of it.  While it is not public what the split is on these virtual goods, it is in any case a win for both Epic, which is undoubtedly going to profit from the sales of the Air Jordan 1 skins, and Nike, by keeping its products relevant in new mediums in attempts to maintain one of its flagship brands, which faltered slightly in 2018.

From an intellectual property standpoint, the deal is interesting as we see not only Nike’s licensing the Jordan branding for certain use in the game, but also the generation of new virtual IP, in the form of the in-game graphical representations of the sneakers.  These are the kind of deals we will undoubtedly see more and more of, as video games and eSports become ever more a part of the mainstream fabric.   It will become even more interesting as the professional eSports players start having not only brand deals with companies for out-of-game endorsements, but what will invariably be in-game endorsement deals as well.

The future is bright for the eSports community, and deals like the one between Nike’s Jordan Brand and Epic’s Fortnite serve as a reminder that we are on the verge of an entirely new world of advertising and branding principles.

One Video Gamer May Change How The eSports Industry Is Regulated

On Monday, May 20, 2019, eSports icon Turner ‘tfue’ Tenney filed a lawsuit against Faze Clan Inc. (i.e., FaZe Clan), the gaming collective that made him a star.  Tenney wants the courts to release him from a 3.5 year “Gamer Agreement” he signed with FaZe Clan on April 27, 2018.

Tenney shot to stardom almost immediately after signing with FaZe Clan, earning millions of fans across a variety of social media and video streaming platforms through playing the popular battle royal game Fortnite.  Between streaming revenues, tournament victories, sponsorships and other revenue sources, it is estimated that tfue has made between $3 million and $5 million (USD).

According to the complaint, the Gamer Agreement included provisions that allowed FaZe Clan to claim a “finder’s fee of up to eighty (80) percent of the revenue paid by third-parties for Tenney’s services.”  Something that FaZe Clan boss, Ricky Banks (AKA FaZe Banks), denies entirely.  In an interview, Banks claims that FaZe Clan has only made $60,000 off of two endorsement deals it originated for Tenney, representing a 20% cut – something Banks refers to as “standard.”  Banks goes on to state that FaZe Clan has collected zero percent of Tenney’s prize winnings, streaming revenues or tournament winnings.

The complaint, which was filed in the Superior Court of the State of California, in Los Angeles County, is aimed at getting Tenney’s contract with Faze Clan declared invalid.  Among various legal arguments made, Tenney’s counsel argues that the Gamer Agreement with Faze Clan runs afoul of California’s Talent Agency Act.  The Act requires any person who “who engages in the occupation of procuring, offering, promising, or attempting to procure employment or engagements for an artist” must be licensed and conform to professional regulations. The definition of artist in the Act is broad, including any person “rendering professional services in motion picture, theatrical, radio, television and other entertainment enterprises.”

Other arguments made in the complaint for invalidating or terminating the Gamer Agreement include: failure to pay revenues received by FaZe Clan for work done by Tenney; illegal and anti-competitive restraints related to the “Exclusivity and Matching Right” portion of the Gamer Agreement; and unlawful, unfair or fraudulent business practices.

Regardless of the merits of Tenney’s arguments related to whether Faze Clan is operating illegally as a Talent Agency under California Law, the lawsuit underlines a growing concern in the eSports industry.  As the complaint highlights, “unlike traditional ‘sports’,” the revenues in eSports are driven by videos and other content generated by the gamers themselves.  In general, eSports players make more money in YouTube views and streaming on platforms like Twitch, than on tournament earnings.

The eSports world is very new, and as such, law makers have not had much time to review and regulate the industry effectively.  With eSports expected to become an over $1 billion a year in revenue industry in 2019, and the broader influencer marketing industry estimated to reach $10 billion by 2020, there is serious money at stake.  In fact, more and more cities either have or are building their own dedicated eSports stadiums, like the Blizzard Arena in Burbank, or Philadelphia’s Fusion Arena.  ESports is no longer an untried fad; it is here to stay.

Couple this with the fact that the professional gamers themselves are usually young, with many being minors (Benedict “MrKCool” Ward was 14 when he was signed in 2016),  there is a significant risk of them being exploited.  Tenney himself was 20 years old when he signed with Faze Clan.

It is not dissimilar to child actors, or young sports talents, in that without proper representation and counsel, bad deals will be made.  With so much at stake, it is truly important for both the gamers and their representatives, whether it be parents or professional agents/counsel, to understand what they are agreeing to when entering into any kind of talent agreement.

On the other side of things, it is just as important for the professional gaming leagues, clans and other collectives to ensure that their contracts with talent do not run afoul of any legal requirements or restrictions, like those alleged by Tenney’s counsel.  Just as important is to ensure that these organizations take a long view on their agreements with talent, as there are numerous revenue streams to address, and player turnover can be an issue.

These organizations must also consider their ability to cut or trade gamers, similar to how professional sports leagues do with their players.  Unlike traditional professional sports, where the game is the same year in and year out, the games played by eSports gamers/teams change, and there is no guarantee that today’s Fortnite superstar will be the same talent in Apex Legends, or whatever comes next.

Having counsel that understands and appreciates the complexity of eSports and how it differs from representing other forms of talent is critical in ensuring that nothing is overlooked.  While the eSports industry may be relatively new, the concepts and issues are not, especially to counsel that grasps the landscape and relevant issues.  This is ultimately what will provide the stop gap in ensuring both gamers and organizations are properly protected, while awaiting the inevitable regulation of the industry as a whole.

Federal Circuit Decides You Can Patent Those Gains – Dietary Supplements Are Subject Matter Eligible

On March 15, 2019, the Court of Appeals for the Federal Circuit (CAFC) heard an appeal in the matter of Natural Alternatives International, Inc. v. Creative Compounds, LLC regarding the subject matter eligibility of dietary supplements.  At issue in the case were six patents related to the CarnoSyn® beta-alanine athletic performance supplement.

In reversing the lower court’s ruling, the CAFC found that each of the six patents contained patent eligible subject matter under 35 U.S.C. § 101.   In fact, the court found that the patents directed at the beta-alanine product, method of manufacturing the beta-alanine product, and method of using the beta-alanine product for treatment (i.e., improving athletic performance), were are all subject matter eligible, and therefore patentable.

With regards to the patents on the beta-alanine product, the Court noted that, “A claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and ‘the potential for significant utility.’”  In the present case, the court found that the combination of a specific form of beta-alanine and glycine, and that the specific dosages of beta-alanine may increase athletic performance in a way that naturally occurring beta-alanine may not.

With respect to the patents on the method of administering beta-alanine, the Court likened the claims to those at issue in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Ltd, noting that, “Claims that are directed to particular methods of treatment are patent eligible[i].”  Here, the claims in the method patents are directed to administering beta-alanine to a human subject in order to overcome homeostasis and increase creatine production, resulting in physiological benefits to the subject.  The Court, in no unclear terms noted, “These are treatment claims, and as such they are patent eligible.[ii]

Finally, with regards to the manufacturing claims, the Court also found that subject matter eligibility under 35 U.S.C. § 101 was met by the fact that the claims were “[D]irected to the manufacture of a human dietary supplement with certain characteristics,[iii]” and that, “The supplement is not a product of nature and the use of the supplement to achieve a given result is not directed to a law of nature.[iv]

It is clear from the Court’s analysis that it is important to take certain precautions when drafting the specification and claims of patents directed to these dietary supplements and related products.  Here, the Court appeared to rely heavily on interpretations pulled from the specification of the patents at issue in order determine the claims were subject matter eligible.  For instance, the court looked to the specification of the patents to find the significance of dosing ranges, how they were calculated based on bodyweight, and how those dosing ranges were required to effectively increase athletic performance.   Applicants would be wise not to submit skimpy disclosures with a bare minimum of detail, as it could mean the difference between validity and invalidity of a patent.

Ultimately, the Court’s findings in the matter provide welcome guidance on the ever-challenging issue of subject matter eligibility under U.S.C. § 101.  The ruling gives clarity on the ability of sports nutrition companies to secure the lucrative rights in their proprietary performance enhancing dietary supplements; the dietary supplement market being valued at $152 billion (USD) as of 2018, and expected to grow to $220 billion (USD) by 2022[v].

 

 

[i] Natural Alternatives International, Inc. v. Creative Compounds, LLC

[ii] Id.

[iii] Id.

[iv] Id.

[v] https://www.statista.com/statistics/828514/total-dietary-supplements-market-size-globally/