Case: 21-2347 Document: 60 Page: 1 Filed: 08/05/2022
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`STEPHEN THALER,
`Plaintiff-Appellant
`
`v.
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE, UNITED
`STATES PATENT AND TRADEMARK OFFICE,
`Defendants-Appellees
`______________________
`
`2021-2347
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Virginia in No. 1:20-cv-00903-LMB-
`TCB, Judge Leonie M. Brinkema.
`______________________
`
`Decided: August 5, 2022
`______________________
`
`RYAN BENJAMIN ABBOTT, Brown, Neri, Smith & Khan,
`LLP, Los Angeles, CA, argued for plaintiff-appellant.
`
` DENNIS BARGHAAN, JR., Office of the United States At-
`torney for the Eastern District of Virginia, United States
`Department of Justice, Alexandria, VA, argued for defend-
`ants-appellees. Also represented by JESSICA D. ABER;
`FARHEENA YASMEEN RASHEED, PETER JOHN SAWERT,
`
`

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`Case: 21-2347 Document: 60 Page: 2 Filed: 08/05/2022
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`THALER v. VIDAL
`
`MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
`United States Patent and Trademark Office, Alexandria,
`VA.
`
` MITCHELL APPER, Jerusalem, Israel, amicus curiae, pro
`se.
`
` ______________________
`
`Before MOORE, Chief Judge, TARANTO and STARK, Circuit
`Judges.
`
`STARK, Circuit Judge.
`This case presents the question of who, or what, can be
`an inventor. Specifically, we are asked to decide if an arti-
`ficial intelligence (AI) software system can be listed as the
`inventor on a patent application. At first, it might seem
`that resolving this issue would involve an abstract inquiry
`into the nature of invention or the rights, if any, of AI sys-
`tems. In fact, however, we do not need to ponder these met-
`aphysical matters. Instead, our task begins – and ends –
`with consideration of the applicable definition in the rele-
`vant statute.
`The United States Patent and Trademark Office (PTO)
`undertook the same analysis and concluded that the Patent
`Act defines “inventor” as limited to natural persons; that
`is, human beings. Accordingly, the PTO denied Stephen
`Thaler’s patent applications, which failed to list any hu-
`man as an inventor. Thaler challenged that conclusion in
`the U.S. District Court for the Eastern District of Virginia,
`which agreed with the PTO and granted it summary judg-
`ment. We, too, conclude that the Patent Act requires an
`“inventor” to be a natural person and, therefore, affirm.
`I
`Thaler represents that he develops and runs AI sys-
`tems that generate patentable inventions. One such sys-
`tem is his “Device for the Autonomous Bootstrapping of
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`THALER v. VIDAL
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`Unified Science,” which Thaler calls “DABUS.” Thaler has
`described DABUS as “a collection of source code or pro-
`gramming and a software program.” Supp. App. at 781.
`In July 2019, Thaler sought patent protection for two
`of DABUS’ putative inventions by filing two patent appli-
`cations with the PTO: U.S. Application Nos. 16/524,350
`(teaching a “Neural Flame”) and 16/524,532 (teaching a
`“Fractal Container”).1 He listed DABUS as the sole inven-
`tor on both applications. Thaler maintains that he did not
`contribute to the conception of these inventions and that
`any person having skill in the art could have taken
`DABUS’ output and reduced the ideas in the applications
`to practice.2
`In lieu of an inventor’s last name, Thaler wrote on the
`applications that “the invention [was] generated by artifi-
`cial intelligence.” App. at 28, 69. He also attached several
`documents relevant to inventorship. First, to satisfy 35
`U.S.C. § 115’s requirement that inventors submit a sworn
`oath or declaration when applying for a patent, Thaler
`
`1 The administrative records for both applications
`are materially identical.
`2 While inventorship involves underlying questions
`of fact, see Dana-Farber Cancer Inst., Inc. v. Ono Pharm.
`Co., 964 F.3d 1365, 1370 (Fed. Cir. 2020), cert. denied, 141
`S. Ct. 2691 (2021), for purposes of this litigation the PTO
`has not challenged Thaler’s representations, see D. Ct. Dkt.
`No. 25, at 11. Accordingly, our analysis must be consistent
`with the undisputed facts in the administrative record,
`drawing inferences in favor of the non-moving party. See
`Safeguard Base Operations, LLC v. United States, 989 F.3d
`1326, 1349 (Fed. Cir. 2021) (discussing when it is appropri-
`ate to supplement administrative record and noting “[t]he
`focal point for judicial review should be the administrative
`record already in existence”) (quoting Camp v. Pitts, 411
`U.S. 138, 142 (1973)).
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`THALER v. VIDAL
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`submitted a statement on DABUS’ behalf. Second, Thaler
`provided a supplemental “Statement on Inventorship” ex-
`plaining that DABUS was “a particular type of connection-
`ist artificial intelligence” called a “Creativity Machine.”
`App. at 198-203, 483-88. Third, Thaler filed a document
`purporting to assign himself all of DABUS’ rights as an in-
`ventor.
`The PTO concluded both applications lacked a valid in-
`ventor and were, hence, incomplete. Accordingly, it sent
`Thaler a “Notice to File Missing Parts of Nonprovisional
`Application” for each application and requested that Tha-
`ler identify valid inventors. In response, Thaler petitioned
`the PTO director to vacate the Notices based on his State-
`ments of Inventorship. The PTO denied Thaler’s petitions
`on the ground that “a machine does not qualify as an in-
`ventor.” App. at 269-71, 548-50. Thaler sought reconsid-
`eration, which the PTO denied, explaining again that
`inventors on a patent application must be natural persons.
`Thaler then pursued judicial review of the PTO’s final
`decisions on his petitions, under the Administrative Proce-
`dure Act (APA). See 5 U.S.C. §§ 702-704, 706.3 The parties
`agreed to have the District Court adjudicate the challenge
`based on the administrative record made before the PTO
`and filed cross-motions for summary judgment. After brief-
`ing and oral argument, the Court granted the PTO’s motion
`for summary judgment and denied Thaler’s request to re-
`instate his applications. The District Court concluded that
`an “inventor” under the Patent Act must be an “individual”
`
`
`3 The District Court had jurisdiction under 28 U.S.C.
`§ 1331. See also 5 U.S.C. § 702 (“A person suffering legal
`wrong because of agency action, or adversely affected or ag-
`grieved by agency action within the meaning of a relevant
`statute, is entitled to judicial review thereof.”).
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`THALER v. VIDAL
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`and the plain meaning of “individual” as used in the statute
`is a natural person.
`Thaler appealed. We have jurisdiction under 28 U.S.C.
`§ 1295. See Odyssey Logistics & Tech. Corp. v. Iancu, 959
`F.3d 1104, 1108 (Fed. Cir. 2020) (explaining that Federal
`Circuit has jurisdiction over appeals from district court de-
`cisions raising APA claims against PTO regarding pa-
`tents).
`
`II
`We review grants of summary judgment according to
`the law of the regional circuit, in this case the Fourth Cir-
`cuit. See Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351,
`1356 (Fed. Cir. 2019). In the Fourth Circuit, a district
`court’s grant of summary judgment is reviewed de novo.
`See id. (citing Gallagher v. Reliance Standard Life Ins. Co.,
`305 F.3d 264, 268 (4th Cir. 2002)). Challenges to PTO pe-
`tition decisions are governed by the APA and pertinent ad-
`ministrative law standards. Thus, we may set aside the
`judgment resulting from an administrative adjudication
`only if the agency’s decision is “arbitrary, capricious, an
`abuse of discretion, or otherwise not in accordance with
`law” or if the agency’s actions are “in excess of statutory
`jurisdiction, authority, or limitations.” 5 U.S.C. § 706.
`“Statutory interpretation is an issue of law that we review
`de novo.” Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321, 1330 (Fed. Cir. 2020).
`A
`The sole issue on appeal is whether an AI software sys-
`tem can be an “inventor” under the Patent Act. In resolv-
`ing disputes of statutory interpretation, we “begin[] with
`the statutory text, and end[] there as well if the text is un-
`ambiguous.” BedRoc Ltd. v. United States, 541 U.S. 176,
`183 (2004). Here, there is no ambiguity: the Patent Act
`requires that inventors must be natural persons; that is,
`human beings.
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`THALER v. VIDAL
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`The Patent Act expressly provides that inventors are
`“individuals.” Since 2011, with the passage of the Leahy-
`Smith America Invents Act, the Patent Act has defined an
`“inventor” as “the individual or, if a joint invention, the in-
`dividuals collectively who invented or discovered the sub-
`ject matter of the invention.” 35 U.S.C. § 100(f) (emphasis
`added). The Act similarly defines “joint inventor” and
`“coinventor” as “any 1 of the individuals who invented or
`discovered the subject matter of a joint invention.” § 100(g)
`(emphasis added). In describing the statements required
`of an inventor when applying for a patent, the statute con-
`sistently refers to inventors and co-inventors as “individu-
`als.” See § 115.
`The Patent Act does not define “individual.” However,
`as the Supreme Court has explained, when used “[a]s a
`noun, ‘individual’ ordinarily means a human being, a per-
`son.” Mohamad v. Palestinian Auth., 566 U.S. 449, 454
`(2012) (internal alteration and quotation marks omitted).
`This is in accord with “how we use the word in everyday
`parlance”: “We say ‘the individual went to the store,’ ‘the
`individual left the room,’ and ‘the individual took the car,’
`each time referring unmistakably to a natural person.” Id.
`Dictionaries confirm that this is the common understand-
`ing of the word. See, e.g., Individual, Oxford English Dic-
`tionary (2022) (giving first definition of “individual” as “[a]
`single human being”); Individual, Dictionary.com (last vis-
`ited July 11, 2022), https://www.dictionary.com/browse/in-
`dividual (giving “a single human being, as distinguished
`from a group” as first definition for “individual”). So, too,
`does the Dictionary Act, which provides that legislative use
`of the words “person” and “whoever” broadly include (“un-
`less the context indicates otherwise”) “corporations, compa-
`nies, associations, firms, partnerships, societies, and joint
`stock companies, as well as individuals.” 1 U.S.C. § 1 (em-
`phasis added). “With the phrase ‘as well as,’ the definition
`marks ‘individual’ as distinct from the list of artificial enti-
`ties that precedes it,” showing that Congress understands
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`“individual” to indicate natural persons unless otherwise
`noted. Mohamad, 566 U.S. at 454.
`Consequently, the Supreme Court has held that, when
`used in statutes, the word “individual” refers to human be-
`ings unless there is “some indication Congress intended” a
`different reading. Id. at 455 (emphasis omitted).4 Nothing
`in the Patent Act indicates Congress intended to deviate
`from the default meaning. To the contrary, the rest of the
`Patent Act supports the conclusion that “individual” in the
`Act refers to human beings.
`For instance, the Act uses personal pronouns – “him-
`self” and “herself” – to refer to an “individual.” § 115(b)(2).
`It does not also use “itself,” which it would have done if
`Congress intended to permit non-human inventors. The
`Patent Act also requires inventors (unless deceased, inca-
`pacitated, or unavailable) to submit an oath or declaration.
`See, e.g., id. (requiring oath or declaration from inventor
`that “such individual believes himself or herself to be the
`original inventor or an original joint inventor of a claimed
`invention in the application”). While we do not decide
`whether an AI system can form beliefs, nothing in our rec-
`ord shows that one can, as reflected in the fact that Thaler
`submitted the requisite statements himself, purportedly on
`DABUS’ behalf.
`Thaler directs us to several provisions of the Patent Act
`as supposed support for his position that “inventor” should
`be broadly read to include AI software, but each fails to
`persuade. First, Thaler points to the use of “whoever” in
`
`
`4 While Mohamad interpreted a statute other than
`the Patent Act, the Court’s reasoning is directly applicable
`here. See generally Legal Def. Fund v. Dep’t of Agric., 933
`F.3d 1088, 1093-94 (9th Cir. 2019) (concluding that “indi-
`vidual” refers to human beings and not animals, based in
`part on Mohamad).
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`THALER v. VIDAL
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`35 U.S.C. §§ 101 and 271. Section 101 provides that “[w]ho-
`ever invents or discovers any new and useful process, ma-
`chine, manufacture, or composition of matter, or any new
`and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this
`title.” As this very section makes clear, however, patents
`must satisfy the “conditions and requirements of” Title 35
`of the U.S. Code, including its definition of “inventor.” Sec-
`tion 271, in setting out what constitutes infringement, re-
`peatedly uses “whoever” to include corporations and other
`non-human entities. That non-humans may infringe pa-
`tents does not tell us anything about whether non-humans
`may also be inventors of patents. The question before us
`inevitably leads back to the Patent Act’s definition of “in-
`ventor,” which uses the word “individual” – and does not
`use “whoever.”5 Furthermore, as we noted already, the
`Dictionary Act establishes that Congress uses “whoever” as
`a much broader term than “individual.” See 1 U.S.C. § 1.
`Second, Thaler contends that AI software programs
`must qualify as inventors because otherwise patentability
`would depend on “the manner in which the invention was
`made,” in contravention of 35 U.S.C. § 103. Section 103 is
`not about inventorship. Instead, it provides, in relevant
`part, that inventions may still be nonobvious even if they
`are discovered during “routine” testing or experimentation.
`See Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A.
`de C.V., 865 F.3d 1348, 1356 (Fed. Cir. 2017); see also Gra-
`ham v. John Deere Co., 383 U.S. 1, 15 (1966) (explaining
`that second sentence of § 103 was intended to clarify that
`“flash of creative genius” is unnecessary for patentability).
`This statutory provision relates to how an invention is
`
`
`5 While the PTO also initially relied on the use of
`“whoever” in § 101 of the Patent Act, the PTO has also con-
`sistently explained that “individual” is limited to natural
`persons, a position we now uphold.
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`made and does not trump a provision that specifically ad-
`dresses who may be an inventor.
`Third, Thaler emphasizes that the term “inventor”
`must be interpreted with attention to the “context in which
`that language is used[] and the broader context of the stat-
`ute as a whole.” Yates v. United States, 574 U.S. 528, 537
`(2015) (internal quotation marks omitted). We have under-
`taken precisely this task. For the reasons explained above,
`the Patent Act, when considered in its entirety, confirms
`that “inventors” must be human beings.
`B
`Our holding today that an “inventor” must be a human
`being is supported by our own precedent. See Univ. of Utah
`v. Max-Planck-Gesellschaft zur Forderung der Wissen-
`schaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013)
`(“[I]nventors must be natural persons and cannot be corpo-
`rations or sovereigns.”) (emphasis added); Beech Aircraft
`Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993)
`(“[O]nly natural persons can be ‘inventors.’”). While these
`opinions addressed different questions – concluding that
`neither corporations nor sovereigns can be inventors – our
`reasoning did not depend on the fact that institutions are
`collective entities. The two cases confirm that the plain
`meaning of “inventor” in the Patent Act is limited to natu-
`ral persons.
`
`C
`Statutes are often open to multiple reasonable read-
`ings. Not so here. This is a case in which the question of
`statutory interpretation begins and ends with the plain
`meaning of the text. See Bostock v. Clayton Cnty., 140 S.
`Ct. 1731, 1749 (2020) (“This Court has explained many
`times over many years, when the meaning of the statute’s
`terms is plain, our job is at an end.”). In the Patent Act,
`“individuals” – and, thus, “inventors” – are unambiguously
`natural persons. Accordingly, we have no need to consider
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`additional tools of statutory construction. See Matal v.
`Tam, 137 S. Ct. 1744, 1756 (2017) (“[I]nquiry into the
`meaning of the statute’s text ceases when the statutory
`language is unambiguous and the statutory scheme is co-
`herent and consistent.”) (internal quotation marks omit-
`ted).
`
`III
`We briefly address Thaler’s additional arguments.
`Thaler argues that inventions generated by AI should
`be patentable in order to encourage innovation and public
`disclosure. Thaler’s policy arguments are speculative and
`lack a basis in the text of the Patent Act and in the record.
`In any event, the text before us is unambiguous, and we
`may not “elevate vague invocations of statutory purpose
`over the words Congress chose.” Sw. Airlines Co. v. Saxon,
`142 S. Ct. 1783, 1792-93 (2022). Moreover, we are not con-
`fronted today with the question of whether inventions
`made by human beings with the assistance of AI are eligi-
`ble for patent protection.
`Thaler invokes the canon of constitutional avoidance.
`In Thaler’s view, permitting AI programs to be inventors
`would support the constitutional purpose of patents “[t]o
`promote the progress of science and the useful arts.” U.S.
`Const. art. I, § 8, cl. 8. It follows, Thaler continues, that
`not recognizing AI as an inventor undermines such pro-
`gress, raising potential constitutional concerns we should
`be careful to avoid. Thaler is incorrect. The constitutional
`provision he cites is a grant of legislative power to Con-
`gress; Congress has chosen to act pursuant to that power
`by passing the Patent Act. Thaler does not (and cannot)
`argue that limiting inventorship to human beings is uncon-
`stitutional. Therefore, the canon of constitutional avoid-
`ance is simply inapplicable. See Veterans4You LLC v.
`United States, 985 F.3d 850, 860-61 (Fed. Cir. 2021) (ex-
`plaining that this canon may be helpful when there is seri-
`ous question regarding statute’s constitutionality); see also
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`Warger v. Shauers, 574 U.S. 40, 50 (2014) (noting that
`canon of constitutional avoidance “has no application in the
`absence of . . . ambiguity”) (internal quotation marks omit-
`ted).
`Thaler also notes that South Africa has granted pa-
`tents with DABUS as an inventor. This foreign patent of-
`fice was not interpreting our Patent Act. Its determination
`does not alter our conclusion.
`We have considered Thaler’s additional arguments and
`find they do not merit discussion.
`IV
`When a statute unambiguously and directly answers
`the question before us, our analysis does not stray beyond
`the plain text. Here, Congress has determined that only a
`natural person can be an inventor, so AI cannot be. Accord-
`ingly, the decision of the district court is affirmed.
`AFFIRMED
`COSTS
`Costs shall be assessed against Appellant.
`
`