Case: 21-2347 Document: 64 Page: 1 Filed: 09/19/2022
`
`2021-2347
`___________________________________
`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
`
`Appeal From the United States District Court for The Eastern District of Virginia
`in Case No. 1:20-CV-00903-LMB-TCB,
`
`The Honorable Judge Leonie M. Brinkema
`___________________________________
`
`CORRECTED PLAINTIFF-APPELLANT STEPHEN THALER
`COMBINED PETITION FOR PANEL REHEARING AND REHEARING
`EN BANC
` ___________________________________
`RYAN ABBOTT
`Brown, Neri, Smith & Khan, LLP
`11601 Wilshire Blvd., Ste. 2080
`Los Angeles, CA 90025
`Phone: (310) 593-9890
`Fax: (310) 593-9980
`Counsel for Plaintiff-Appellant
`
`
`
`2021-2347
`___________________________________
`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
`
`Appeal From the United States District Court for The Eastern District of Virginia
`in Case No. 1:20-CV-00903-LMB-TCB,
`
`The Honorable Judge Leonie M. Brinkema
`___________________________________
`
`CORRECTED PLAINTIFF-APPELLANT STEPHEN THALER
`COMBINED PETITION FOR PANEL REHEARING AND REHEARING
`EN BANC
` ___________________________________
`RYAN ABBOTT
`Brown, Neri, Smith & Khan, LLP
`11601 Wilshire Blvd., Ste. 2080
`Los Angeles, CA 90025
`Phone: (310) 593-9890
`Fax: (310) 593-9980
`Counsel for Plaintiff-Appellant
`
`
`
`Case: 21-2347 Document: 64 Page: 2 Filed: 09/19/2022
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 1)
`July 2020
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`Case Number
`
`2021-2347
`
`Short Case Caption
`
`Stephen Thaler v. Katherine K. Vidal, United States Patent and Trademark Office
`
`Filing Party/Entity
`
`Stephen Thaler, Plaintiff-Appellant
`
`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`09/19/2022
`Date: _________________
`
`Signature:
`
`Name:
`
`Ryan Abbott
`
`
`
`
`
`Case: 21-2347 Document: 64 Page: 3 Filed: 09/19/2022
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 2)
`July 2020
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`None/Not Applicable
`
`None/Not Applicable
`
`STEPHEN THALER
`
`Additional pages attached
`
`
`
`Case: 21-2347 Document: 64 Page: 4 Filed: 09/19/2022
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
`
`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`
`None/Not Applicable
`
`Additional pages attached
`
`Ryan Abbott
`Brown, Neri, Smith & Khan LLP
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`
`None/Not Applicable
`
`Additional pages attached
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`
`None/Not Applicable
`
`Additional pages attached
`
`
`
`Case: 21-2347 Document: 64 Page: 5 Filed: 09/19/2022
`
`TABLE OF CONTENTS
`
`A.
`
`The Panel Overlooked Three Relevant Points of Law: .............................................1
`ARGUMENT ............................................................................................................. 3
`I.
`INTRODUCTION ....................................................................................... 3
`II.
`PROCEDURAL BACKGROUND .............................................................. 3
`III.
`THE PANEL OPINION CONFLICTS WITH THREE SUPREME
`COURT DECISIONS REGARDING AN IMPORTANT QUESTION OF
`LAW ............................................................................................................ 5
`The Panel Opinion Conflicts with Three Supreme Court Cases ............ 5
`1.
`Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012) ......... 5
`2.
`Diamond v. Chakrabarty, 447 U. S. 303, 317 (1980) .................. 8
`3.
`Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021)
` ................................................................................................... 10
`The Patentability of AI-Generated Inventions Is of Exceptional
`Importance in The U.S. And Globally ................................................. 12
`CONCLUSION .......................................................................................... 15
`IV.
`ADDENDUM .......................................................................................................... 17
`CERTIFICATE OF COMPLIANCE .......................................................................31
`CERTIFICATE OF SERVICE ................................................................................ 32
`
`B.
`
`i
`
`
`
`Case: 21-2347 Document: 64 Page: 6 Filed: 09/19/2022
`
`TABLE OF AUTHORITIES
`
`Cases
`Application of Bergy,
`596 F.2d 952 (C.C.P.A. 1979) .............................................................................. 15
`
`Barr v. United States,
`324 U.S. 83 (1945) .................................................................................................. 9
`
`Beech Aircraft Corp. v. EDO Corp.,
`990 F.2d 1237 (Fed. Cir. 1993) ..................................................................... 2, 11
`
`Clinton v. City of New York,
`524 U.S. 417 (1998) ................................................................................................ 8
`
`Diamond v. Chakrabarty,
`444 U.S. 1028 (1980) ............................................................................................ 15
`
`Eli Lilly and Co. v. Aradigm Corp.,
`376 F.3d 1352 (Fed. Cir. 2004) ............................................................................ 15
`
`Fort. Corp. v. United Artists Television, Inc.,
`392 U.S. 390 (1968) .............................................................................................. 10
`
`Gemstar-TV Guide Int'l, Inc. v. Int'l Trade Comm'n,
`383 F.3d 1352 (Fed. Cir. 2004) .............................................................................. 7
`
`Google LLC v. Oracle Am., Inc.,
`141 S. Ct. 1183 (2021) .................................................................................... 1, 10
`
`King v. Burwell,
`576 U.S. 473 (2015) ................................................................................................ 8
`
`Minnesota Min. and Mfg. Co. v. Johnson Johnson Orthopaedics, Inc.,
`976 F.2d 1559 (Fed. Cir. 1992) .............................................................................. 8
`
`ii
`
`
`
`Case: 21-2347 Document: 64 Page: 7 Filed: 09/19/2022
`
`Mohamad v. Palestinian Auth.,
`566 U.S. 449 (2012) .................................................................................. 1, 4, 5, 6, 7
`
`National American Ins. Co. v. U.S.,
`498 F.3d 1301 (Fed. Cir. 2007) ............................................................................ 12
`
`Pannu v. Iolab Corp.,
`155 F.3d 1344 (Fed. Cir. 1998) .............................................................................. 7
`
`Solvay S.A. v. Honeywell Intern., Inc.,
`622 F.3d 1367 (Fed. Cir. 2010) ............................................................................ 15
`
`Sony Corp. of America v. Universal City Studios, Inc.,
`464 U.S. 417 (1984) .............................................................................................. 10
`
`Twentieth Century Music Corp. v. Aiken,
`422 U.S. 151 (1975) ........................................................................................ 1, 10
`
`United States v. Sabre Corp.,
`452 F.Supp.3d 97 (D. Del. 2020) .......................................................................... 13
`
`University of Colorado Foundation, Inc. v. American Cyanamid Co.,
`196 F.3d 1366 (Fed. Cir. 1999) ............................................................................ 15
`
`University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften
`E.V., 734 F.3d 1315 (Fed. Cir. 2013) ............................................................ 2, 11
`Statutes
`
`35 U.S.C. § 103 ................................................................................................. 1, 3, 9
`
`35 U.S.C. § 117 .......................................................................................................... 7
`
`35 U.S.C. § 118 ............................................................................................................ 7
`
`Regulations
`
`37 C.F.R § 1.43 .......................................................................................................... 7
`
`iii
`
`
`
`Case: 21-2347 Document: 64 Page: 8 Filed: 09/19/2022
`
`37 C.F.R § 1.56 .......................................................................................................... 8
`
`Other Authorities
`
`Anna Carnochan Comer, AI: Artificial Inventor or the Real Deal?,
` 22 N.C. J. L. & Tech. 447 (2021) ......................................................................... 13
`
`Ernest Fok, Challenging the International Trend: The Case for Artificial
`Intelligence Inventorship in the United States,
`19 Santa Clara J. Int'l L. 51 (2021) ....................................................................... 13
`
`Heinz Goddar & Lakshmi Kumaran, Patent Law Based Concepts for Promoting
`Creation and Sharing of Innovations in the Age of Artificial Intelligence and
`Internet of Everything,
`54 Les Nouvelles 282 (2019) ................................................................................ 13
`
`Justyn Millamena, How Artificial Intelligence Machines Can Legally Become
`Inventors: An Examination of and Solution to the Decision on Dabus,
` 30 J.L. & Pol'y 270 (2021)
`
`The Final Report, National Security Commission on Artificial Intelligence (last
`visited on September 15. 2022), https://www.nscai.gov/2021-final-report/ .......... 12
`
`W. Michael Schuster, Artificial Intelligence and Patent Ownership,
`75 Wash. & Lee L. Rev. 1945 (2018) ................................................................... 13
`
`iv
`
`
`
`Case: 21-2347 Document: 64 Page: 9 Filed: 09/19/2022
`
`STATEMENT PURSUANT TO FED. CIR. R. APP. P. 35(b)(2)
`Based on my professional judgment, I believe this appeal requires an answer
`to one or more precedent-setting questions of exceptional importance: Whether an
`artificial intelligence can be an inventor for purposes of patent law, which implicates
`the most fundamental aspects of patent law, namely, the nature of inventorship and
`therefore whether AI discoveries can be patented.
`
`Dated: September 19, 2022
`
`_____/s/ Ryan Abbott___
`
`Los Angeles, California
`
`Ryan Abbott
`
`Ryan Abbott, Esq.
`BROWN, NERI, SMITH &
`KHAN, LLP
`11601 Wilshire Blvd., Ste. 2080
`Los Angeles, CA 90025
`Phone: (310) 593-9890
`Fax: (310) 593-9980
`Counsel for Plaintiff-Appellant
`
`v
`
`
`
`Case: 21-2347 Document: 64 Page: 10 Filed: 09/19/2022
`
`The Panel Overlooked Three Relevant Points of Law
`
`1.
`
`2.
`
`3.
`
`The Panel Opinion conflicts with Mohamad v. Palestinian Auth., 566 U.S.
`449, 454 (2012) which instructs to first look to the dictionary definition of
`“individual.” Contrary to the Panel’s reasoning, the very dictionary definitions
`used by the Panel do encompass “a single thing” and so necessarily include
`an AI system.
`The Panel Opinion both conflicts with 35 U.S.C. § 103, which prohibits
`denying patent application based on how inventions are made, and
`contravenes Diamond v. Chakrabarty, 447 U. S. 303, 315-317 (1980), in
`which the Supreme Court held that a categorical rule denying patent
`protection for “inventions in areas not contemplated by Congress . . . would
`frustrate the purposes of the patent law.” The Panel Opinion creates a
`categorical rule denying protection for inventions in areas not contemplated
`by Congress by prohibiting patentability based on the manner in which the
`present inventions were made.
`to
`the Supreme Court’s approach
`The Panel Opinion contradicted
`interpretating a statute in light of evolving technology, elucidated in Google
`LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021) and Twentieth Century
`Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). As explained regarding the
`Patent Act’s sister Act, “[w]hen technological change has rendered its literal
`terms ambiguous, the Copyright Act must be construed in light of its basic
`purpose.” Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
`
`1
`
`
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`Instead, the Panel Opinion impermissibly relied on dicta from University of
`Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V.,
`734 F.3d 1315, 1318 (Fed. Cir. 2013) and Beech Aircraft Corp. v. EDO Corp.,
`990 F.2d 1237, 1239-1248 (Fed. Cir. 1993) to interpret the Patent Act.
`
`2
`
`
`
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`
`ARGUMENT
`
`I.
`
`INTRODUCTION
`Artificial Intelligence (AI) is the future of innovation. Yet despite the fact that
`AI can now generate inventions, the Panel has ruled that these inventions are
`unpatentable. This was based on an undefined term, “individual,” in the Patent Act,
`even though dictionary definitions relied upon by the Panel actually include AI. The
`Panel Opinion disregards several critical Supreme Court precedents as well as the
`explicit language of 35 U.S.C § 103. It also goes against the purpose of the Patent
`Act to incentivize innovation, encourage disclosure of trade secrets, and promote
`commercialization of inventions.
`PROCEDURAL BACKGROUND
`II.
`Dr. Thaler filed two patent applications with the United States Patent and
`Trademark Office (“USPTO”), assigned Application Serial Nos. 16/524,350 and
`16/524,532 (collectively, “the Applications”) on July 29, 2019. (Appx0021-0099).
`The Applications were denied by the USPTO on the basis that they failed to
`disclose an inventor that was a natural person. (Appx0269-271, Appx0548-0550.)
`Dr. Thaler twice petitioned the agency to reconsider, but USPTO ultimately issued
`a final agency action upholding the denials on April 22, 2020. (Appx0343-0351,
`Appx0594-0602.).
`Dr. Thaler then filed a civil action seeking review of the USPTO’s decision
`and an order reinstating the Applications. (Appx0105-0129.) The District Court for
`the Eastern District of Virginia granted USPTO’s Motion for Summary Judgment
`and denied Dr. Thaler’s Motion for Summary Judgment based on a finding that the
`
`3
`
`
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`Patent Act (“Act”) unambiguously requires an individual be a human being.
`(Appx0001-0002.)
`On August 5, 2022, the Panel affirmed the district court’s opinion, finding that
`the term “individual” was unambiguous and could only refer to a human being. (See
`Panel Opinion (“Op.”) at 11.) The Panel began its analysis with a reference to
`Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012), in which the Supreme
`Court said that without an indication to the contrary, an individual ordinarily means
`a human being. (Op.at 6.) The Panel found this consistent in the Act with ordinary
`usage, including based on dictionary definitions. (Op. at 6.) The Panel went on to
`analyze other sections within the Act for guidance on what an individual means,
`identifying the pronouns “himself” and “herself” and the oath requirement show an
`intent by Congress to only allow human beings to be inventors. (Op. at 7.)
`In doing so, the Panel found that other provisions Thaler cited were
`unpersuasive, including the use of “whoever,” stating that the meaning of whoever
`is broader than individual in the Dictionary Act. (Op. at 7-8.) Likewise, the Panel
`found the argument that the requirement that the Act be agnostic as to the manner of
`the invention’s creation and the overall context unpersuasive. (Op. at 8.)
`The Panel then looked to this Circuit’s prior precedent to determine that
`individual in the Act does not apply to organizations, and therefore, only refers to
`humans. (Op. at 9.)
`Finding an unambiguous statute, the Panel determined that an individual AI
`cannot qualify as an individual under the Act and that found there was no
`“reasonable” alternate interpretation.
`
`4
`
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`
`A.
`
`III. THE PANEL OPINION CONFLICTS WITH THREE SUPREME
`COURT DECISIONS REGARDING AN IMPORTANT QUESTION
`OF LAW
`The Panel Opinion Conflicts with Three Supreme Court Cases
`1.
`Mohamad v. Palestinian Auth., 566 U.S. 449 (2012)
`The Panel got off on the wrong foot by misapplying Supreme Court precedent
`from Mohamad, which directs the court to look at ordinary usage in the dictionary.
`See Mohamad v. Palestinian Authority, 566 U.S. 449, 456-57 (2012). The Panel stated
`that, “[d]ictionaries confirm that this [a human being] is the common understanding
`of the word [“individual”]. See, e.g., Individual, Oxford English Dictionary (2022)
`(giving first definition of “individual” as “[a] single human being”); Individual,
`Dictionary.com
`(last
`visited
`July
`11,
`2022),
`https://www.dictionary.com/browse/individual (giving “a single human being, as
`distinguished from a group” as first definition for “individual”).” (Op. at 6.)
`However, the Panel Opinion neglected to note that the definitions cited do
`include an AI. The second1 definition of “individual” in the Oxford English
`
`1 The order of the numbered senses given in the definition of a word in a dictionary
`does not indicate what is more correct or popular in usage. As the Oxford English
`Dictionary explains, “[t]he sense section consists of one or more definitions, each
`with its paragraph of illustrative quotations, arranged chronologically.” Guide to
`the Third Edition of the OED, Oxford English Dictionary (last visited September
`14, 2022), https://www.oed.com/public/oed3guide/guide-to-the-third-edition-of;
`see also Facts and Trivia, Merriam-Webster.com (last visited September
`12, 2022), https://www.merriam-webster.com/words-at-play/dictionary-facts-and-
`trivia (“Many words have multiple senses, and it is therefore necessary to
`arrange them in some sort of order… The one thing you should remember,
`however, is that the first sense presented to you is not, as is commonly
`5
`
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`Dictionary includes “[a] thing which possesses properties peculiar to itself and
`which cannot be subdivided into other things of the same kind… [a] single entity,
`esp. as distinct from a group of like entities; a single member of a conceptual
`category or class.” Individual, Oxford English Dictionary (2022). The third
`definition of “individual” in Dictionary.com is, “a distinct, indivisible entity; a single
`thing, being, instance, or item.” Individual, Dictionary.com (last visited September
`13, 2022.) The AI inventor in this case is, by either the OED or Dictionary.com
`definition cited in the Panel Opinion, an individual.
`
`In Mohamad, the Supreme Court determined the meaning of “individual” in the
`context of the Torture Victim Protection Act, but this was also in the context of
`distinguishing between a singular entity and a collective, like a sovereign. Id. at 457.
`(These “definitions [] do not account even for petitioners’ preferred interpretation of
`‘individual’ in the Act, for foreign states.”) Thus, following Mohamad should lead to
`the opposite finding here because dictionary definitions do include an AI. For
`instance, the Webster American English dictionary defines individual as “a single
`thing, being, or organism, esp., when regarded as a member of a class, species, group,
`etc.” Webster’s New World College Dictionary, 4th Edition; see also Webster’s New
`Universal Unabridged Dictionary, (1989) (“a distinct, indivisible entity, a single thing,
`being, instance, or item.”). The Supreme Court was also clear that, “[t]his is not to
`say that the word ‘individual’ invariably means ‘natural person’ when used in a
`
`assumed, the most ‘important,’ or ‘correct’ meaning.”). Thus, the order is
`chronological, and does not indicate any sense is more correct or more
`common in some way.
`
`6
`
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`statute.” Mohamad, 566 U.S. at 455. The Panel’s Opinion that the plain language of
`the Act unambiguously precludes an AI inventor is therefore inconsistent with
`Supreme Court precedent, given that an AI literally fits the Act’s statutory definition.
`The Panel Opinion then supported its analysis by selectively citing to certain
`context—the use of various pronouns in the Act and the oath requirement. But even
`the USPTO admitted that pronouns are of “far less interpretative value” (App. Br. at
`23). The Panel found pronouns dispositive based the uncited fiat that the Act “does
`not also use ‘itself,’ which it would have done if Congress intended to permit non-
`human inventors.”2 This is speculation, as there is no evidence that Congress was
`making any effort to prevent AI inventorship when the Patent Act was written or
`amended. Ordinary meanings also change over time—a “computer” once referred to
`a natural person making computations, and many natural persons do not identify as
`either “himself” or “herself.”
`As to the oath requirement, both the Patent Act and the USPTO’s own
`regulations account for situations in which an inventor cannot, or will not, make an
`oath. See 35 U.S.C. § 117; 37 C.F.R §1.43; 35 U.S.C. § 118. Even so, the correct
`inventor must still be listed. A patent requires at least one inventor. Pannu v. Iolab
`Corp., 155 F.3d 1344, 1350 (Fed. Cir. 1998). Also, “[a] patent is invalid if more or
`fewer than the true inventors are named.” Gemstar-TV Guide Int'l, Inc. v. Int'l Trade
`Comm'n, 383 F.3d 1352, 1381 (Fed. Cir. 2004). In addition, individuals associated
`
`2 One could easily come to the opposite conclusion. Many non-human animals can
`be referred to with gendered pronouns. Additionally, gendered pronouns are
`popularly used to refer to AI systems such as Siri or Alexa.
`
`7
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`with the filing or prosecution of a patent are under a duty of disclosure, candor, and
`good faith under 37 C.F.R § 1.56, and inequitable conduct can render a patent
`unenforceable. Minnesota Min. and Mfg. Co. v. Johnson Johnson Orthopaedics,
`Inc., 976 F.2d 1559, 1569 (Fed. Cir. 1992). By naming an individual other than the
`factual inventor of the present applications, Dr. Thaler would be violating his duty
`of disclosure and candor. Such an internally inconsistent interpretation of a statute
`has formed the basis for the Supreme Court previously defining “individual” to
`include artificial persons. See Clinton v. City of New York, 524 U.S. 417, 429 (1998)
`(the statutory context makes that intention clear, because any other reading of”
`individual in the statute as written “would produce an absurd and unjust result which
`Congress could not have intended.”) (Internal quotations and citations omitted).
`
`The Panel Opinion should have looked to the purpose of the Act to help
`determine the appropriate meaning of individual. The Supreme Court recently
`emphasized this approach with regard to the ACA, holding that “Congress passed
`the Affordable Care Act to improve health insurance markets, not to destroy them.
`If possible, we must interpret the Act in a way that is consistent with the former and
`avoids the latter.” King v. Burwell 576 U.S. 473, 498 (2015). Dr. Thaler’s proposed
`interpretation is not only logical and consistent with Supreme Court precedent, it
`uses the plain definition of “individual” to avoid frustration of the Act.
`2.
` Diamond v. Chakrabarty, 447 U. S. 303 (1980)
`
`The Panel Opinion neglected to consider the Act’s overarching purpose.
`Instead, it selectively emphasized certain context in clear defiance of Diamond v.
`Chakrabarty 447 U. S. 303, 317 (1980). In Diamond, the Supreme Court held that a
`
`
`
`8
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`categorical rule denying patent protection for “inventions in areas not contemplated
`by Congress . . . would frustrate the purposes of the patent law.” Id. at 315. The
`Court noted that Congress chose expansive language to protect a broad range of
`patentable subject matter, including those that had not or could not have been
`foreseen. Id. at 316 (“Congress employed broad general language in drafting § 101
`precisely because such inventions are often unforeseeable.”). As technology has
`advanced, patent law has historically evolved to accommodate and further encourage
`such advances. See id. at 315. (“[A] statute is not to be confined to the ‘particular
`application[s]…contemplated by the legislators.’”) (Quoting Barr v. United States,
`324 U.S. 83, 90 (1945). Yet, when faced with a new application of the statute that
`was not foreseen—an inventive AI—the Panel Opinion came to the opposite
`conclusion and confined the Act to natural persons.
`
`The Panel held that the prohibition in Section 103 was restricted to non-
`obviousness determinations. However, nothing in the language of Section 103 so
`limits its application. “Patentability shall not be negated by the manner in which the
`invention was made.” 35 U.S.C. § 103. Applying the Panel Opinion’s own logic, if
`Congress had wanted Section 103 to only apply to non-obviousness, this sentence
`would have read, “Non-obviousness shall not depend on the manner in which the
`invention was made.”
`
`The Panel Opinion effectively resurrects the long-prohibited Flash of Genius
`Test in the form of the Flash of Human Genius Test. In the present case, the AI being
`the factual inventor is the method of the invention coming about, and under the
`Panel’s Opinion this does impact, and in fact entirely prohibits, patentability. Section
`
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`Case: 21-2347 Document: 64 Page: 19 Filed: 09/19/2022
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`103 is critical to defining “individual” in the context of the Act. It cannot be
`handwaved so easily and divorced from the result on patentability.
`3.
`Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021)
`Given that the dictionary definition of “individual” includes a thing or a
`person and given the clear intent of Congress not to prohibit patents based on the
`manner in which an invention is made, at most it is ambiguous whether an AI can
`be an inventor under the Patent Act. The Supreme Court has made it clear that
`technological changes must be considered when interpreting a statute, because “[w]e
`have understood the provision to set forth general principles, the application of
`which requires judicial balancing, depending upon relevant circumstances, including
`‘significant changes in technology.’” Google LLC v. Oracle Am., Inc., 141 S. Ct.
`1183, 1197 (2021) (quoting Sony Corp. of America v. Universal City Studios, Inc.,
`464 U.S. 417, 430 (1984).)
`As explained by the Supreme Court regarding the Copyright Act, “[w]hen
`technological change has rendered its literal terms ambiguous, the Copyright Act
`must be construed in light of its basic purpose.” Twentieth Century Music Corp. v.
`Aiken, 422 U.S. 151, 156 (1975). The purpose of the Patent Act is clear: to promote
`innovation, disclosure of trade secrets, and commercialization of inventions.
`
`Regarding the Patent Act’s sister Act, the Supreme Court has consistently
`relied on the principle that “our inquiry cannot be limited to ordinary meaning and
`legislative history, for this is a statute that was drafted long before the development
`of the electronic phenomena with which we deal here.” Fort. Corp. v. United Artists
`Television, Inc., 392 U.S. 390, 395 (1968). Thus, “[w]e must read the statutory
`
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`Case: 21-2347 Document: 64 Page: 20 Filed: 09/19/2022
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`language of 60 years ago in the light of drastic technological change.” Id. In doing
`so, the Supreme Court defined an airing over its airwaves as a “performance” of
`copyrighted work. Id.
`
`Instead of considering the purpose of the Patent Act when faced with a new
`technology, the Panel Opinion held that dicta regarding the definition of “individual”
`in different contexts defined the term. In University of Utah, the eponymous
`University brought a lawsuit to correct inventorship of two patents, and the questions
`presented were “the issues of sovereign immunity and federal jurisdiction that arise
`when state universities are involved on both sides of an inventorship dispute.”
`
`University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften
`E.V., 734 F.3d 1315, 1318 (Fed. Cir. 2013). No party in the case advanced the
`proposition than the University was an inventor. Id. at 1323.
`
`Likewise, in Beech Aircraft Corp., the question presented was whether “the
`district court’s holding that BEECH is not precluded by res judicata, the compulsory
`counterclaim rule, or the applicable statute of limitations from asserting this
`assignment claim in the present suit,” as well as “that part of the district court’s
`decision vacating an interference decision” that was based on claims the Court had
`previously stated was “moot,” and “the district court’s holding that all of the
`remaining summary judgment motions are moot.” Beech Aircraft Corp. v. EDO
`Corp., 990 F.2d 1237, 1239-1248 (Fed. Cir. 1993). Again, no party argued that either
`Beech Aircraft or EDO Corp. was an inventor. Beech, 990 F.2d at 1247-48.
`
`The question presented in both cases was entirely procedural, and the issue of
`inventorship was not relevant for their ultimate resolution. This makes the discussion
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`Case: 21-2347 Document: 64 Page: 21 Filed: 09/19/2022
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`dicta and nonbinding. National American Ins. Co. v. U.S., 498 F.3d 1301, 1306 (Fed.
`Cir. 2007) (“Dicta, as defined by this court, are statements made by a court that are
`‘unnecessary to the decision in the case, and therefore, not precedential….”)
`(Internal citations omitted and quotation cleaned up).
`
`At minimum, the Panel Opinion should have wrestled with the ambiguity
`created by technological evolution, and the results that flow from prohibiting patents
`on AI-generated inventions.
`B.
`The Patentability of AI-Generated Inventions Is of Exceptional
`Importance in The U.S. And Globally
`With AI having invented as an undisputed matter of fact,3 and given the
`
`undisputed improving capabilities and industry adoption of AI, the Court’s decision
`will have a tremendous impact on innovation in the United States and worldwide. The
`Final Report, National Security Commission on Artificial Intelligence (last visited on
`September 15. 2022), https://www.nscai.gov/2021-final-report/.
`
`The Panel did not go into detail at the oral argument regarding the ramifications
`of upholding the USPTO’s denial, but it did ask if the result would be to render the
`present inventions unpatentable. The USPTO confirmed that was indeed the outcome.
`(Oral Argument at 19:30-20:00.) The Panel Opinion ignored the implications of this
`interpretation, though Judge Stark, who wrote the opinion, had previously noted that
`AI leads to innovation, holding that “the Court is persuaded that the merger may well
`
`
`3 As noted by the district court, and never challenged on appeal by the USPTO, all
`factual statements in the patent applications including the capability of the AI to
`create a patentable invention must be taken as true. (Appx0007.)
`12
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`Case: 21-2347 Document: 64 Page: 22 Filed: 09/19/2022
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`promote innovation” because, among other reasons, “Farelogix Chief Technology
`Officer Tim Reiz credibly predicted that the merger will allow him to develop new
`projects (such as a next-generation PSS) using ar
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