Articles Posted in Federal Circuit

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Blurring the Lines: When AI Creates Art Is It Copyrightable?

Stan Gibson

In October of 2018, Christie’s sold the work Portrait of Edmond de Belamy for $432,500. None of this, including the price, would be notable if not for the claimed artist. The claimed artist was not a person but an algorithm, bearing its creator’s signature:


Obvious, a Paris-based collective, created the work using what is known as Generative Adversarial Networks, or “GANs.” Creating works using GANs requires inputting thousands of images as well as developing and making adjustments to the algorithm.

The sale, which garnered attention and outrage alike, served as a flashpoint in the discussion of artificial intelligence and art. As Ian Bogost of The Atlantic wrote, “[t]he image was created by an algorithm the artists didn’t write, trained on an ‘Old Masters’ image set they also didn’t create.”

In the aftermath of this sale, Sotheby’s followed suit with the sale of Mario Klingemann’s Memories of Passerby I (2018) in March of 2019. The work, which sold online for roughly $42,000, uses multiple GANs trained on thousands of portraits from the 17th to 19th century to generate an infinite stream of real-time portraits for the viewer. Klingemann refers to the neural networks used to create an endless stream of new images as “the brushes that I’ve learned to use.” Memories of Passerby I may not have generated the same buzz as Portrait of Edmond de Belamy, but it raises many of the same questions.

Although the use of technology to create art is nothing new, GANs, and similar neural network software, increasingly blur the lines when it comes to creation, authorship and ownership. The use of technology such as GANs to create art results in works that are not authored by individuals in the traditional sense. The question then becomes, are these works copyrightable under U.S. Copyright laws, and if so, to whom does the copyright belong? Continue reading

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In this patent infringement action, the parties jointly moved the court to enter an order, pursuant to Federal Rule of Evidence 502(d), to allow the parties to claw back the production of not just attorney-client information, but also proprietary and confidential information.  To support the request, the parties explained that the complex nature of the action would require the parties to disclose a large volume of electronically stored information (“ESI”) that would contain proprietary source code, software and computer systems.

The parties claimed that entry of the proposed non-waiver order was needed due to the plaintiff’s filing of and intent to file additional similar lawsuits and “to promote efficiency in discovery to prevent exhaustive, expensive privilege review efforts, to make the parties’ nonwaiver agreement binding on third parties, and to otherwise provide the parties with the maximum protection available under the law.”

After quoting Fed.R.Evid. Rule 502(d), the court noted that it had discretion to enter the order and also noted that federal courts routinely enter such orders with respect to privileged information that allows privileged information to be clawed back by the producing party.  The court then found that the provision with respect to clawing back privileged documents was acceptable, but the extension to proprietary and confidential documents was not:  “The Court finds the foregoing provisions acceptable with one exception. Rule 502 applies to the “disclosure of a communication or information covered by the attorney-client privilege or work-product protection.” Id. In the second paragraph of the proposed order, the parties attempt to extend Rule 502’s protection to information and materials beyond that narrow scope – specifically, to proprietary and confidential documents or materials. (See Doc. 56-1, ¶ 2 (emphasis added)). To the extent the parties are seeking to the expand the protection afforded by Rule 502, that request will be denied and the proposed order modified.”

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Plaintiff Innovation Sciences, LLC (“Innovation”) initiated a patent infringement action against Defendant (“Amazon”).  The original complaint asserted three groups of patents, encompassing a total of ten patents.

After the district court found certain of the patents invalid because they were abstract and the Federal Circuit affirmed, Innovation filed an amended complaint to assert an additional patent and that patent along with two others that were not initially dismissed proceeded to claim construction.  After claim construction, the district court granted Amazon’s motion for summary judgment, holding that Amazon was not infringing one of the patents, that one patent was invalid and Innovation stipulated to noninfringement of the last patent but reserved its right to appeal the construction issue.

The Federal Circuit affirmed as to two of the patents, and affirmed in part, vacated in part, and remanded the stipulated judgment of noninfringement as to that patent.  After that, Innovation jointly stipulated to dismissal.

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After the district court dismissed plaintiff’s patent infringement claims, finding the patents directed to patent-ineligible subject matter, and awarded attorneys’ fees based on the exceptional case doctrine, the Federal Circuit affirmed both determinations. The defendant filed a supplemental motion for attorneys’ fees seeking to recover attorneys’ fees for the appellate process. The plaintiff opposed the motion. analyzing the motion, the district court explained that it had previously “determined that this case was frivolous and that plaintiff had litigated it in an unreasonable manner, rending the exceptional and entitling defendant to an award of attorneys’ fees. None of those underlying facts have changed, and plaintiff does not argue that they have.”

The court then determined that there was no need to make a second finding of exceptionality. “There is no need to make a second, separate determination under § 285 as to whether the case is exceptional. See, e.g., Dippin’ Dots, Inc. v. Mosey, 602 F. Supp. 2d 777 (N.D. Tex.2009) (rejecting plaintiffs’ argument that defendant had to “make a separate showing that the appeal itself is exceptional” and that fees “have to be separately justified in each phase of a case,” finding that defendant was entitled to fees without a second determination of exceptionality). That is, plaintiffs handling of the case since dismissal need not independently qualify as exceptional. Indeed, plaintiff does not argue here that a second, independent finding of exceptionality is required. As such, this Court’s earlier determination controls, and defendant is entitled to reasonable attorneys’ fees under 35 U.S.C. § 285.”

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The plaintiff filed a motion for protective order to prevent the deposition of its litigation counsel. The district court referred the motion for protective order to the special master for resolution.

The special master framed the issue as whether, plaintiff’s litigation counsel, Mr. Chae should be required to provide testimony and information in discovery. “The parties agree that the applicable standard is set forth in Shelton v American Motors Corp., 805 F. 2d 1323, 1327 (8th Cir., 1986). Essentially, the standard to be applied is that the Court must determine that no other means exist to obtain the information other than to depose the attorney; that the information sought is relevant and non-privileged; and that the information sought is crucial to the preparation of the party seeking the discovery.”

The special master noted that Mr. Chae was the prosecuting patent attorney for the utility patent at issue in this case and was also the prosecuting attorney for four design patents, which are the subject of a separate suit that was consolidated. The special master also noted that the district court had already denied the plaintiff’s Motion to Dismiss and Motion to Strike, noting defendants alleged in their affirmative defenses and Counterclaim that the utility patent is invalid under the doctrine of inequitable conduct “because of the actions of [Mr. Chae], who prosecuted the application that matured into the ‘283 patent.” Further, the district court noted that defendants alleged that Mr. Chae failed to disclose prior art to the USPTO during the ‘283 prosecution, “with the specific intent to deceive the USPTO” and also alleged that Mr. Chae never informed the inventor, Mr. Kim, that he had a duty to submit relevant prior art to the USPTO.

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Digitech Image Technologies (“Digitech”) asserted U.S. Patent No. 6,128,415, directed to the generation and use of device profiles for digital image processing system against numerous defendants, including Xerox and Fujifilm Corporation. Digitech appealed the district court’s finding on summary judgment that the asserted claims were invalid under 35 U.S.C. §101. Specifically, Digitech argued that the district court erred in finding (1) that the device profile claims are directed to a collection of data that lacks tangible or physical properties and (2) that the asserted method claims encompass an abstract idea not tied to a specific machine or apparatus. The Federal Circuit affirmed the decision of the district court.

The ‘415 patent was aimed at reducing distortion of an image’s color and spatial properties caused by imaging devices (e.g. digital cameras, TVs, printers) due to the fact that such devices differ in the range of colors and spatial information that they utilize. According to the court, independent claims 1 and 26 described a device profile as “a collection of information; specifically, a description of a device dependent transformation of spatial and color information”:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

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Accused infringers have long relied on the Declaratory Judgment Act (“the Act”) to bring actions against patent owners to clear any cloud over their accused business activities. To that end, the Act has served as a powerful tool. Accused infringers do not even have to wait to be named as a defendant in an infringement lawsuit before bringing their own cause of action, as a plaintiff, for declaratory relief that the patent-at-issue is invalid, unenforceable, or not infringed. The Act, however, requires that the party seeking declaratory relief establish that a “case or controversy” exist from the moment it files its action. Although many courts, including the Supreme Court, have provided guidance as to where to draw the line above which a sufficient case or controversy exits, that line is still a murky one. What actions must a patent owner take–and when must it take those actions–to trigger the requisite case or controversy allowing an accused infringer to file its action first?

Well, the Federal Circuit recently added further guidance on the issue. In Danisco US, Inc., v. Novozymes A/S, a unanimous panel of the Federal Circuit reversed a district court and held that the patent holder’s conduct prior to the issuance of the patent can form a sufficient case or controversy for declaratory relief.

The relationship between the parties in the case provides important background. The declaratory judgment plaintiff, Danisco, and defendant, Novozymes, compete to develop and supply Rapid Starch Liquefaction (“RSL”) products. Since about 2001, Novozymes had sued Danisco for patent infringement numerous times. In one of those suits, Novozymes amended a pending patent application to claim one of Danisco’s new products, then sued Danisco on the same day the patent issued.

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In a long-awaited decision, the Federal Circuit ruled en banc to uphold the the de novo standard for appellate review of claim construction issues, which was previously established in another en banc decision, Cybor Corp. v. FAS Technologies, Inc. 138 F.3d 1448 (Fed. Cir. 1998).

The facts and procedural background of the case presented a prime opportunity for the Federal Circuit to revisit the question of what deference, if any, it should give to a district court’s claim constructions. During the district court proceedings, the parties disputed the meaning of “voltage means.” As per usual, the district court analyzed the patent’s intrinsic evidence relating to the claim term. However, the district court also accepted testimony from expert witnesses and the inventor. After analyzing the different types of evidence, the district court sided with the patentee and ruled that the term should be given its plain meaning, as opposed to a more specific meaning as a means-plus-function term.

Applying the non-deferential Cybor standard of review, a panel from the Federal Circuit reversed the district court’s claim construction. The panel held that the term is a means-plus-function term and required disclosure of sufficient corresponding structure in the patent specification. Based on that conclusion, the panel invalidated the claims for indefiniteness. The patentee requested rehearing, arguing that the interpretation of documents is a fundamentally factual exercise and, therefore, a district court’s interpretation of patent claims requires some deference on appeal. In this case, the patentee argued that, on a deferential review, the district court would not, or should not, have been reversed. The Federal Circuit undertook rehearing en banc for the purpose of reconsidering the standard of appellate review of claim construction.

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Plaintiffs Transunion Intelligence LLC and Trans Union LLC (collectively, “Transunion”) filed a patent infringement action against Search America over two patents that are directed to a computer-implemented method and software that is used to access a person’s eligibility to receive financial assistance for healthcare services. Transunion asserted both direct infringement and inducing infringement of one of the patents-in-suit.

Search America moved to dismiss the inducing infringement claim, asserting that Transunion had failed to plead that Search America had the specific intent to infringe the patent-in-suit. The district court disagreed. “As discussed at he hearing on Search America’s motion, however, the Court believes that Transunion has pleaded a plausible claim of induced infringement against Search America. In its complaint, Transunion pleads that Search America knew of the ‘937 patent, and Transunion pleads specific facts in support of that allegation – namely, that Search America studied the ‘937 patent to distinguish it from Search America’s own patent application. Fourth Am. Compl. para. 11. Transunion also alleges that Search America performed all but one of the steps of the ‘937 patent and that either Search America or a customer working with Search America performed the remaining step – namely, the inputting of patient data. Fourth Am. Compl. Ex. B at 2. Transunion further alleges that Search America’s customers performed the ‘inputting’ step by populating an on-line form created, controlled, and provided by Search America. Id.”
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With the Federal Circuit’s recent decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 2012 U.S. App. LEXIS 18532 (Fed. Cir. Aug. 31, 2012), the elements for proving inducing infringement changed significantly. As a result, we can expect that a number of plaintiffs in pending patent cases will seek to amend their complaints to take advantage of the new standard. Whether amendment will be granted or not will vary depending on the stage of the case.
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