Your AI overlords demand to be recognized...

Oh, inventorship and AI. As much as Crispr has been preoccupying the IP agendas of IP conferences the last couple of years, inventorship and AI looks to be taking its place. The IPKat has also been a fan of the topic (see Kat posts here). For the AmeriKat's part, she thinks that, for the time-being, AI inventorship is (for the most part) a non-event, but not everyone agrees.  Indeed some issue warnings about not recognizing the role of AI in inventorship.

"Last week the European Patent Office stated that an inventor must be a ‘natural person’. This provides the basis for the EPO’s decision in December to reject two patent applications which had named the artificially intelligent system Dabus as the sole inventor. The patent applications were made by Dr Thaler’s team at Surrey University and described a flashing beacon light and plastic food container.

Dr Thaler’s failed ‘AI inventor’ applications have raised an important question - can AI be inventive? However, in this article, I shall not dwell on the specific merits of Dr Thaler’s applications but instead focus on Google DeepMind’s artificially intelligent system AlphaGo.

In 2016, AlphaGo was capable of reading and understanding the prior art of the game Go, finding novel and inventive solutions to defeat its opponent Lee Sedol (the world champion) 4 games to 5 and effectively communicating that solution to Aja Haung, the DeepMind team member who placed stones on AlphaGo’s behalf. However, the technology behind AlphaGo is not limited to board games, it also extends to sectors with patentable subject matter such as telecommunications and pharmaceuticals.

This article argues that AI can be inventive, that AI differs from other platform technologies and for the sake of transparency, AI inventorship should be recognised.

AlphaGo

In 1997, Garry Kasparov became the first chess world champion to lose a match to a computer which had been programmed by expert chess players. In 2016, Lee Sedol became the first Go world champion to lose to a computer that had taught itself - AlphaGo.

Prior to Sedol’s defeat it was thought that humans would retain the upper hand in Go because in any one position there are 200 possible moves, whilst in chess there are 20. To put this into perspective the number of possible configurations of a Go board is greater than the number of atoms in the universe. In fact, even if you took all the computers in the world and ran them for a million years, this would still not be enough computing power to calculate all the possible variations. Therefore, AlphaGo cannot simply compute every possible move, it must rely on something else – intuition.

In the second game AlphaGo made Move 37 and gave us a glimpse of a future shaped by computer intuition and inventiveness. However, Move 37 appeared at first to be a mistake because no competent human player would have made it. In fact, AlphaGo knew that there was only a 1 in 10,000 chance a human would have made Move 37, yet despite this, it ignored the games received wisdom or prior art and made an inventive move.

Post-match analysis concluded that Move 37 was the pivot on which the game had turned in AlphaGo’s favour. Lee Sedol later described it as a “really creative and beautiful” move. The lessons that AlphaGo has taught and continues to teach human Go players amounts to an improvement in the game’s prior art and if Move 37 were patentable, it would be an inventive step.

How AI differs from other platform technologies e.g. mouse models

Aja Haung was the DeepMind team member who placed stones on the Go board for AlphaGo in its victory over Lee Sedol. However, it is unreasonable to suggest that Haung was the creative mind behind Move 37 because at no point did he exercise choice. Move 37 would have occurred irrespective of whether it was Haung or this author placing the stones.

Mouse models on the other hand still require scientists to exercise choice either when selecting the antigenic challenge or in determining which antibody therapeutics may be suitable for use in humans. The scientist in making these choices must rely on their experience and intelligence, which is why the scientist rather than the mouse is the named inventor. A useful antibody therapeutic would not exist irrespective of whether a scientist skilled in the art or this author were conducting the experiment.

I have used AlphaGo as an example because the human operator is an automaton but mouse models do pose an interesting problem; namely making a choice based on a menu of limited options does not appear particularly inventive. Is there a difference between a mouse model and an artificially intelligent system that still requires the human operator to exercise choice?

The difference is that the immune system of a mouse is static, in that it does not get better over time at identifying antibody therapeutics for use in humans. Artificially intelligent systems on the other hand are dynamic in that over time they do get better at their given task. For example, DeepMind went onto develop AlphaGo Zero in 2017, which with no prior knowledge of the game Go and only the basic rules as an input had at three days surpassed the abilities of AlphaGo Lee, the version discussed above. It had achieved this entirely from self-play, without human intervention or historical data. In just a few weeks AlphaGo Zero had accumulated thousands of years of human knowledge but it had also discovered new knowledge. It developed unconventional strategies and creative new moves that echoed and surpassed Move 37. Mouse models will always require an intelligent human scientist but artificially intelligent systems will over time make their human operators increasingly redundant. How will we know when humans have become redundant in the inventive process if an AI cannot be named as an inventor?

Furthermore, Google recently announced that its Sycamore quantum processor had performed a specific task in 200 seconds that would have taken the world’s best supercomputer 10,000 years to complete. One of the major applications of quantum computing is in artificial intelligence and if successfully applied will make AlphaGo Zero appear prehistoric in comparison.

The dual purpose of patents - ownership and transparency

In return for the grant of a twenty-year monopoly society demands transparency from the owners of patents. But in denying the existence of ‘AI inventors’ society risks losing this transparency because it encourages human inventors to either down play the extent of AI assistance in a patent application or alternatively to rely on trade secrets. In either scenario transparency is lost but does this matter?

The creative outputs of both Aja Haung and AlphaGo are owned by Google but that ownership should not make it irrelevant which of the two’s creativity was responsible for defeating Lee Sedol. Without the legal fiction of AI inventorship we are headed for a society in which Aja Haung became the Go world champion in 2016. "

Earlier this month, the Court of Appeal (CoA) of the Hague stayed the enforcement of a patent decision under appeal where an injunction was granted [decision here, in Dutch]. The decision is of interest because it is exceptionally rare for Dutch courts to stay enforcement of decisions and the CoA's reasoning may contain some clues as to when an injunction would be considered a disproportionate remedy in patent infringement cases.

The case
Hanson holds a national Dutch patent [yes, those are still granted and can be the basis for successful infringement claims] to a "substance introduction method" for plants. Hanson's sister company, HE Licences, holds an exclusive licence to the patent. VG Colours applies artificial colouring to white orchids and sells the resulting plants. HE Licences claims that the patent is infringed by VG Colours.

After an unsuccessful infringement suit in 2015, HE Licences tried again and, on 19 June 2019, the district court of the Hague found its patent infringed and issued an injunction against VG Colours [decision here, in Dutch]. VG Colours appealed the decision and also started preliminary relief proceedings to obtain a stay of the enforcement, but its prayers for relief were rejected by the preliminary relief judge of the Hague district court [decision here, in Dutch].

The CoA's reasoning

As part of the appeal, VG Colours requested the CoA to stay enforcement of the decision pending the appeal. The CoA granted VG Colours' request for three reasons [par. 4.10]: (i) the district court had failed to consider some of VG Colours' arguments; (ii) the enforcement caused very significant damage to VG Colours; and (iii) there was a considerable risk that HE Licences would not be able to provide recourse for this damage if the district court's decision was overturned on appeal.

The district court's failure to take into account some of VG Colours' arguments. In first instance, Hanson/HE Licences had partially abandoned the patent, limiting its claim scope. VG Colours was allowed to respond to the limitation and it did, but the district court refused to hear some of its arguments because they did not relate to the limited claims per se and so should have been advanced at the beginning of the proceedings.

According to the CoA, this was unjustified. VG Colours advanced the arguments it felt were strongest against the original claims; it could not be expected to advance every imaginable argument in anticipation of a potential change in claim scope. What is more, the district court had not taken into account VG Colours' non-infringement defence because it was supposedly advanced too late. But the CoA found that VG Colours' first written submission clearly stated the defence so that the district court should have dealt with it.

The CoA considered that this did not mean the first instance decision is automatically incorrect; but it did mean that the assessment of the dispute had been incomplete. Consequently, the CoA could not assume the correctness of the first instance decision in the context of the request to stay its enforcement.

Damage to VG Colours as a result of enforcement. The CoA also established that the continued enforcement of the decision would cause "very significant" damage to VG Colours (par. 4.5). It mentioned the following circumstances: 

On August 18, lingerie and accessories company Zephyrs filed a suit in New York Supreme Court (a court of first instance) against its former patent attorney Bernard Codd and his law firm McDermott, Will & Emery, claiming that their “deficient services “while drafting a bra insert patent now prevents Zephyrs to sue competitors selling similar products on the market and to collect royalties. The case is Runberg, Inc. d/b/a Zephyrs v. McDermott, Will & Emery LLP and Bernard P. Codd.

This Kat was confused as to where the kidney-shaped insert should go.

Debra MacKinnon is Zephyrs’ principal and the inventor of a kidney-shaped insert for women’s bras, which is “anatomically designed to conform to and push up the breasts, thereby increasing volume and cleavage, while providing a natural shape.” In March 2008, the company engaged the law firm McDermott, Will & Emery to file a patent and U.S. Patent No. 8,216,021 B1 (the Patent) was issued on July 10, 2012.

According to the complaint, Mr. Codd advised his client “that the best available alternative to describe the Invention in the formal patent application would be through the use of defined “ratios.”“

 Victoria’s Secret has been selling for more than a decade “at least $120 million worth” of Zephyrs’ insert under a sourcing contract. This business relationship went sour in 2012 and Zephyrs filed a suit against Victoria’s Secret, claiming the lingerie retailer intentionally breached the agreement. Litigation was eventually dismissed by both parties with prejudice. The August 18 complaint alleges that Victoria’s Secret has been selling knock-offs of Zephyrs’ bra inserts since then without paying any royalties. Plaintiff estimates its lost royalties to exceeds $4,900,000. Amazon sells a similar product, Envy, on its website, and Zephyrs estimates it lost $1,000,000 in royalties.

This is the stuff dreams are made of.

When Zephyrs discovered that products similar to the one it had patented where sold, it consulted an attorney to file an infringement suit and discovered then that the Patent was defective. Ms. MacKinnon consulted with an independent patent counsel in April 2014 who pointed out what he believed was “substantial errors” in the patent when it describes the ratio of maximum thickness between the first main surface of the insert and its second main surface, and the ratio of a depth of the notch from a straight line connecting the first lobe of the insert and its second lobe along the top side of the bra insert.

Plaintiff claims that these ratios and limitations were “fundamentally incorrectly drafted” and, as such, did not correctly describe the invention which is accurately depicted in the diagrams of the patent application.

Plaintiff then hired another law firm to file a reissue application on its behalf, which is now pending before the USPTO. However, the complaint states that several claims in the Patent were “so fundamentally flawed, that they must be cancelled by the USPTO.”

The complaint states that even as Amazon and Victoria’s are selling similar inserts, Zephyrs cannot sue them as its Patent is defective. The reissue process does not permit “to sue under or assert the original, damaged patent from the date that infringement began until a reissue application is granted.” Even if the Patent is indeed reissued, the complaint points out that the companies selling products similar to the Zephyrs’ insert during this blackout period “may possess a statutory and equitable defense of “intervening rights” to the Reissued Patent. In other words, if a third party begins manufacturing or selling products that incorporate the Invention now (as many already have), they are permitted to keep selling such products even if they would infringe upon a Reissued Patent that is later granted and issued.”

Zephyrs is seeking damages and costs.

A warm Katpat to Chris Torrero who told the IPKat about this case. Thank you Chris!

The Court of Appeal roared back into action yesterday with its first patent decision of the new term: Novartis AG & Cibavision AG v. Johnson & Johnson [2010] EWCA Civ 1039 (available on Bailii here). Novartis and Cibavision appealed against the decision of Kitchin J ([2009] EWHC 1671 (Pat) – reported by the IPKat here), in which he had held that whilst Johnson & Johnson’s (J&J) Oasys contact lenses fell within the scope of claims 1 and 24 of Novartis’ European Patent (EP (UK) No. 819,258), the Patent itself was, however, invalid on grounds of insufficiency. J&J had also contended that the Patent was invalid for obviousness and lack of novelty, but these arguments were rejected at first instance.

It was decided rather earlier this month, but the ruling of Mr Justice Kitchin in Novartis AG and Cibavision AG v Johnson & Johnson Ltd and another [2009] EWHC 1671 (Pat) has taken a while to reach the top of the IPKat's must-blog pile. 356 paragraphs can take a long time for a Kat to read and, though he hates to admit it, even longer to get the hang of what it's all about.

In brief, Novartis claimed that J&J's Acuvue Oasys products infringed its European patent for extended-wear silicone hydrogel contact lenses that could be left in the eye overnight or even for several days. J&J counterclaimed for revocation on the bases of insufficiency (ie the teaching in the invention as disclosed did not provide sufficient information for the person skilled in the art to make contact lenses within or across the range of the claims without undue experimentation), lack of novelty and absence of inventive step.

Kitchin J ruled that the patent was invalid for lack of sufficiency. He reasoned as follows:

* As to lack of novelty, it had to be shown that the prior art contained a clear description of, or clear instructions to make, something that would necessarily infringe the patentee's claim if carried out after the grant of the patent. Since the examples in two earlier patent applications cited by J&J did not satisfy all the requirements of any of the patent's claims, this burden of proof had not been met.

* The way of making a silicone hydrogel lens which was ophthalmically compatible over a period of extended wear was not obvious in the light of (i) the common general knowledge or (ii) the content of three earlier cited patents.

* For a patent to be valid its specification had to disclose the invention in a way that was sufficiently clear and complete for it to be performed by a person skilled in the art. In this context, the specification had to enable the invention to be performed to the full extent of the monopoly claimed (citing Biogen Inc v Medeva).

* Whether the specification disclosed an invention clearly and completely enough for it to be performed by a person skilled in the art involved a question of degree: the specification need not set out every detail necessary for performance, but the skilled person should not be required to carry out any prolonged research, enquiry or experiment.

* In this case, the ion permeability values taught by the patent and set by the claims were "extremely confusing and of little or no practical assistance to the skilled person seeking to make an ophthalmically compatible lens suitable for extended wear": it would require a research programme to identify silicone hydrogel formulations which were useful for producing such lenses.

Says the IPKat, this judgment has some interesting material on priority (paras 113 to 140), and a whole mini-thesis on insufficiency (paras 230 to 323). Kitchin J bases his reasoning on the House of Lords decision in Lundbeck, which he sees as reaffirming the reasoning in Biogen, both support the basic rule for sufficiency (see paras 233-234). He cites Lord Hoffmann quoting the Technical Board of Appeal of the EPO in Exxon/Fuel Oils (T 409/91) [1994] O.J. EPO 653: "the extent of the patent monopoly ... should correspond to the technical contribution to the art in order for it to be supported, or justified" (para 233).

Merpel adds: if you want to know all about the place of silicone 3-(methacryloxy)propyl tris(trimethysiloxyl)silane (TRIS) in the history of silicone hydrogel development, or the use of SANS, SAXS, TEM, EDX, AFM, DSC and FEGSTEM in the analysis of microphase structures, you will find the judge's analysis quite un-put-downable.Wild Cat contact lenses here
Cats' eyes here