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Drafting Patent Applications for AI SystemsOvercoming Patent Eligibility, Inventorship, and Enablement Challenges and

Avoiding Rejections

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TUESDAY, APRIL 23, 2019

Presenting a live 90-minute webinar with interactive Q&A

Elliot C. Cook, Partner, Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Susan Y. Tull, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Drafting Patent Applications for AI Systems

April 23, 2019

Presented bySusan Y. Tull and Elliot C. Cook

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Overview

▪ What is AI?

▪ What can be patented?

▪ Who is the inventor?

▪ Comparison of EU Guidelines with current U.S. patent law

▪ Maximizing patent protection in the U.S. and EU

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WHAT IS AI?

WHAT DOES THE PATENT

OFFICE CONSIDER TO BE AI?

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What is AI?

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What is AI?

“Fit for Task” General-Purpose

Human Intelligence

Sources: Nest Thermostat, Amazon Alexa, Tesla Model S, HAL 9000 from 2001: A Space Odyssey

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What is AI?

[A]rtificial intelligence includes the following:

(1)Any artificial system that performs tasks under varying and unpredictable circumstances without significant human oversight, or that can learn from experience and improve performance when exposed to data sets.(2)An artificial system developed in computer software, physical hardware, or other context that solves tasks requiring human-like perception, cognition, planning, learning, communication, or physical action.(3)An artificial system designed to think or act like a human, including cognitive architectures and neural networks.(4)A set of techniques, including machine learning, that is designed to approximate a cognitive task.(5)An artificial system designed to act rationally, including an intelligent software agent or embodied robot that achieves goals using perception, planning, reasoning, learning, communicating, decision making, and acting.

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What is AI?

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AI Resurgence

• The accelerating growth of enabling technologies is

driving AI development:

– Powerful computing and wide availability of GPUs

– Practically infinite storage and a flood of data, i.e., “Big Data”

– Better, smarter algorithms

– Advancements in sensor technology (e.g., image and voice)

• Increased need to identify patterns with large volumes

of business data

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WHAT CAN BE PATENTED?

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Increased Patent Activity for AI in the U.S.

U.S. Patent Applications for AI (1990-2018)

Source: “Mapping the Movement of AI into the Marketplace with Patent Data” (2018)

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Large Software and Electronics Companies Lead

Applicants for AI Patents in U.S. (1990-2018)


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Geography and Inventor Location

Inventors for U.S. AI Patent Applications (1990-2018)


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What Can Be Patented?

▪ System Architecture (neural network;

expert/knowledge system)

▪ Data Processing (problem solving; reasoning;

planning; discovery)

▪ Learning/Training (machine/deep learning; back

propagation; supervised/unsupervised)

▪ AI-Embodied Apparatus or Method (autonomous

vehicles; smart home/IoT devices; security/fraud

prevention; virtual personal assistants)

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Sampling of AI Patents: System Architecture

Hierarchical temporal

memory for client-server

communications

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Sampling of AI Patents: System Architecture

Parallel convolutional

neural network using a

plurality of processing

nodes and layers

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Sampling of AI Patents: Data Processing

Analyzing chemical data to

predict side effects (e.g.,

from pharmaceuticals)

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Sampling of AI Patents: Apparatus or Method

Autonomous

floor-cleaning robot

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WHO INVENTS AND WHO

OWNS?

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Who Invents?

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Who Invents?

▪ Basic requirements

– “Because conception is the touchstone of

inventorship, each joint inventor must generally

contribute to the conception of the invention.”

Bard Peripheral Vascular, Inc. v. W.L. Gore &

Assoc., Inc., 776 F.3d 837 (Fed. Cir. 2015).

– Conception “is the ‘formation in the mind of the

inventor, of a definite and permanent idea of the

complete and operative invention, as it is

hereafter to be applied in practice.’” Dawson v.

Dawson, 710 F.3d 1347 (Fed. Cir. 2013).

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Who Invents?

▪ Joint inventors

– Joint inventors must be “aware” of each other’s work on the invention▪ 35 U.S.C. § 116(a) “neither states nor implies that two

inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other’s work.” Kimberly-Clark Corp. v. Procter & Gamble Distr. Co., 973 F.2d 911, 916 (Fed. Cir. 1992).

– Merely adding routine knowledge or skill is not an inventive contribution▪ Simply providing “well-known principles” or techniques, or

“reduc[ing] the inventor’s idea to practice” does not qualify. Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).

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Who Invents?

▪ Hypothetical

– Company A conceives of new invention requiring proof

of concept and testing

– Company B supplies AI system to perform the proof of

concept analysis and testing

– Issues: How much did the AI contribute to the

invention? Routine skill/tool? Can the AI system be

an inventor or joint inventor?

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Who Invents?

▪ Hypothetical

– Company A develops an AI system

– Company B buys and owns the AI system

– Company C provides data and trains the AI system

– Company D allows Company B to operate the AI system

on its resources

▪ The AI system generates something patentable after

training

– Issues: Who’s the inventor? Are there multiple

inventions? Are there joint inventors?

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Who Owns?

▪ General principles

– Ownership initially vests in each inventor, absent an

agreement to the contrary

– “Each co-owner’s ownership rights carry with them the

right to license others, a right that also does not

require the consent of any other co-owner.” Schering

Corp. v. Roussel-UCLAF SA, 104 F.3d 341 (Fed. Cir.

1997).

– “Ordinarily, one co-owner has the right to impede the

co-owner’s ability to sue infringers by refusing to

voluntarily join in such a suit.” STC.UNM v. Intel Corp.,

754 F.3d 940 (Fed. Cir. 2014).

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PATENT PROSECUTION –

PATENT ELIGIBILITY

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Mayo/Alice Test

Is the claim to a process,

machine, manufacture or

composition of matter?

Is the claim directed to a law of

nature, a natural phenomenon or

an abstract idea? (judicial

exceptions)

Does the claim recite additional

elements that amount to significantly

more than the judicial exception?

YesNo

Yes

Yes No

No

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What Does “Directed To” Mean?

The Federal Circuit has explained as follows:

• Enfish v. Microsoft Corp.: Alice’s two-part test “plainly

contemplates that the first step of the inquiry is a

meaningful one”

– The “directed to inquiry applies a stage-one filter to claims,

considered in light of the specification, based on whether their

character as a whole is directed to excluded subject matter”

• McRO Inc. v. Bandai: Excluded subject matter is limited

to that which is “directed to a result or effect that itself is

the abstract idea”

– Likened the “directed to” inquiry to a determination of the “focus”

of the claims

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CAFC Guidance On Patenting Software

Enfish - The fact that the invention can be implemented in software does not make it unpatentable:

– “Software can make non-abstract improvements to computer technology just as hardware improvements can . . . “

– “We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs”

– “[T]he claims are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea.”

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McRO - The important part is claiming “how” a result is achieved and not simply claiming the result itself:

– We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery

– A patent may issue “for the means or method of producing a certain result, or effect, and not for the result or effect produced”

– The abstract idea exception prevents patenting a result where “it matters not by what process or machinery the result is accomplished”

– Claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable

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Thales Visionix Inc. v. United States (Fed. Cir. 2017)

• Fed. Cir. reversed a decision of the Fed. Cl. that found claims directed to an inertial tracking system ineligible– Fed. Cl.: claims were directed to the idea of using

“mathematical equations for determining the relative position of a moving object to a moving reference frame”

• Fed. Cir. found the claims in Thales “nearly indistinguishable” from those in Diehr

– The mathematical equations are used in conjunction with an “unconventional utilization of inertial sensors”

– Use of the equations to claimed method and system does not make the claims abstract

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CAFC Decisions on “Additional Elements”

Berkheimer v. HP and Aatrix Software v. Green Shades Software

• Two 2018 decisions addressing early motions based on § 101

• Under Step 2 of Alice/Mayo analysis, if “additional elements” are well-understood, routine, and conventional, invention is not subject matter eligible

• “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination”

• These CAFC decisions reduced the likelihood of prevailing on motions to dismiss, or for summary judgment, on § 101 grounds

• Increase likelihood that trial or decision by finder-of-fact is required

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PTO Memo Addressing Berkheimer (Apr. 19, 2018)

• For PTO, an additional element (or combination)

represents well-understood, routine, conventional

activity only when the examiner can readily

conclude that the element(s) is “widely prevalent

or in common use in the relevant industry”

• Examiner must “expressly support” rejection with

citation to admission, case, or other support

• If challenged by applicant, examiner should

reevaluate

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January 7, 2019 USPTO Guidelines on § 101

Revised first step of examination procedure under

Alice/Mayo:

• Provided groupings of subject matter that are abstract– Mathematical concepts - mathematical relationships,

mathematical formulas or equations, mathematical calculations

– Certain methods of organizing human activity – includes

commercial or legal activity, marketing, managing personal

relationships

– Mental processes – concepts performed in the human mind

(including an observation, evaluation, judgment, opinion)

• If claim does not recite subject matter that falls within

one of these groupings, typically does not recite

abstract idea

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Examples Provided by USPTO

Ex. 39 - Training a Neural Network for Facial Detection

A computer-implemented method of training a neural network for facial detection comprising:

collecting a set of digital facial images from a database;

applying one or more transformations to each digital facial image including mirroring, rotating,

smoothing, or contrast reduction to create a modified set of digital facial images;

creating a first training set comprising the collected set of digital facial images, the modified set of

digital facial images, and a set of digital non-facial images;

training the neural network in a first stage using the first training set;

creating a second training set for a second stage of training comprising the first training set and

digital non-facial images that are incorrectly detected as facial images after the first stage of training; and

training the neural network in a second stage using the second training set.

Step 2A — Prong 1: Recites a judicial exception? No

o Mathematical concepts are not recited in the claims

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Ex. 39 - Training a Neural Network for Facial Detection

A computer-implemented method of training a neural network for facial detection comprising:

collecting a set of digital facial images from a database;

applying one or more transformations to each digital facial image including mirroring, rotating,

smoothing, or contrast reduction to create a modified set of digital facial images;

creating a first training set comprising the collected set of digital facial images, the modified set of

digital facial images, and a set of digital non-facial images;

training the neural network in a first stage using the first training set;

creating a second training set for a second stage of training comprising the first training set and

digital non-facial images that are incorrectly detected as facial images after the first stage of training; and

training the neural network in a second stage using the second training set.

Step 2A — Prong 2: Integrated into a practical application?

Step 2B: Provides an inventive concept?

N/A since found eligible in Step 2A — Prong 1

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Ex. 42 - Notifications When Medical Records Are Updated

Ex. 42 - Claim 2. A method comprising:

a) storing information about a patient's condition in a plurality of network-based non-

transitory storage devices having a collection of medical records stored thereon;

b) providing access, by a content server, to users so that any one of the users can

update the information about the patient's condition in the collection of medical records, and;

c) storing the updated information about the patient's condition in the collection of

medical records in the plurality of network-based non-transitory storage devices.

Step 2A — Prong 1: Recites a judicial exception?

Yes

o Claim as a whole recites a method of organizing human interactions

o “content server” and “plurality of network-based non-transitory storage

devices” are only generically recited

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No

o “content server” and “network-based non-transitory storage devices” merely

invoked as tools to perform an existing medical records update process

o Simply implementing abstract idea on a generic computer is not a practical

application of the recited abstract idea

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No

o Claim as a whole merely applies concept of updating records in a computer environment

o “Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e.,

an inventive concept) to the abstract idea.”

o Therefore, the claim is ineligible

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a) storing information in a standardized format about a patient's condition in a plurality of

network-based non-transitory storage devices having a collection of medical records stored thereon;

b) providing remote access, by a content server, to users over a network so that any one of the

users can update the information about the patient's condition in the collection of medical records, and in

real time through a graphical user interface, wherein the one of the users provides the updated

information in a non-standardized format dependent on the hardware and software platform used by the

one of the users;

c) converting, by a content server, the non-standardized updated information into the

standardized format,

d) storing the standardized updated information about the patient's condition in the collection of

medical records in the plurality of network-based non-transitory storage devices standardized format;

e) automatically generating a message containing the updated information about the patient's

condition by the content server whenever updated information has been stored; and

f) transmitting the message to all of the users over the computer network in real time, so that each

user has immediate access to up-to-date patient information.

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Step 2A — Prong 1: Recites a judicial exception?

Yes

o Still recites a method for organizing human activity






real time through a graphical user interface . . .;



. . . .

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Yes

o The additional elements (highlighted) provide a specific improvement over prior art

“by allowing remote users to share information in real time in a standardized format

regardless of the format in which the information was input . . .”









. . . .

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. . . .


N/A since found eligible in Step 2A

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Takeaways For Overcoming Section 101 Challenges

• A non-conventional arrangement of generic,

conventional pieces is patent eligible

• Use of a mathematical equation in a claimed method

or system does not make the claim abstract

– But as in Diehr and Thales, claim must include other

non-generic elements

• Consider the claim elements individually and “as a

whole” when arguing non-conventionality

• Argue that claimed method or system improves prior

art technology or improves the practical functionality of

the generic computer

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AI Drafting Tips

• Prebutting 101– Control narrative

– What was conventional?

– How does claimed invention improve the conventional?

• How you describe your invention matters

• How you claim your invention matters

• Separate applications for use cases and software improvements

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Patentability in the EU

• Four basic requirements for patentability:

i. there must be an “invention” belonging to any field

of technology;

ii. the invention must be “susceptible of industrial

application”;

iii. the invention must be “new”;

iv. the invention must involve an “inventive step”

Art. 52(1)

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What is an “Invention”?

• The EPC contains a non-exhaustive list of things

that are not inventions (Art. 52(2)):

– Discoveries

– Scientific theories

– Mathematical methods

– Aesthetic creations

– Schemes, rules and methods for performing mental

acts, playing games or doing business

– Programs for computers

– Presentations of information

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November 1, 2018 EPO Guidelines on AI

EPO updated Guidelines for Examination to

provide specific guidance on AI

• Inserted under Guidelines addressing mathematical

models

– AI and machine learning are largely unpatentable and are per se “of

an abstract mathematical nature”

– EPO will look very closely at whether claimed subject matter has a

technical character as a whole because expressions such as

“neural network” and “reasoning machine” usually refer to abstract

models

Section 3.3.1 of Part G

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• The application of the field of technology of the AI will

determine whether invention has a technical character

– Use of a neural network in a heart-monitoring apparatus for the

purpose of identifying irregular heartbeats = TECHNICAL

CONTRIBUTION

– Classifying abstract data records or even “telecommunication

network data records” without any indication of a technical use

being made of the resulting classification = NOT TECHNICAL

PURPOSE

November 1, 2018 EPO Guidelines on AI

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AI Challenges Based on Subject Matter

At the USPTO

• Section 101 rejections possible

• Greater scrutiny on functional claiming

• Challenges for obviousness

At the EPO

• More objections that claims are “non-technical”

• Higher standard for inventive step

• Fewer office actions before oral proceedings

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Speaker Information

Susan Tull is a partner in our DC office

Susan has been involved in all phases and forums of

litigation. Her patent litigation, appeals, and post-grant

proceedings practices focus on technologies related to

consumer products, software, AI, medical devices,

automotive, and other mechanical and electrical systems.

Susan focuses her practice on patent litigation and client

counseling in the mechanical, computer science, electrical,

and medical device fields. Susan has researched and

written extensively on patenting artificial intelligence and

software as a medical device.

Contact Susan:

[email protected]

Elliot Cook is a partner in our Reston office

Elliot Cook maintains a diverse intellectual property

practice, including patent litigation, post-grant patent

challenges, strategic patent prosecution and portfolio

development, and patent monetization. Elliot devotes a

significant amount of his practice to helping clients

strategically develop patent portfolios that effectively block

competitors and build corporate value. He works closely

with clients to ensure that their patents align with and

advance their business goals, thereby optimizing value and

minimizing cost.

Contact Elliot:

[email protected]

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Disclaimer

These materials have been prepared solely for educational and

entertainment purposes to contribute to the understanding of U.S. and

European intellectual property law. These materials reflect only the

personal views of the authors and are not individualized legal advice. It is

understood that each case is fact specific, and that the appropriate

solution in any case will vary. Therefore, these materials may or may not

be relevant to any particular situation. Thus, the authors, Finnegan,

Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe

LLP, and Fei Han Foreign Legal Affairs Law Firm) cannot be bound either

philosophically or as representatives of their various present and future

clients to the comments expressed in these materials. The presentation of

these materials does not establish any form of attorney-client relationship

with these authors. While every attempt was made to ensure that these

materials are accurate, errors or omissions may be contained therein, for

which any liability is disclaimed.

drafting patent applications for ai systemsmedia.straffordpub.com/.../presentation.pdfapr 23, 2019...

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