U.S. Court of Appeals for the Federal Circuit, Thaler v. Vidal, Docket No. 21-2347

Patent

 

Inventor

 

Artificial Intelligence (AI) Software System

 

Natural Persons

 

The Patent Act Requires An “Inventor” To Be a Natural Person

 

Statutory Interpretation 

 

Dictionary Act

 

 

 

Appeal from the United States District Court for the Eastern District of Virginia in No. 1:20-cv-00903-LMB-TCB

 

 

This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems. In fact, however, we do not need to ponder these metaphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the relevant statute. The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any human as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judgment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm.

 

 

The sole issue on appeal is whether an AI software system can be an “inventor” under the Patent Act. In resolving disputes of statutory interpretation, we “begin with the statutory text, and end there as well if the text is unambiguous.” BedRoc Ltd. v. United States, 541 U.S. 176, 183 (2004). Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.

 

 

The Patent Act expressly provides that inventors are “individuals.” Since 2011, with the passage of the Leahy-Smith America Invents Act, the Patent Act has defined an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphasis added). The Act similarly defines “joint inventor” and “coinventor” as “any 1 of the individuals who invented or discovered the subject matter of a joint invention.” § 100(g) (emphasis added). In describing the statements required of an inventor when applying for a patent, the statute consistently refers to inventors and co-inventors as “individuals.” See § 115.

 

 

The Patent Act does not define “individual.” However, as the Supreme Court has explained, when used “as a noun, ‘individual’ ordinarily means a human being, a person.” Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012) (internal alteration and quotation marks omitted). This is in accord with “how we use the word in everyday parlance”: “We say ‘the individual went to the store,’ ‘the individual left the room,’ and ‘the individual took the car,’ each time referring unmistakably to a natural person.” Id. Dictionaries confirm that this is the common understanding of the word. 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”). So, too, does the Dictionary Act, which provides that legislative use of the words “person” and “whoever” broadly include (“unless the context indicates otherwise”) “corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.” 1 U.S.C. § 1 (emphasis added). “With the phrase ‘as well as,’ the definition marks ‘individual’ as distinct from the list of artificial entities that precedes it,” showing that Congress understands “individual” to indicate natural persons unless otherwise noted. Mohamad, 566 U.S. at 454.

 

 

Consequently, the Supreme Court has held that, when used in statutes, the word “individual” refers to human beings unless there is “some indication Congress intended” a different reading. Id. at 455 (emphasis omitted). Nothing in the Patent Act indicates Congress intended to deviate from the default meaning. To the contrary, the rest of the Patent Act supports the conclusion that “individual” in the Act refers to human beings.

 

 

Statutes are often open to multiple reasonable readings. Not so here. This is a case in which the question of statutory interpretation begins and ends with the plain meaning of the text. See Bostock v. Clayton Cnty., 140 S. Ct. 1731, 1749 (2020) (“This Court has explained many times over many years, when the meaning of the statute’s terms is plain, our job is at an end.”). In the Patent Act, “individuals” – and, thus, “inventors” – are unambiguously natural persons. Accordingly, we have no need to consider additional tools of statutory construction. See Matal v. Tam, 137 S. Ct. 1744, 1756 (2017) (“Inquiry into the meaning of the statute’s text ceases when the statutory language is unambiguous and the statutory scheme is coherent and consistent.”)

 

 

 

 

(U.S. Court of Appeals for the Federal Circuit, Thaler v. Vidal, Aug. 5, 2022, Docket No. 21-2347)

 

U.S. Supreme Court, Return Mail, Inc. v. Postal Service, Docket No. 17-1594, J. Sotomayor

Patent Reexamination

Post-Issuance Review Proceedings

Defense in an Infringement Action

Ex Parte Reexamination

Inter Partes Reexamination

Inter Partes Review

Post-Grant Review

Covered-Business-Method Review

Leahy-Smith America Invents Act

Interpretation (Statute)

Dictionary Act

In the Leahy-Smith America Invents Act of 2011, 35 U. S. C. §100 et seq., Congress created the Patent Trial and Appeal Board and established three new types of administrative proceedings before the Board that allow a “person” other than the patent owner to challenge the validity of a patent post-issuance. The question presented in this case is whether a federal agency is a “person” able to seek such review under the statute. We conclude that it is not.

(…) After a patent issues, there are several avenues by which its validity can be revisited. The first is through a defense in an infringement action. Generally, one who intrudes upon a patent without authorization “infringes the patent” and becomes subject to civil suit in the federal district courts, where the patent owner may demand a jury trial and seek monetary damages and injunctive relief. §§271(a), 281–284. If, however, the Federal Gov­ernment is the alleged patent infringer, the patent owner must sue the Government in the United States Court of Federal Claims and may recover only “reasonable and entire compensation” for the unauthorized use. 28 U. S. C. §1498(a).

Once sued, an accused infringer can attempt to prove by clear and convincing evidence “that the patent never should have issued in the first place.” Microsoft Corp. v. i4i L. P., 564 U. S. 91, 96–97 (2011); see 35 U. S. C. §282(b). If a defendant succeeds in showing that the claimed invention falls short of one or more patentability requirements, the court may deem the patent invalid and absolve the defendant of liability.

The Patent Office may also reconsider the validity of issued patents. Since 1980, the Patent Act has empow­ered the Patent Office “to reexamine—and perhaps cancel—a patent claim that it had previously allowed.” Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___, ___ (2016) (slip op., at 3). This procedure is known as ex parte reexamination. “Any person at any time” may cite to the Patent Office certain prior art that may “bear on the patentability of any claim of a particular patent”; and the person may additionally request that the Patent Office reexamine the claim on that basis. 35 U. S. C. §§301(a), 302(a). If the Patent Office concludes that the prior art raises “a substantial new question of patentability,” the agency may reexamine the patent and, if warranted, cancel the patent or some of its claims. §§303(a), 304–307. The Director of the Patent Office may also, on her “own initiative,” initiate such a proceeding. §303(a).

In 1999 and 2002, Congress added an “inter partes reexamination” procedure, which similarly invited “any person at any time” to seek reexamination of a patent on the basis of prior art and allowed the challenger to partic­ipate in the administrative proceedings and any subse­quent appeal. See §311(a) (2000 ed.); §§314(a), (b) (2006 ed.); Cuozzo Speed Technologies, 579 U. S., at ___ (slip op., at 3).

In 2011, Congress overhauled the patent system by enacting the America Invents Act (AIA), which created the Patent Trial and Appeal Board and phased out inter partes reexamination. See 35 U. S. C. §6; H. R. Rep. No. 112–98, pt. 1, pp. 46–47. In its stead, the AIA tasked the Board with overseeing three new types of post-issuance review proceedings.

First, the “inter partes review” provision permits “a person” other than the patent owner to petition for the review and cancellation of a patent on the grounds that the invention lacks novelty or nonobviousness in light of “patents or printed publications” existing at the time of the patent application. §311.

Second, the “post-grant review” provision permits “a person who is not the owner of a patent” to petition for review and cancellation of a patent on any ground of patentability. §321; see §§282(b)(2), (b)(3). Such proceedings must be brought within nine months of the patent’s issu­ance. §321.

Third, the “covered-business-method review” (CBM review) provision provides for changes to a patent that claims a method for performing data processing or other operations used in the practice or management of a finan­cial product or service. AIA §§18(a)(1), (d)(1), 125 Stat.329, note following 35 U. S. C. §321, p. 1442. CBM review tracks the “standards and procedures of” post-grant re­view with two notable exceptions: CBM review is not limited to the nine months following issuance of a patent, and “a person” may file for CBM review only as a defense against a charge or suit for infringement. §18(a)(1)(B),125 Stat. 330.

The CBM review program will stop accepting new claims in 2020. See AIA §18(a)(3)(A), 125 Stat. 330; 77 Fed. Reg. 48687 (2012).

(…) Any party “dissatisfied” with the Board’s final decision may seek judicial review in the Court of Appeals for the Federal Circuit, §§319, 329; see §141(c), and the Director of the Patent Office may intervene, §143.

In sum, in the post-AIA world, a patent can be reex­amined either in federal court during a defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite of three post-issuance review proceedings before the Patent Trial and Appeal Board.

(…) The AIA provides that only “a person” other than the patent owner may file with the Office a petition to insti­tute a post-grant review or inter partes review of an issued patent. 35 U. S. C. §§311(a), 321(a). The statute likewise provides that a “person” eligible to seek CBM review may not do so “unless the person or the person’s real party in interest or privy has been sued for infringement.” AIA §18(a)(1)(B), 125 Stat. 330. The question in this case is whether the Government is a “person” capable of institut­ing the three AIA review proceedings.

The patent statutes do not define the term “person.” In the absence of an express statutory definition, the Court applies a “longstanding interpretive presumption that ‘person’ does not include the sovereign,” and thus excludes a federal agency like the Postal Service.

(…) This presumption reflects “common usage.” (…) It is also an express directive from Congress: The Dictionary Act has since 1947 provided the definition of “‘person’ ” that courts use “in determining the meaning of any Act of Congress, unless the context indicates otherwise.” 1 U. S. C. §1; (…) The Act provides that the word “ ‘person’ . . . includes corporations, companies, associa­tions, firms, partnerships, societies, and joint stock com­panies, as well as individuals.” §1. Notably absent from the list of “persons” is the Federal Government.

(…) Given the presumption that a statutory reference to a “person” does not include the Government, the Postal Service must show that the AIA’s context indicates otherwise. Although the Postal Service need not cite to “an express contrary definition,” Rowland, 506 U. S., at 200, it must point to some indication in the text or context of the statute that affirmatively shows Congress intended to include the Government. See Cooper, 312 U. S., at 605.

(…) Patent Office’s Manual of Patent Examining Procedure (MPEP)

(…) This Court has not decided whether common-law estoppel applies in §1498 suits (cf. fn. 10).

(U.S. Supreme Court, June 10, 2019, Return Mail, Inc. v. Postal Service, Docket No. 17-1594, J. Sotomayor)

U.S. v. Windsor

Marriage: same sex: the State of New York recognizes these marriages; (…) federal De­fense of Marriage Act (DOMA), which amended the Dictionary Act—a law providing rules of construction for over 1,000 federal laws and the whole realm of federal regulations—to define “marriage” and “spouse” as excluding same-sex partners; DOMA is unconstitutional as a deprivation of the equal liberty of persons that is protected by the Fifth Amendment; by history and tradition the definition and regulation of mar­riage has been treated as being within the authority and realm of the separate States; the State’s decision to give this class of persons the right to marry conferred upon them a dignity and status of immense import. But the Federal Government uses the state-defined class for the opposite purpose—to impose re­strictions and disabilities. The question is whether the resulting in­jury and indignity is a deprivation of an essential part of the liberty protected by the Fifth Amendment; New York’s actions were a proper exercise of its sovereign authority. They reflect both the community’s considered perspective on the historical roots of the in­stitution of marriage and its evolving understanding of the meaning of equality; by seeking to injure the very class New York seeks to protect, DOMA violates basic due process and equal protection principles ap­plicable to the Federal Government; DOMA cannot survive under these principles. Its unusual deviation from the tradition of recognizing and accepting state definitions of marriage operates to deprive same-sex couples of the benefits and responsibilities that come with federal recognition of their marriages; DOMA’s avowed purpose and practical effect are to impose a disadvantage, a separate status, and so a stigma upon all who enter into same-sex marriages made lawful by the unquestioned authority  of the States; DOMA’s history of enactment and its own text demonstrate that interference with the equal dignity of same-sex marriages, conferred by the States in the exercise of their sovereign power, was more than an incidental effect of the federal statute. It was its essence (U.S.S.Ct., 26.06.2013, U.S. v. Windsor, J. Kennedy).

Mariages entre personnes de même sexe : l’état de New-York permet ces mariages, qu’une loi fédérale ne reconnaît pas. Cette loi fédérale est jugée inconstitutionnelle par la présente décision. Elle est en effet contraire au principe d’égale liberté garanti par le Cinquième Amendement. Historiquement et par tradition la définition et la règlementation du mariage sont des prérogatives des états. La législation de l’état de New York en cette matière reflète à la fois la compréhension des racines historiques du mariage et à la fois la compréhension de la notion évolutive du principe d’égalité. La loi fédérale précitée viole en outre les principes de « due process » et d’ « equal protection ».

Carr v. U.S.

Interpretation: present tense: enacted in 2006, the Sex Offender Registration and Notification Act (SORNA) makes it a federal crime for, inter alia, any person (1) who “is required to register under SORNA,” and (2) who “travels in interstate or foreign commerce,” to (3) “knowingly fail to register or update a registration,” 18 U. S. C. §2250(a) ; Section 2250 does not apply to sex offenders whose interstate travel occurred before SORNA’s effective date; and because the Dictionary Act’s provision that statutory “words used in the present tense include the future as well as the present,” 1 U. S. C. §1, implies that the present tense generally does not include the past, regulating a person who “travels” is not readily understood to encompass a person whose only travel occurred before the statute took effect; a statute’s “undeviating use of the present tense” is a “striking indicator” of its “prospective orientation.” Gwaltney of Smithfield, Ltd. v. Chesapeake Bay Foundation, Inc., 484 U. S. 49, 59; because §2250 liability cannot be predicated on pre-SORNA travel, the Court need not address whether the statute violates the Ex Post Facto Clause (U.S.S.Ct., 01.06.10, Carr v. U.S., J. Sotomayor).

Interprétation : usage du présent : les mots utilisés au présent incluent le futur aussi bien que le présent. Mais non pas le passé. Légiférer au sujet d’une personne qui « voyage » n’englobe pas sans autre la situation d’une personne dont l’unique voyage a eu lieu avant l’entrée en vigueur de la loi.