Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article discussing how “[a] recent ruling opened the door for an administrative patent tribunal to wipe out certain Federal Circuit decisions, which may entice the full federal appeals court to grant a rare re-hearing request”;
  • another article addressing “steps to secure and safeguard US patents for AI-assisted inventions” following the Federal Circuit’s decision in Thaler v. Vidal; and
  • a third article asserting that “[i]nventors who revise a patent to overcome an examiner’s finding that the claims are not patent-eligible cannot later walk back those changes through the reissue process.”

Samantha Handler published an article for Bloomberg Law discussing how, in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Atlanta Gas “is asking the full Federal Circuit to reconsider a split-panel ruling where the majority found that, based on timeliness considerations, it didn’t have the ability to review a Patent Trial and Appeal Board’s reversal of a decision to review [a] contested patent.” Handler noted how “[t]he Federal Circuit had originally remanded the suit back to the PTAB to reconsider a sanctions award on a separate issue, and the board instead found it shouldn’t have reviewed the patents in the first place.” According to the article, Ryan Vacca, a law professor, said “[t]he panel’s decision is odd in that the Federal Circuit is giving up some of its power to the PTO.”

Scott Daniels, Noah Flaks, and Brad Lytle co-authored an article for IAM addressing how the Federal Circuit’s holding in Thaler v. Vidal “may create opportunities for accused infringers to challenge the validity of patents that claim inventions obtained, even in part, through AI systems.” Accordingly, the authors emphasize that, “[f]rom the outset, innovators need to structure research projects so that human beings determine the goals and design of the work to be done.” According to the authors, “[i]nventors should record the details of their conceptions and reductions to practice in laboratory notebooks, to establish a record showing that the inventorship was by human effort using AI as a tool, and not by the AI itself.”

Ryan Davis wrote an article for Law360 explaining how, in In re McDonald, the Federal Circuit rejected a patent reissue bid as a “Trojan horse.” Davis explained that the Federal Circuit “affirmed a Patent Trial and Appeal Board decision rejecting claims that inventor John McDonald amended in his computer search patent when seeking to have it reissued, since the amendments broadened the claims to cover material he gave up in order to obtain the patent.” Davis noted how “[t]he Federal Circuit said McDonald ran afoul of the ‘recapture rule,’ which prevents patent owners from acquiring, through the reissue process, subject matter that they surrendered when trying to secure the original patent.”