Federal Circuit Patent Watch: The Patent Act defines “inventor” as limited to natural persons

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Precedential Federal Circuit Opinions   

1. REALTIME ADAPTIVE STREAMING LLC v. NETFLIX, INC. [OPINION] (2021-1484, 2021-1485, 2021-1518, 2021-1519, July 27, 2022) (Newman, Reyna, and Chen) 

Chen, J. Affirming district court decisions regarding award of attorneys’ fees pursuant to inherent equitable powers.  Following certain adverse patent eligibility rulings in the District of Delaware, plaintiff voluntarily dismissed its Delaware litigation and rebooted the same litigation by filing new actions in the Central District of California. In effect, plaintiff divided the Delaware action in two—asserting the same patents, but sequestering the patents known to be vulnerable to the adverse rulings in Delaware. Following briefing on defendants’ motion to transfer and motion for attorneys’ fees, plaintiff voluntarily dismissed both California actions.  After this second round of voluntary dismissals, defendants renewed their motion for attorneys’ fees. The California district court did not abuse its discretion when it awarded fees for the California actions but declined to award fees for the related Delaware and inter partes review proceedings. The blatant gamesmanship presented by the facts of this case constituted a willful action for an improper purpose, tantamount to bad faith, and therefore within the bounds of activities sanctionable under a court’s inherent power. However, there was no evidence that the initial filing of the Delaware action was untenable and, although the petitions for inter partes review were instituted during the pendency of the Delaware action, there was insufficient evidence to determine whether institution alone should have served to apprise plaintiff of the futility of its litigation efforts.

2. THALER v. VIDAL [OPINION] (2021-2347, August 5, 2022) (Moore, Taranto, and Stark) 

Stark, J. Affirming decision of PTO holding that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. The sole issue on appeal was whether an AI software system can be an “inventor” under the Patent Act. The Patent Act expressly provides that inventors are “individuals.” When used as a noun, “individual” ordinarily means a human being, a person. 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.

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