Top Stories of 2020: #5 to #8

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After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories.  For 2020, we identified eight stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  Today, we count down stories #8 to #5, and later this week we will count down the top four stories of 2020.  As with our other lists (2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2020" on January 20, 2020 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a few of the most important stories on this year's list, can be found here.

8.  Patenting and Artificial Intelligence

In October, the U.S. Patent and Trademark Office, which had earlier issued a request for comments on patenting artificial intelligence (AI) based inventions and then collated the comments it received from stakeholders, released a report entitled "Public Views on Artificial Intelligence and Intellectual Property Policy."  In its report, the USPTO noted that most commenters believed the current framework for examining computer-implemented software inventions should be suitable for examining AI-based inventions, but that it may be difficult to meet the requirements of 35 U.S.C. § 112(a) for certain AI-based inventions; that most commenters believed that AI may lead to changes in how the standard of a person of ordinary skill in the art is interpreted; and that some commenters expressed concerns that AI would lead to a proliferation of prior art making it difficult for examiners to conduct searches for relevant prior art.  Shortly after releasing that report, the USPTO released a study entitled "Inventing AI," which highlighted the increasing prevalence of AI-based patent applications in the U.S. over the past few decades.  The study, prepared by the Office of the Chief Economist of the USPTO, surveyed publicly available granted U.S. patents and U.S. patent application pre-grant publications published from 1976 through 2018.  In the study, the USPTO sets forth the perhaps unsurprising finding that the number of AI patent applications increased by more than 100% between 2002 and 2018, and the more surprising finding that the share of applications relating to AI grew from 9% to nearly 16% of all patent applications over that same time period.  The study suggests that it is clear that AI-based patents will remain an important part of the U.S. patent landscape going forward.

For information regarding this and other related topics, please see:

• "New USPTO Study Shows Rapid Growth, Regional Spread of AI-Based Patenting," October 27, 2020
• "USPTO Publishes Report on AI-Related Policies," October 11, 2020
• "'Creativity Machine' Cannot Be Named As Inventor," August 18, 2020

7.  CRISPR Interference Progresses

Five years ago, the journal Science picked the CRISPR (clustered regularly interspaced short palindromic repeats) technology as its "Breakthrough of the Year," declaring that the technology had "matured into a molecular marvel."  Not surprisingly, CRISPR's status as breakthrough molecular marvel has resulted in a battle over who has the best patent position with respect to this technology.  And despite an ongoing and worsening pandemic, Interference No. 106,115 between the Broad Institute, Harvard University, and the Massachusetts Institute of Technology (as Senior Party) and the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (as Junior Party) moved forward in 2020 with the two Parties presenting various motions and oppositions to those motions.  CRISPR interferences have now made three of our last four top stories lists, and could very well be on next year's list as well.

In a related development, the Opposition Division of the European Patent Office revoked European Patent No. EP 2771468 in its entirety in January.  The patent, which named as Proprietors the Broad Institute, MIT, and Harvard College, had been opposed by Novozymes and CRISPR Therapeutics.  In December, the Technical Board of Appeal affirmed the revocation, finding that because Rockefeller University had not been named as an Applicant, the named Proprietors could not validly claim priority to several provisional applications, and by the filing date of the provisional application to which the named Proprietors could validly claim priority, there had published prior art that invalidated the granted claims.

For information regarding this and other related topics, please see:

• "Broad Files Priority Motion in CRISPR Interference*," December 31, 2020
• "CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes," December 30, 2020
• "Broad Files Motion Opposing CVC's Motion to Subpoena Witnesses," December 28, 2020
• "Broad Institute Loses Appeal in European Patent Office, Patents Remain Revoked," December 8, 2020
• "CVC Discloses Priority Evidence and Earliest Conception Date in Interference," November 19, 2020
• "CRISPR Housekeeping," October 29, 2020
• "PTAB Grants Broad Motion No. 4 for Priority Benefit to U.S. Provisional Application No. 61/736,527," October 6, 2020
• "PTAB Denies Broad Motion No. 3 to De-designate Claims as Not Corresponding to Count No. 1," October 4, 2020
• "CVC Takes Its Turn at Filing Dispositive Motion to End Interference," September 28, 2020
• "PTAB Denies Broad Motion No. 2 to Substitute the Interference Count," September 27, 2020
• "Claim Construction by PTAB in CRISPR Interference Decision," September 24, 2020
• "PTAB Decision Denying Broad's Substantive Motion No. 1 in CRISPR Interference," September 20, 2020
• "PTAB Decides Parties' Motions in CRISPR Interference," September 11, 2020
• "PTAB Hears Oral Argument on Motions in Interference No. 106,115," May 19, 2020
• "The Plot Thickens: Sigma Aldrich Has Allowed Claims," May 14, 2020
• "PTAB Sets Date for Oral Argument in CRISPR Interference," April 30, 2020
• "CVC Files Reply to Broad Opposition to CVC's Motion to Exclude Broad Evidence," April 26, 2020
• "Broad Reply No. 4 to CVC's Opposition No. 4 to Broad's Motion No. 4 for Priority to U.S. Provisional Application No. 61/736,527," April 22, 2020
• "Broad Reply No. 3 to CVC's Opposition No. 3 to Broad's Motion No. 3 to De-designate Claims as Not Corresponding to Count No. 1," April 22, 2020
• "Broad Reply No. 2 to CVC's Opposition No. 2 to Broad's Motion No 2 to Substitute the Count," April 21, 2020
• "CVC Files Motion to Exclude Broad Evidence; Broad Opposes," April 16, 2020
• "CVC Reply No. 2 to Broad's Opposition No. 2 to CVC's Motion No. 2 to Be Accorded Benefit of Priority," April 14, 2020
• "CVC Reply No. 1 to Broad's Opposition No. 1 to CVC's Motion No. 1 to Be Accorded Benefit of Priority," April 12, 2020
• "CRISPR Housekeeping," March 3, 2020
• "CVC Files Motion in Opposition to Broad's Substantive Motion No. 4," February 20, 2020
• "CVC Files Motion No. 3 in Opposition to Broad's Substantive Motion No. 3 to De-designate Claims as Not Corresponding to Count No. 1," February 10, 2020
• "CVC Submits Motion No. 2 in Opposition to Broad's Substantive Motion No. 2 to Substitute the Count," February 5, 2020
• "Broad Files Opposition to CVC's Motion No. 1 for Priority Benefit," January 30, 2020
• "Meanwhile, Back at the Broad-CVC Interference . . .," January 29, 2020
• "Broad Institute Patents Remain Revoked in Europe," January 28, 2020

6.  IP Decisions Implicate Sovereign Immunity

Last year, the question of sovereign immunity in patent cases -- more particularly whether tribal sovereign immunity could protect the St. Regis Mohawk Indian Tribe from being named as a party in an inter partes review (IPR) proceeding, and whether the University of Minnesota, as an "arm of the state," could assert sovereign immunity in an IPR -- made our top stories list (coming in at #3).  The issue of sovereign immunity with respect to IP cases has once again made our list for 2020.  In two recent cases, the Federal Circuit determined in Gensetix, Inc. v. Board of Regents of the University of Texas System that Gensetix was without remedy for a claim of infringement asserted against the Baylor College of Medicine, Diakonos Research, and William Decker with respect to patents licensed from the University of Texas (UT), because UT refused to join as a necessary party on sovereign immunity grounds.  In this case, the Federal Circuit found that the Eleventh Amendment precluded involuntary joinder of a State in a lawsuit brought by a citizen of the State or other States.  And last month, in Board of Regents of the University of Texas System v. Baylor College of Medicine, the Federal Circuit found that state sovereign immunity did not prevent a petitioner from instituting an IPR against a state or arm of the state in view of its decision in Regents of the University of Minnesota v. LSI Corp. (for which certiorari was denied in 2020).

For information regarding this and other related topics, please see:

• "Board of Regents of the University of Texas System v. Baylor College of Medicine (Fed. Cir. 2020)," December 23, 2020
• "Gensetix, Inc. v. Board of Regents of the University of Texas System (Fed. Cir. 2020)," July 27, 2020
• "Allen v. Cooper (2020)," March 23, 2020

5.  Doctrine of Equivalents Continues to Make Comeback

The doctrine of equivalents is a Supreme Court-created patent doctrine that arose in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950).  However, the doctrine fell into disfavor at the Federal Circuit during the 1990's and arguably provided the first inkling to the Supreme Court that the Federal Circuit's patent jurisprudence would benefit from the Court's closer oversight.  In Warner-Jenkinson Co. v. Hilton Davis Chem. Co. and Festo v. Shoketsu Kinzoku Kogyo Kabushiki, the Supreme Court reiterated the vibrancy of the doctrine; nevertheless, its successful assertion continued to decline.

As we noted in our top stories list last year, the doctrine of equivalents began to make a bit of a comeback in 2019 (enough to make last year's top stories list, coming in at #10), and this comeback continued in 2020.  In March, the Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents in Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC, affirming the District Court's decision regarding infringement under the doctrine of equivalents with respect to some asserted patents (while reversing as to infringement under the doctrine of equivalents with respect to other asserted patents).  And then last month, in Eli Lilly & Co. v. Apotex, Inc., the Federal Circuit again affirmed a finding of infringement under the doctrine of equivalents.  Between those two decisions, however, the Federal Circuit, in Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, applied the dedication-disclosure doctrine to affirm a District Court dismissal on the pleadings of infringement allegations under the doctrine of equivalents.

For information regarding this and other related topics, please see:

• "Eli Lilly & Co. v. Apotex, Inc. (Fed. Cir. 2020)," December 27, 2020
• "Supreme Court Denies Another Certiorari Petition on Doctrine of Equivalents," June 16, 2020
• "Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC (Fed. Cir. 2020)," May 11, 2020
• "Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC (Fed. Cir. 2020)," March 29, 2020
• "DOE Infringers Petition for Certiorari over PHE "Tangential Relationship" Test," March 18, 2020

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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