AI ethics teams lack ‘support, resources, and authority’
Because tech industry ethics teams lack resources and authority, their effectiveness is spotty at best, according to a new study.
PTAB Finds Patentee Breached Duty of Candor During IPR But in Doing So Conflates Rule 56 and IPR Candor Rules
By David Hricik, Mercer Law School
In a single decision issued by several panels, the Board held that the patentee had failed to act in good faith by, boiled down, intentionally withholding material test data that was inconsistent with the arguments it was making in favor of patentability of both original and proposed substitute claims. The case is Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics LLC, IPR2021-00847 (Patent 8,084,443 B2), IPR2021-00850 (Patent 8,293,467 B2), IPR2021-00854 (Patent 8,669,240 B2), IPR2021-00857 (Patent 9,212,399 B2), IPR2021-00860 (Patent 9,683,256 B2) (May 3, 2023).
Basically, the claims were directed to a composition that would kill certain pathogens and the test data showed it didn’t. If so, then of course the Board’s conclusion that intentionally withholding that information violates the duty of candor is itself no news.
What is worth discussing is the Board’s statement that Rule 56 applied to an IPR. It cited and quoted Rule 56 in several spots, though it also cited and quoted the IPR rules in other spots.
Why does this matter? Citing Rule 56 is wrong. By its terms it applies only to “the filing and prosecution of a patent application…” IPRs are not “patent prosecution.” (Nor are ex parte re-examinations, which are subject to a different rule from both Rule 56 and the IPR rules, but I digress.).
The Split on Pleading Scienter for Inequitable Conduct
by David Hricik, Mercer Law School
Federal Rule of Civil Procedure 9(b) requires that fraud or mistake be pled with particularity. The Federal Circuit has held that, although inequitable conduct is “broader than fraud” inequitable conduct must be pled with particularity in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009). (A digression: I think this is wrong because the Supreme Court has held that Rule 9(b) is limited to “fraud” and “mistake” and it is improper to rely on judicial policies to expand the plain meaning of the rule. See David Hricik, Wrong about Everything: The Application by the District Courts of Rule 9(b) to Inequitable Conduct, 86 Marquette Law Review 895 (2003) (here).)
One issue that has split the district courts is whether the “single most reasonable inference” standard for scienter applies at the pleading stage. The court in Deere & Co v. Kinze Mfg., Inc (No. 4:20-cv-00389-RGE-HC, C.D. Iowa May 1, 2023) collected the cases:
iLife Techs. Inc. v. AliphCom, No. 14-CV-03345-WHO, 2015 WL 890347, at *4 n.1 (N.D. Cal. Feb. 19, 2015) (“I recognize that there is currently a dispute among courts as to the pleading requirements for an inequitable conduct counterclaim.”) (collecting cases); see also Wyeth Holdings Corp.
Continue reading The Split on Pleading Scienter for Inequitable Conduct at Patently-O.
The Split on Pleading Scienter for Inequitable Conduct
by David Hricik, Mercer Law School
Federal Rule of Civil Procedure 9(b) requires that fraud or mistake be pled with particularity. The Federal Circuit has held that, although inequitable conduct is “broader than fraud” inequitable conduct must be pled with particularity in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009). (A digression: I think this is wrong because the Supreme Court has held that Rule 9(b) is limited to “fraud” and “mistake” and it is improper to rely on judicial policies to expand the plain meaning of the rule. See David Hricik, Wrong about Everything: The Application by the District Courts of Rule 9(b) to Inequitable Conduct, 86 Marquette Law Review 895 (2003) (here).)
One issue that has split the district courts is whether the “single most reasonable inference” standard for scienter applies at the pleading stage. The court in Deere & Co v. Kinze Mfg., Inc (No. 4:20-cv-00389-RGE-HC, C.D. Iowa May 1, 2023) collected the cases:
iLife Techs. Inc. v. AliphCom, No. 14-CV-03345-WHO, 2015 WL 890347, at *4 n.1 (N.D. Cal. Feb. 19, 2015) (“I recognize that there is currently a dispute among courts as to the pleading requirements for an inequitable conduct counterclaim.”) (collecting cases); see also Wyeth Holdings Corp.
Continue reading The Split on Pleading Scienter for Inequitable Conduct at Patently-O.
What are the ethics of brain-computer interfaces?
As brain-computer interface technologies become more common, so do questions related to ethics and policy. A new book digs in.
An Opinion on Chief Judge Moore’s Reported Unprecedented Effort to Remove Judge Newman
by David Hricik, Mercer Law School
As has been reported by Dennis on the main page, by Gene Quinn on IP Watchdog (here), and by various media I am seeing, Chief Judge Moore reportedly threatened Judge Newman with a petition to remove Judge Newman as incompetent to carry out her duties unless Judge Newman agreed to take senior status. Gene points out the incongruity of Chief Judge Moore’s reported position that Judge Newman may continue to serve as a judge, though Chief Judge Moore ostensibly believes she is incompetent to do so.
I’ve now seen several other articles about this, reporting more or less a consistent story. Hopefully, it’s not true. Beyond what has been reported, I would add the following two facts.
One, I saw Judge Newman (with Judge Lourie and former Judge O’Malley) speak at at the USPTO three weeks ago. (I was there speaking on patent ethics.) Judge Newman was eloquent, coherent, cogent, and spoke passionately about various topics, including section 101 (which requires a bit of mental agility, I would say). As others have pointed out, Judge Newman has, for a very long time, often taken more time in getting her opinions out than other judges, but I have seen nothing in those opinions that show incompetency, and if that delay were the basis that was a well known fact decades ago.
Will brain organoids soon become biocomputers?
Brain-powered computers would be faster, more efficient, and more powerful than silicon-based computing and AI, researchers say.
Will brain organoids soon become biocomputers?
Brain-powered computers would be faster, more efficient, and more powerful than silicon-based computing and AI, researchers say.
Update on the Akin Gump v. Xcential case
By David Hricik, Mercer Law School
Noted below, Akin Gump had sued a former vendor, Xcential, arguing that its lawyers had invented what Xcential had sought to patent. In response to the firm’s suit, Xcential filed five counterclaims, essentially asserting Akin Gump had misused information that Xcential had disclosed to Akin Gump.
As noted below, Akin Gump moved to dismiss those counterclaims and, further sought a preliminary injunction.
The district court denied the motion to dismiss four of the five, essentially holding Xcential had plead plausible facts that Akin Gump had misappropriated Xcential’s confidential information for the firm’s own benefit. The order is here. (Call me Nostradamus, but I’d bet Akin Gump’s motion for preliminary injunction will be denied, too.)
On the main page, Dennis posted about a case raising somewhat similar ethical concerns, United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023), which involved a firm’s admitted use of text from one patent application in an application for another client in closely related cases. It’s not clear, in either instance, whether any of the firms engaged in improper conduct, but it is not a good look where a firm is prosecuting cases for different clients in technologies so closely related that one client’s application provides a head start on another’s, or allegedly taking a vendor’s confidential information and using it for the law firm’s own benefit.
Continue reading Update on the Akin Gump v. Xcential case at Patently-O.
Update on the Akin Gump v. Xcential case
By David Hricik, Mercer Law School
Noted below, Akin Gump had sued a former vendor, Xcential, arguing that its lawyers had invented what Xcential had sought to patent. In response to the firm’s suit, Xcential filed five counterclaims, essentially asserting Akin Gump had misused information that Xcential had disclosed to Akin Gump.
As noted below, Akin Gump moved to dismiss those counterclaims and, further sought a preliminary injunction.
The district court denied the motion to dismiss four of the five, essentially holding Xcential had plead plausible facts that Akin Gump had misappropriated Xcential’s confidential information for the firm’s own benefit. The order is here. (Call me Nostradamus, but I’d bet Akin Gump’s motion for preliminary injunction will be denied, too.)
On the main page, Dennis posted about a case raising somewhat similar ethical concerns, United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023), which involved a firm’s admitted use of text from one patent application in an application for another client in closely related cases. It’s not clear, in either instance, whether any of the firms engaged in improper conduct, but it is not a good look where a firm is prosecuting cases for different clients in technologies so closely related that one client’s application provides a head start on another’s, or allegedly taking a vendor’s confidential information and using it for the law firm’s own benefit.
Continue reading Update on the Akin Gump v. Xcential case at Patently-O.