With the wide and inexpensive availability of AI tools, we as IP attorneys need to decide how to employ them in our law practice. Our firm will discuss how AI tools such as Chat GPT could be used by us today, including what sensible controls we must employ to protect client confidences and privileges. We will also discuss how our fiduciary duty might obligate us to explore and adopt new tools like AI that can improve efficiency and quality. Furthermore, we will look ahead five and ten years to consider how AI will probably disrupt the status quo so that we can prepare.
A recent non-precedential decision by the Federal Circuit interested me — Cioffi v Google. Cioffi applied to the USPTO to reissue his ‘247 patent. This was within the two-year broadening window, and Cioffi eventually obtained four new patents. The patents are all directed to the use of multiple processors or processes in a computer system to prevent malware obtained over a network from accessing certain data stored on the computer. Cioffi sued Google on February 5, 2013 in EDTX. Google petitioned for CBM– eight cases in all, but the PTAB denied all eight petitions on the ground that they were not “covered business method” patents. The district court construed several disputed terms of the four patents-at-issue. Based on these constructions, the district court held claim 21 of the ‘103 patent to be invalid as indefinite, and the parties stipulated to noninfringement of all of the other asserted claims. In the appeal from that judgment, the CAFC reversed the district court’s construction of two claim terms and remanded for further proceedings. 632 F. App’x 1013. In that decision, the CAFC construed the term “web browser process” to mean a “process that can access data on websites” either directly or indirectly.” On remand, a jury found the asserted claims to be infringed and not invalid — that claim construction made all the difference. Cioffi was awarded $20,000,000 in damages. Google, in post-trial briefing, argued that the claims of the reissue patents were invalid for violating the “original patent” requirement because this critical claim terms was not disclosed in the original patent. Though the district court disagreed, on appeal the CAFC held the claims invalid as argued by Google. Though a broadening reissue is rare, it is fairly common with valuable patents. The “original patent” rule is good to know, both for those of us who might prosecute broadening reissues and for those of us who litigate them. The “original patent” rule is embodied in 35 USC 251(a), and derives from an 1893 the Supreme Court decision, Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893), holding, “to warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated” in the original patent, “but it must further appear from the original patent that they constitute parts or portions of the invention, which were intended or sought to be covered or secured by such original patent.”