Thought Leadership

Intellectual Property Report: April 2019

Client Updates

An Evaluation of State Sovereign Immunity Under U.S. Patent Law
Daniel Rabinowitz
The Eleventh Amendment of the U.S. Constitution establishes the principle of state sovereign immunity, which generally provides states with immunity from “any suit in law or equity.” State sovereign immunity has historically been interpreted as applying to any judicial proceeding against a non-consenting state, and the Supreme Court has extended the scope of state sovereign immunity to administrative adjudications that resemble civil judicial proceedings. One prominent example of an administrative adjudication within the U.S. Patent and Trademark Office (“USPTO”) is inter partes review (“IPR”). Although the Patent Trial and Appeals Board (“PTAB”) currently considers state sovereign immunity applicable to IPR proceedings , recent decisions by the U.S. Court of Appeals for the Federal Circuit (“CAFC”) will likely require PTAB to reevaluate its position.
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The ChIPs Houston Innovation Ecosystem Event
Baker Botts is proud to sponsor the ChIPs Texas lunch and networking event titled "The Houston Innovation Ecosystem" on Friday, April 5. The event will be located at the TMCx Main Space, and is open to all members of the ChIPs community. To learn more, click here.

Can YouTube Videos be Considered Prior Art? It Depend
Niraj Thakker
YouTube provides a new forum where proponents seeking to invalidate a patent can search for prior art references. While the Federal Circuit has not ruled on whether YouTube videos can be considered prior art references to invalidate a patent, there is precedent, both from the Supreme Court and the Federal Circuit, that indicates that some public videos and some unlisted videos on YouTube can be considered as “described in a printed publication” under the pre-AIA 35 U.S.C. §102 (“pre-AIA” §102) and AIA 35 U.S.C. § 102 . Indeed, the Northern District of Florida issued a novel order on May 28, 2018, that held YouTube videos may qualify as prior art under the “described in a printed publication” language of pre-AIA 35 U.S.C. § 102. Accordingly, this decision raises two important questions: (1) whether this holding will also apply to the AIA version of § 102 and (2) whether all YouTube videos qualify as prior art under either version of § 102.
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Baker Botts' INTA 2019 Reception
Baker Botts will be hosting a private reception & brewery tour at the Harpoon Brewery & Beer Hall on Tuesday, May 21 in Boston, MA in conjunction with the International Trademark Association Annual Meeting. It will be an evening of great beer, appetizers and good conversation with a number of our clients and friends in the Intellectual Property practice. To learn more, click here.

Quantum Leap: Accelerating America's Growth in Quantum Computing
Ryan C. Clark
The National Quantum Initiative Act (H.R. 6227) ("the Act") authorizes $1.2 billion over ten years to accelerate quantum computing research and development in the United States. Signed into law on December 21, 2018, the Act recieved overwhelming bipartisian support and passed unanimously in the Senate and by a vote of 348-11 in the House of Representatives. The law provides a 10-year coordinated strategy for the White House and specified federal agencies to support and encourage the growth of quantum technology in the United States.
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*This article was previously published in ABA’s Sci-Tech e-Merging Newsletter on March 11, 2019

Alexa, Will I Be Able to Patent My Artificial Intelligence Technology This Year?
Jennifer Tempesta, Stephanie Kato
The patentability of artificial intelligence (AI) has been increasingly scrutinized in light of the surge in AI technology development and the ambiguity regarding the interpretation of software-related patents. The Federal Circuit has gradually refined the criteria for determining subject matter eligibility for software-related patents, and based in part on such jurisprudence, earlier this year the U.S. Patent and Trademark Office (USPTO) released revised guidance on examining patent subject matter eligibility under 35 U.S.C. §101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Considering the advances in AI technology and intellectual property law, how do these recent developments shape the outlook of AI patentability?
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*This article was previously published in the New York Law Journal on March 22, 2019.

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