United States: Catch Me If You Can: Litigating Artificial Intelligence Patents

In Short

The Situation: Industry leaders are taking serious interest in artificial intelligence, which is the development of computer systems able to perform tasks that normally require human intelligence and judgment.

The Impact: Given its potential, it is not surprising that the number of granted patents related to AI around the world is increasing exponentially.

Looking Ahead: The investment in AI technologies likely will lead to an increase in AI-related patent litigation, and the introduction of a nonhuman actor into a traditional patent infringement analysis means that litigants will face unique issues stemming from the dynamic nature of AI technology.


Artificial intelligence ("AI") is the theory and development of computer systems able to perform tasks that normally require human intelligence and judgment, such as visual perception, speech recognition, decision-making, and translation between languages. Once just the stuff of science fiction, AI today is deployed in numerous contexts—from targeted advertising to autonomous vehicles to document review—and touches millions of lives daily.

Industry leaders and startups alike are investing significant capital and effort into artificial intelligence technologies. By some estimates, the AI market is expected to add more than $15 trillion to the global economy by 2030.

A hallmark characteristic of AI is its ability to evolve over time in response to new or changing external conditions.

Just as AI enables computers to perform increasingly complex tasks, it also raises a host of novel issues for litigants in patent infringement suits. From whom and where to sue, to investigating and pleading infringement, patentees and accused infringers alike will need to adopt new strategies to confront the challenges posed by the latest frontier in patent litigation.

Who Is the Infringer?

Even this basic question can become more complex when AI technology is involved. Since it evolves over time, AI technology may not infringe a patent claim initially, but as it learns and modifies its internal operations and external behaviors, it may come to infringe. Also, its use may result in the creation of an infringing product or process.

Imagine one common life cycle for AI technology. The AI program is developed by one entity, sold to and owned by second entity, operated by a third entity, and trained by a fourth entity. The AI program may be used to develop a product, such as a chemical compound, which ultimately infringes one or more claims of an issued patent.

In this scenario, who is the infringer? Is it all of the above entities, or none of them? The law, in its current state, does not clearly answer this question. Since the target technology evolves over time, it is difficult to identify who the direct infringer is. In considering direct infringement in an AI context, it is worth considering some fundamental questions:

  • Is the direct infringer the developer for "making" the AI program? What if the AI program, as developed, was not able to make the infringing product?
  • How about the owner of the AI program that "made" the infringing product? What if the AI program wasn't capable of making the infringing product until it was used for a significant amount of time by the operator?
  • What if the AI program required significant training before it was able to make the infringing product?

Indirect infringement raises similar questions that must be considered in determining the proper defendant in an AI patent case:

  • Does the sale and ownership of the AI program subject the developer and owner to liability for contributory infringement based on the AI's infringement?
  • How do you determine whether an AI program has substantial noninfringing uses?
  • What about active inducement, which requires that an entity knowingly aided the AI's infringement? Could the operating entity or trainer be liable for active inducement based on the resources and information provided to the AI program that resulted in the infringement? Since the point of an AI program is for it to reason and learn on its own, how can one know that providing certain information will lead to direct infringement?


These are complex and unsettled questions and may lead to increased motion practice at the pleading stage. Patent owners should take care in naming defendant(s), in anticipation of potential challenges based on the questions above. Similarly, accused infringers of patents covering AI technologies should evaluate whether a motion to dismiss may be appropriate to quickly dispose of the case if their role does not subject them to liability under any theory of infringement.

Where Is the Infringer?

Litigants have been struggling with venue in view of the recent Supreme Court decision in TC Heartland LLC v. Kraft Food Group Brands LLC. In the context of AI technologies, venue may be further complicated. Given the added complexity of identifying an infringer, selecting the proper venue is even more important since it is possible that parties may need to be added or removed during pendency of the litigation to avoid being forced to transfer venue at a later date.

How Do You Plead Infringement?

To prepare a patent infringement complaint, a patent owner must have facts (as distinct from legal "labels" and "conclusions") giving rise to a "plausible" (rather than merely "conceivable") entitlement to relief. This typically requires the patentee to provide a description of an allegedly infringing device—a challenging proposition for constantly evolving AI technology. Conventional means of technical analysis may be unable to identify the features of the allegedly infringing AI device prior to discovery because such features may reside separately from the product, or be transient in nature, or require proprietary tools to be detected. Without access to the accused product, patentees may need to rely more heavily on a potential infringer's sales and marketing collateral in which the AI technology's functionality is touted, to develop and plead a good-faith basis for infringement. For these reasons, a plaintiff may be limited in the level of detail in its initial pleading, which may drive early motion practice.

How Do You Prove Infringement?

The pleading stage is only the beginning of the potential challenges a plaintiff may encounter when trying to prove infringement in AI cases. Continuous evolution of AI devices means that infringement may occur only for a short period of time, or even for only an instant. The state of the device then may move on to a noninfringing state. In some instances, certain devices may never operate in an infringing manner. Capturing operational data sufficient to compare device functionality to an AI patent may be difficult. Assuming it is even possible to capture such infringing behavior through product testing, it also may be difficult to determine how long ago the device was infringing.

New legal theories of infringement may develop to account for these unique features of AI technology. For example, a new potential element of proving both infringement and damages may be a showing that a temporary past infringement was not a chance occurrence, but rather a necessary and unavoidable step to the current state of the AI device. Alternatively, the current performance of the device and assessment of its changing nature may indicate that a currently noninfringing product is likely to infringe in the future. In both such scenarios, the current device, taken with all of its past and future history, collectively may be viewed as the infringing product.

Parties also will need to adapt the discovery process to the unique characteristics of AI. For example, a plaintiff may need to supplement its own technical investigation of the allegedly infringing device with information and data from the accused infringer. Therefore, from the outset of the litigation, patent owners may need to take a more aggressive approach to preservation orders that go beyond conventional litigation hold requirements, requiring accused infringers to capture, store, collect, and produce data they may not keep in the normal course of business.

Patent owners should also be mindful in formulating written discovery requests to capture data about past or potential behavior of the accused AI devices. Given the challenge that may be associated with complying with such requests—including the amount of data storage required or the accessibility of such data—defendants must also be prepared to assess, compute, and articulate the specific financial or other burden associated with these requests—such as the cost associated with having to deploy specialized data acquisition systems to capture responsive data.

Additionally, useful information about past performance or intended functionality of the device may be in possession of third parties, including AI computer algorithm developers, previous users, AI trainers, and customers. The nature of AI technologies, which rely on continuous training and updating, may increase the importance of obtaining substantial discovery from such third parties. Third parties caught in AI litigation may need to pay particular attention to drafting and enforcing more restrictive protective orders that would protect their own intellectual property, including trade secrets.

Technical experts are an important part of any patent litigation. However, there are not many highly qualified experts with a body of experience in the AI field yet. Additionally, any such experts are likely to be employed by companies developing AI technologies and may not be available to testify due to conflicts of interest. Both plaintiffs and defendants may be looking for experts capable of explaining complex intricacies of AI technologies to the jury. These considerations place emphasis on the early selection and retention of experts in AI cases.

Conclusion

The foregoing issues only scratch the surface of potential challenges parties may encounter and strategies they should consider when involved in an AI infringement case. The technical complexity of AI, large amounts of technical data representing dynamic behavior of AI devices, and evolving nature of AI systems may lead to challenges pleading and proving infringement. These effects may be especially pronounced in the first few years of AI patent litigation, with little guidance from any relevant precedent and while new legal theories tailored to AI are developed and tested. Therefore, litigants on both sides should consider the potential efficacy of early motion practice and develop a focused plan for discovery as soon as possible.


Two Key Takeaways

  1. The rise of AI will likely lead to a number of new issues for litigants in patent infringement suits.
  2. Questions relating to who exactly is the infringer, where the infringer is located, and how infringement is pled and proven, will be pertinent to patent infringement cases relating to AI.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions