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United States District Court for the Eastern District of Virginia, Alexandria Division
September 2, 2021, Decided; September 2, 2021, Filed
[*240] MEMORANDUM OPINION
Before the Court are the parties' cross-motions for summary judgment, which address the core issue—can an artificial intelligence machine be an "inventor" under the Patent Act? Based on the plain statutory language of the Patent Act and Federal Circuit authority, the clear answer is no. Accordingly, Defendants' Motion for Summary Judgment [Dkt. No. 23] will be granted and Plaintiff's Motion for Summary Judgment [Dkt. No. 18] will be denied.1
This civil action concerns two patent applications that plaintiff Stephen Thaler ("plaintiff" or "Thaler") filed with the United States Patent and Trademark Office ("USPTO"), which were assigned U.S. Application Serial [**2] Nos. 16/524,350 (the "'350 application") and 16/524,532 (the "'532 application") (collectively, "the Applications").2 Plaintiff filed the Applications with the USPTO on July 29, 2019. Administrative [*241] Record ("AR") 1-96; 284-379. In his one-count complaint brought under the Administrative Procedure Act ("APA"), plaintiff alleges that the refusal of defendants Andrew Hirshfeld and the USPTO (collectively "defendants") to process the Applications was "arbitrary, capricious, an abuse of discretion and not in accordance with the law; unsupported by substantial evidence, and in excess of Defendants' statutory authority." [Dkt. No. 1] ¶ 70. Plaintiff seeks an order compelling defendants to reinstate the Applications and vacate the prior decision on plaintiff's petitions filed under 37 C.F.R. § 1.181. He also seeks "[a] declaration that a patent application for an AI-generated invention should not be rejected on the basis that no natural person is identified as an inventor"; "[a] declaration that a patent application for an AI-generated invention should list an Al where the AI has met inventorship criteria"; and an award of the costs and reasonable attorneys' fees plaintiff incurred in this litigation. [Dkt. No. 1] ¶¶ A-E.
As a civil action brought [**3] under the APA, review of the final agency action is limited to considering the administrative record. The factual assertions made by plaintiff during the application process are taken as true. Plaintiff alleges that he "is in the business of developing and applying advanced artificial intelligence (AI) systems that are capable of generating patentable output under conditions in which no natural person traditionally meets inventorship criteria," [Dkt. No. 1] ¶ 1, and is the owner of DABUS,3 an artificial intelligence machine listed as the inventor of the '350 application, which claimed a "light beacon that flashes in a new and inventive manner to attract attention ('Neural Flame')," and the '532 application, which claimed a "beverage container based on fractal geometry (`Fractal Container')." Id. ¶ 15.
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558 F. Supp. 3d 238 *; 2021 U.S. Dist. LEXIS 167393 **; 2021 U.S.P.Q.2D (BNA) 917
STEPHEN THALER, Plaintiff, v. ANDREW HIRSHFELD, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, et al., Defendants.
inventor, Patent, invention, USPTO, natural person, machine, artificial intelligence, declaration, inventorship, summary judgment, Creativity, deference, civil action, human being, execute, Defendants', Assignee, argues