Patent Archives - Foresight Valuation Group

Lynn’s Picks: Foresight’s Patent of the Week – US Granted Patent 11,983,958 Systems and Methods for Automated Makeup Application

Posted on June 12, 2024 6:53 pmModified on June 12, 2024 6:54 pmby Lynn Dudinsky

Disclaimer: This blog was created for informational purposes only and does not represent Foresight’s or the author’s opinion regarding the validity, quality or enforceability of any particular patent covered in this blog. Foresight is not a law firm and no portion of the information contained in this blog was intended to serve as legal opinion.

As a husband, I have spent a lot of time waiting for the makeup process to be completed before my wife and I are able to attend a function, date or generally leave the house. When I came across this patent, I was surprised that I had not seen a similar technology previously because one of the important features of automation and robotics has always been about simplifying routine tasks. Gemma robotics, the Israeli startup and holder of this patent, has a slogan on their website which states:

“We’re making Gemma because we love wearing makeup more than we love applying it”

This slogan is, or should be, the goal of consumer-focused robotics and other automation technologies, to simplify and more efficiently handle daily tasks. Moreover, it sheds light on what we can expect to see over the coming years; small form factor devices such as robotic vacuums and makeup application robots, as opposed to full humanoid robots such as the Optimus Robot which Tesla claims will be able to perform useful tasks in their factory before the end of 2024.

What’s Inside Patent No. 11,983,958?

This patent introduces a novel approach to makeup application where the system is used to record a face map, skin tone, facial features and preferences of the user. The user is then able to select from a wide variety of looks that have been preconfigured into the system. The system allows the user to see a preview of the selected look prior to the final selection. Once confirmed, the robot then calculates the right formula to give the desired look, mixes the formula and sprays the mixture through an airbrush nozzle onto the user’s face. In order to accomplish this, significant steps have to be taken by the system to determine the amount of makeup to mix, the sequence of application, the distance from the nozzle to the user’s face and the amount of force needed to apply the makeup. I believe the technology may be a bit early as there are no examples found on the company’s website of the system in operation and the final result; however, this patent was selected to bring the conversation back to the reason why robotic systems will soon be ubiquitous within households.

What Comes Next?

Makeup is one task that a large percentage of the population do on a daily basis and these routine, time consuming tasks, are what inventors should focus on solving using the increased ability of robotic systems and artificial intelligence. It is easy to get lost in the large format, life-like robots that you see at CES or in the news, but these systems are unlikely to achieve traction in the near future, whether that is due to cost or limitations on what these systems can perform. For consumers, the growth of robotic and AI technologies in the home should open up time for doing the things we want to do with our time. We already have examples of robotic vacuum cleaners that have since been expanded to robotic lawn mowers. However, the vast majority of homes do not have an operating robotic system to assist with daily tasks and that opens up a wide market for inventors to create relatively inexpensive systems to address a wide range of tasks that provide a significant return on investment with the most valuable assets we have, time. Over the next few weeks, this blog will feature new robotic and AI systems that address the consumer market’s need for help in these everyday tasks.

Have you come across any interesting patents you would like us to feature in future blogs or did you invent a technology you would like featured? Please send us an email at media@foresightvaluation.com or call our office at (650) 561-3374.

Redefining Inventorship: The USPTO’s Path Forward for AI-Assisted Inventions

Posted on March 1, 2024 7:07 pmModified on March 1, 2024 7:07 pmby Lynn Dudinsky

On February 13, 2024 the United States Patent and Trademark Office (USPTO) released examination guidance pursuant to the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” The process started back in 2019 when the USPTO issued a request for public comment on patenting Artificial Intelligence (AI)-assisted inventions which was followed by a report in 2020 summarizing the various viewpoints found in the public comments received. In 2023, the USPTO issued a follow-up request for public comment focused on the issue of inventorship of AI or machine generated inventions. Following additional sessions to hear from various parties and the public in general, the USPTO determined that it would provide guidance regarding inventorship and patentability of AI-assisted inventions. Moreover, President Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” in October of 2023 which set out a number of policies and principles that would allow the US to lead in AI while also promoting responsible innovation, competition and collaboration so that a fair, open, and competitive ecosystem and marketplace for AI technologies could be created in a manner that would drive continued innovation in the AI field. The Executive Order required the USPTO to publish guidance to patent examiners and applicants addressing inventorship and the use of AI which was released on the 13^th of February, 2024.

As a background on the history of inventorship and AI, the genesis of the question of AI as an inventor started with the USPTO’s decision in April of 2020 denying petitions to name the AI system DABUS as an inventor on two patent applications. The reasoning behind this decision was simple: current U.S. patent laws limit inventorship to a natural person. This seemingly simple decision was then upheld by the U.S. District Court for the Eastern Division of Virginia in September of 2021. This decision was later appealed and the Federal Circuit in Thaler v. Vidal affirmed the underlying reasoning that only a natural person can be an inventor. However, in this decision the court specifically noted that it was not deciding on the related question of whether inventions made by natural persons with the assistance of AI are eligible for patent protection. However, the basis for the decision on inventorship should equally apply to co-inventors when one of the inventors is a natural person and the other is AI. In that situation, a co-invention made by a natural person and an AI would not be eligible for patent protection due to improper inventorship. This position by the USPTO that any patent application listing a machine as an inventor will be rejected due to improper inventorship led to the question of whether any invention that is AI-assisted would be eligible for patent protection.

The guidance addresses the above question by building upon previously established case law derived from Pannu v. Lolab Corp which focused on the level of contribution by the natural person to the claimed invention. The underlying concept as explained by the guidance is that while “AI systems cannot be listed inventors, the use of an AI system by a natural person does not preclude a natural person from qualifying as an inventor if the natural person significantly contributed to the claimed invention.” Interestingly, the guidance and the current structure of patent applications do not provide a mechanism to list or attribute the contribution of AI tools to the claimed invention, even if the AI systems were instrumental in the creation of the invention, due to the focus on current patent law and juridical precedent on natural persons. Since AI is not a natural person, there is no requirement to list the tool used in the creation of the claimed invention. This may be an area where Congress needs to act to enable a requirement to attribute non-natural person contributions to a claimed invention. The basis for this change would be to align patent disclosure policies with the stated policy goals of the Executive Order of promoting responsible innovation, competition and collaboration so that a fair, open, and competitive ecosystem and marketplace for AI technologies could be created in a manner that would drive continued innovation in the AI field.

As emphasized above, the central question or test under the new guidance can largely be boiled down to the “Significant Contribution” test. Historically, this test was used to determine whether an inventor must be included as a named inventor due to his/her significant contribution to the claimed invention. The guidance uses historical references to joint inventorship principles where the inventors may apply for a patent jointly, “even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” Instead, each inventor must contribute in some significant manner to the invention, and these contributions have been tested by factors such that each inventor must: “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” These factors were derived from the Pannu case referenced above and in the event that an inventor fails to meet any one of these factors, that inventor should not be named as a listed inventor on the patent.

What do these factors have to do with inventorship in AI-assisted inventions? In the AI-assisted invention context, the natural person must contribute significantly to the invention pursuant to these Pannu factors. If the natural person fails any one of these factors, the natural person is precluded from being a listed inventor as is the AI system resulting in an application that is rejected for improper inventorship. When viewing this from the perspective of a single inventor using AI, the single inventor must significantly contribute to each claim in the patent application. If the AI tool contributes solely to one or more claims, this would violate the Pannu factors as there would be no natural person contributing to those particular claims and an AI system cannot be a listed inventor. The complexity of this historical precedent being applied to AI assisted inventions led the USPTO to outline Guiding Principles to assist applications and USPTO personnel in determining proper inventorship. These Guiding Principles are:

A natural person’s use of an AI system in creating an AI-assisted invention does not negate the person’s contributions as an inventor so long as the natural person contributes significantly to the AI-assisted invention.
A natural person who only presents a problem to an AI system may not be a proper inventor of an invention identified from the output of the AI system. However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention is not necessarily an inventor. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.
A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. In some situations, the natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system.
Ownership of an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

It should be noted that the USPTO guidance highlights that there is “no bright-line test” in determining whether a natural person’s contribution in AI-assisted inventions is significant. This should come as no surprise to anyone who has been in the world of patents for more than a few years. While the USPTO tries to provide the best guidance possible, the ambiguities often times leave more uncertainty than most practitioners would like to see resulting in a period of uncertain outcomes in both patent prosecution and litigation. As the AI field grows and capabilities that we cannot yet image are developed on top of AI systems, this is surely going to be an area of active litigation and developing case law.

Lynn’s Picks: Foresight’s Patent of the Week – US Patent Application 17/852,089: Spare Wheel Containers for a Vehicle (Rivian Automotive)

Posted on January 12, 2024 7:01 pmModified on January 12, 2024 7:17 pmby Lynn Dudinsky

In this week’s blog, we are kicking off the Lynn’s Picks blog series by highlighting a recent filing by Rivian Automotive carrying the US patent application number 17/852,089 titled: “Spare Wheel Containers for a Vehicle”. Rivian Automotive, Inc. designs, develops, manufactures, and sells electric vehicles and accessories. The company offers several models of electric pickup trucks and sports utility vehicles. It provides Rivian Commercial Vehicle platform for Electric Delivery Van with collaboration with Amazon.com, Inc. The company sells its products directly to customers in the consumer and commercial markets. Rivian Automotive, Inc. was founded in 2009 and is based in Irvine, California. In fiscal Year 2023, Rivian reported $3.8 billion in revenues, based on the company’s most recent annual report.

As seen in the images below, the patent application, which was filed in June of 2022, relates to a container built into a spare tire holder that would enable the user to utilize the space inside the tire that is typically used exclusively to simply hold the spare tire. In the system seeking patent protection, this traditionally unused space would now provide storage through a “plurality of containers each comprising a respective container type” and electrical components that would allow the vehicle to identify the container type. The patent specification includes a variety of different applications for these containers including, but not limited to: fluid container configured to transfer water, coolant, lubricant or other fluids between the vehicle and the container; a storage container that could hold a first aid kit or toolbox; an identifier tag such as RFID as well as an auxiliary battery coupled to the vehicle’s electrical system. As you review the specification of the patent, you will see a number of potential applications to this technology and probably can come up with a few that you would like to see in your vehicle.

It is important to note that this is a pending patent application that has no guarantee of issuance and even if a patent is issued, the final claim language may look very different from the proposed claim language due to the existence of prior art that may require modifications to the proposed claim language. That being said, we selected this application for the first of this series because it highlights the relative simplicity that often is tied to innovation. In this case, an engineer likely saw an open space that is rarely used for anything other than to cover the spare tire (for example, any Jeep Wrangler you see on the road is either displaying the tire or the tire cover with either JEEP or some personal message being displayed) and sought out to create a use for that empty space. The fundamental concept here is to make use of available space, a concept we all can relate to. It is a great example of finding way to improve things you interact with every day and finding ways to protect those improvements.

Have you come across any interesting patents you would like us to feature in future blogs? Please send us an email at media@foresightvaluation.com or call our office at (650) 561-3374.

Arthrex v. Smith & Nephew: SCOTUS Preserves Inter Partes Review

Posted on June 25, 2021 8:15 pmModified on June 25, 2021 8:16 pmby Lynn Dudinsky

We last wrote about the Arthrex case back in November of 2019 and this blog is a continuation now that the case has finally reached a decision by the Supreme Court. In our previous blog, we described how the United States Court of Appeals for the Federal Circuit ruled that the appointment of the Patent Trial and Appeal Board’s (“PTAB”) Administrative Patent Judges (“APJs”) violated the Appointments Clause of the U.S. Constitution. This decision was based on the lack of direction and supervision of APJs by the presidentially-appointed Secretary of Commerce or Director of the USPTO as well as the lack of independent statutory authority to review the final written decisions by the APJs during inter partes revew. These factors resulted in the United States Court of Appeals for the Federal Circuit to decide that APJs are acting as principal officers, in violation of Appointments Clause, and to remedy the constitutional violation the tenure protections of APJs were invalidated.

On June 21, 2021, the U.S. Supreme Court delivered its written opinion in United States v. Arthrex, Inc. in which it vacated the judgement of the United States Court of Appeals for the Federal Circuit and remanded the case to the Acting Director of the USPTO. In its opinion, the Court addressed the responsibilities of the APJs and, as was the case in the previous ruling, focused on the requirement that APJs, as inferior officers, are required to be directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate. In the case of APJs, the majority opinion concluded that lack of review by a superior officer meant that the APJs wielded unreviewable authority during inter partes review which elevates them to a higher position than an inferior officer, in violation of the Appointments Clause.

The Court then addressed the appropriate remedy for the violation of the Appointments Clause and crafted a tailored approach to overcome the Constitutional violation. The remedy described in Part III of the Court’s opinion created a new framework for review by the Director of the USPTO of PTAB decisions and the ability of the Director to issue decisions on behalf of the PTAB. In crafting this remedy, the Court overcame the lack of review by a Presidential nominee and therefore preserved the status of APJs as inferior officers. The Court was careful to note that this decision “concerns only the Director’s ability to supervise APJs in adjudicating petitions for inter partes review” and does not address over types of adjudications conducted by the PTAB.

It is unclear at this stage how this Director-level review will be made available for parties in inter partes review proceedings and by what standard the Director will review petitions for rehearing by disappointed parties. In 2020 there were more than 1,400 inter partes review petitions and over 400 Final Written Decisions by the PTAB. Given these number, it is unlikely that the Director of the USPTO will review all decisions by APJs, but this framework enabled the Court to preserve the inter partes review process and we are forced to wait and see how this new power by a political appointee will impact the post-grant proceedings of the PTAB.