Sufficiency Of Disclosure For Artificial Intelligence Patents ' U.S. Case Example

• Published date: 18 November 2021
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Ryan Phelan

PatentNext Summary: Sufficiency of disclosure for Artificial Intelligence (AI) inventions in the U.S. can be supported by expert testimony opining on the knowledge that one of ordinary skill in the art would have held based on the disclosure for the patent specification.

In an earlier article, we compared the sufficiency of disclosure for Artificial Intelligence (AI) patents in the U.S. and the European Patent Office (EPO). See A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO.

In that article, we saw how two applications, one in the U.S. and the other in the EPO, were treated differently despite having the claims. In particular, the U.S. application was prosecuted to issuance, while the EPO application ended in a rejection for lack of sufficiency of disclosure. The article provided a more detailed summary of the EPO case, as a sufficiency of disclosure issue was raised in the EPO case, but not in the U.S.

In this article, we explore how sufficiency of disclosure issues for AI-related claims can arise in the U.S. in the context of a recent district court case. In the U.S., expert opinions and testimony may help a court decide issues of sufficiency of disclosure.

For example, in Centripetal Networks, Inc. v. Cisco Sys., Inc., plaintiff Centripetal Networks, Inc. accused Cisco Systems, Inc. of infringing several patents "involving complex issues in cybersecurity technology." 492 F. Supp. 3d 495, 506 (E.D. Va. 2020). One of the patents-at-issue (U.S. Pat. No. 9,500,176) recited a system "identifying malware-infected computers through use of correlation." Id. at 549.

Cisco's accused products included a "Cognitive Threat Analytics (CTA)" software for monitoring a computer network, including monitoring "for security breaches within the network by using machine learning." Id. at 517.

Cisco argued that the asserted patent was invalid for lack of an adequate written description pursuant to 35 U.S.C. ' 112(a). In particular, Cisco, through its expert witness, argued that the asserted patent was invalid "because the [patent's] specification ... contains no description of Cognitive Threat Analytics, machine learning, [or]...