The Sedona Conference WG9/10 Annual Meeting 2024

Director Lestin Kenton will join other leading patent practitioners as a panelist at The Sedona Conference’s Working Group 9 (Patent Damages & Remedies) and Working Group 10 (Patent Litigation Best Practices) joint meeting on Sept. 24-25 in Tampa, FL. This meeting is part of Sedona’s all-hands-on-deck mobilization to address the challenges of artificial intelligence and global technological competition to the intellectual property system and help shape the law moving forward.

[Session 05] Brainstorming Session – AI and Patent Law Overview

The widespread adoption of generative artificial intelligence by the business world will have far-reaching implications in the patent litigation space. A critical component of every patent case concerns the definition of the hypothetical person of ordinary skill in the art (“POSITA”). This definition has implications for claim construction and infringement purposes, and invalidity analyses under 35 U.S.C. §§ 102, 103, and 112. There is an open question whether the POSITA definition should assume access to generative AI platforms. Would such access greatly expand the POSITA’s knowledge? And if access to generative AI platforms is assumed, what are the contours of those platform(s)? If a POSITA is assumed to have access to AI, what are the implications for the motivation to combine analysis and analogous art issues under § 103? What are the implications for considering whether a patent contains an enabling disclosure under § 112? Additionally, generative AI can now be used to propose numerous solutions to stated problems. Those solutions can be posted to a website or other database. Should these AI-generated disclosures qualify as “prior art” within the meaning of 35 USC § 102? Do they meet the statutory definition and court-developed applications of that definition? If, as many courts have determined, only a person can qualify as an inventor for purposes of obtaining a patent, then should a disclosure qualify as “prior art” only if it was created by a person? The purpose of this brainstorming group is to propose an outline based on dialogue and consensus that may be used to draft a Commentary addressing these important issues. The panel will elicit input from members on these issues at this meeting with the goal of helping frame the resulting project charter.