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Gregory Discher

Gregory Discher's practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office, and patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions. Gregory provides strategic advice to clients in connection with developing, obtaining, protecting, managing, and enforcing intellectual property rights in accordance with business objectives, and has represented clients in United States District Courts, the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit.

Gregory’s extensive experience in Inter Partes Review (IPR) trials includes having served as counsel for over forty post grant matters, representing both petitioners and patent owners through oral argument. Gregory has also successfully represented clients in ex parte and inter partes reexamination proceedings, and patent reissue proceedings.

Gregory’s technical background and experience encompasses a variety of Internet, telecommunications, networking, and messaging technologies and protocols, software and software-related inventions, semiconductor device and fabrication technologies, display technologies, electronics, electronic commerce, and mechanical technologies.

Update on the Digital Asset Industry

Despite reduced enthusiasm in the trading markets over the past couple of years, technological innovation and advancement from all corners of the crypto[1] space has continued to thrive—including layer 2 scaling solutions for the Ethereum and Bitcoin blockchains, improvements to crypto mining equipment, novel applications for non-fungible tokens

In its August 5, 2022 affirmance of the district court’s grant of summary judgment, the Federal Circuit in Thaler v. Vidal ruled that the Patent Act unambiguously and directly answers the question of whether an AI software system can be listed as the inventor on a patent application. Since an inventor must be a human being, AI cannot be.

Judge Stark’s first authored precedential opinion since confirmation to the Federal Circuit aligns the U.S. position on whether AI can be listed as an inventor on a patent application with that of other major jurisdictions. Left for another day are questions such as the rights, if any, of AI systems, and whether AI systems can contribute to the conception of an invention.

PTO and Litigation Background of the DABUS Patent Applications

In July 2019, two patent applications were filed in the United States Patent and Trademark Office (PTO) that identified an AI system called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) as the sole inventor and Stephen L. Thaler as the Applicant and Assignee. DABUS, which was characterized as “a particular type of connectionist artificial intelligence” known as a “Creativity Machine” during prosecution and as “a collection of source code or programming and a software program” before the U.S. District Court for the Eastern District of Virginia, allegedly generated the subject matter of the two patent applications.

The filed patent applications specifically stated that the inventions were conceived by DABUS, and that DABUS should accordingly be named as the inventor. The PTO subsequently issued Notices stating that the applications did not identify each inventor by his or her legal name. In response to filed Petitions requesting that the PTO vacate the issued Notices, the PTO issued Petition Decisions refusing to vacate, explaining that a machine does not qualify as an inventor under the patent laws, and providing additional time to identify inventors by their legal name to avoid abandonment of the applications.

Thaler then sought judicial review under the Administrative Procedure Act in the Eastern District of Virginia, requesting an order compelling the PTO to reinstate the DABUS patent applications, and 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. After briefing and oral argument, the district court issued an order denying Thaler’s requested relief and granting the PTO’s motion for summary judgment, recognizing the Federal Circuit’s consistent holdings under current patent law requiring inventors to be natural persons.Continue Reading Federal Circuit Rules That Under The Patent Act An Inventor Must Be Human: So What Can Be Done To Patent AI Inventions?

The USPTO issued a Report in October 2020 titled Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents, along with supplementary material that describes the methodology and scope of patent related data used in the Report. Following a first report also issued in October 2020 that pertains to AI and IP

On October 6, 2020, the U.S. Patent and Trademark Office (USPTO) published a report titled Public Views on Artificial Intelligence and Intellectual Property Policy. The report summarizes the nearly 200 comments received in response to patent-related questions regarding AI set forth in a request for comments (RFC) issued by the USPTO in August 2019 and non-patent IP questions set forth in an October 2019 RFC.

This post focuses on Part I of the report, which summarizes the comments received in response to the first RFC. Part II of the report pertains to the second RFC.Continue Reading Covington Artificial Intelligence Update: USPTO Releases Report on Artificial Intelligence and Intellectual Property Policy

Artificial intelligence (“AI”) is expanding in many industries and could add approximately $13 trillion to the global economy by 2030.  Many organizations, both public and private, have invested substantial resources in AI research and development (R&D).  The United States, the European Union, Canada, China and many other countries have developed, or are developing, a

The World Intellectual Property Organization (“WIPO”) recently announced a public consultation process on Artificial Intelligence and Intellectual Property Policy. As part of the consultation process, WIPO concurrently published and has requested feedback on a wide-ranging draft IP Policy and AI Issues Paper that is intended to help define the most pressing AI-related questions likely to face IP policy makers in the areas of patents, copyright, and data.

The Issues Paper follows other recent WIPO activity pertaining to AI-related IP issues. In January 2019 WIPO issued a publication that surveyed the landscape of AI innovation since the field first developed in the 1950s, and in September 2019 WIPO held a Conversation on IP and AI.

Recognizing the significance and potential implications of the intersection of AI and intellectual property, two of the leading patent offices have now requested public comment. As discussed in a previous blog, the U.S. Patent and Trademark Office issued a “Request for Comments on Patenting Artificial Intelligence Inventions” on August 27, 2019. The USPTO subsequently issued a “Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation” on October 30, 2019, in which it seeks comments on the copyright, trademark, and other intellectual property rights issues that may be impacted by AI.
Continue Reading AI Update: WIPO Begins Public Consultation Process on Artificial Intelligence and Intellectual Property Policy

On August 27, 2019, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on Patenting Artificial Intelligence Inventions in the Federal Register. The Request follows Director Iancu’s statement that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in Artificial Intelligence (AI) and other emerging technologies, as explained in another post on an artificial intelligence conference held by the USPTO earlier this year.

Recent Rapid Advances in AI Technologies

The recent confluence of big data, increasingly faster and more specialized hardware, improved algorithms, and increased investment has led to rapid advancement in AI technologies and applications such as computer vision, natural language processing, medical diagnostics, robotics, autonomous vehicles, and drug development, among others. And while the Request does not define the term “artificial intelligence,” the USPTO does provide a class definition for the examination of AI inventions and patent applications, and Class 706 identifies several technologies encompassed by AI technology.Continue Reading AI Update: USPTO Publishes Request for Comments on Patenting Artificial Intelligence Inventions

IoT Update: Federal Lawmakers Focus on Smart Cities

Since the beginning of the year, lawmakers in this Congress have introduced a number of  proposals to study, cultivate, and guide the growth of smart cities.  This blog post summarizes seven smart cities bills introduced in this Congress.  Some bills focus broadly on Federal efforts to prioritize smart cities, whereas others focus on specific topics, like transportation and smart utilities.

Interestingly, most smart cities legislation introduced this year includes a grant program, which could reflect Congressional interest in demonstrating best practices capable of being replicated, as well as interest in providing financial support to accelerate smart cities growth.  The size of these grant programs typically hovers around $20-50M, though some bills leave the funding amount to the grant administrator.Continue Reading IoT Update: Federal Lawmakers Focus on Smart Cities

The U.S. Patent and Trademark Office (USPTO) held its Artificial Intelligence: Intellectual Property Policy Considerations conference on January 31, 2019. The conference featured six panels of speakers, including policy makers, academics, and practitioners from Canada, China, Europe, Japan, and the United States. As stated by USPTO Director Iancu during his introductory remarks, the purpose of the conference is to begin discussions about the implications that artificial intelligence (“AI”) may have on intellectual property law and policy. In this post, we provide an overview of Director Iancu’s Introductory Remarks and of three of the conference panels that addressed several current and forward-looking issues that will impact patent law and society at large.

Opening Remarks by Director Iancu

The Director noted that governments around the world are adopting long-term comprehensive strategies to promote and provide leadership for technological advances of the future, and that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in AI and other emerging technologies.

The USPTO is using AI technology to increase the efficiency of patent examination. For example, the USPTO has developed and is exploring a new cognitive assistant called Unity which is intended to allow patent examiners to search across patents, publications, non-patent literature, and images with a single click. The Director concluded by stating that one of his top priorities is ensuring that the U.S. continues its leadership when it comes to innovation, particularly in the emerging technologies such as AI and machine learning.
Continue Reading Artificial Intelligence and the Patent Landscape – Views from the USPTO AI Intellectual Property Policy Considerations Conference

Innovative leaders worldwide are investing in technologies to transform their cities into smart cities—environments in which data collection and analysis is utilized to manage assets and resources efficiently.  Smart city technologies can improve safety, manage traffic and transportation systems, and save energy, as we discussed in a previous post.  One important aspect of a successful smart city will be ensuring infrastructure is in place to support new technologies.  Federal investment in infrastructure may accordingly benefit both smart cities and smart transportation, as explained in another post on connected and autonomous vehicles (“CAVs”).

Given the growing presence of CAVs in the U.S., and the legislative efforts surrounding them, CAVs are likely to play an important role in the future of smart cities.  This post explores how cities are already using smart transportation technologies and how CAV technologies fit into this landscape.  It also addresses the legal issues and practical challenges involved in developing smart transportation systems.  As CAVs and smart cities continue to develop, each technology can leverage the other’s advances and encourage the other’s deployment.Continue Reading IoT Update: How Smart Cities and Connected Cars May Benefit from Each Other