Patent Litigation Best Practices - Working Group 10

We are pleased to extend a new opportunity to become more involved in Working Groups 9 and 10 (WG9/10). The Steering Committee is forming one new brainstorming group. Please see the fulsome description below. In interested, be sure to follow the subsequent instructions for applying and note that the deadline for submitting an application to participate is September 6, 2024.

Artificial Intelligence and Patent Litigation Issues

This brainstorming group will make a recommendation about whether WG9/10 should prepare a commentary on the widespread adoption of generative artificial intelligence by the business world and its 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 gropu is to propose an outline that may be used to draft a Commentary addressing these important issues.

We are looking for Working Group members to form a brainstorming group to explore this topic and develop a project charter to be submitted to the WGs 9/10 Steering Committees. If the charter is approved, all working group members (including those on the brainstorming group) will be invited to apply to participate on the drafting team that will work to develop a Commentary based on the approved project charter.

The target completion date for an initial project charter draft is November 1, 2024.

Expectations of Brainstorming Group Members

Brainstorming groups are typically larger in size than drafting teams and usually function over a relatively short period of time. In this regard, the work of a brainstorming group is more like a sprint than a marathon. Brainstorming group members are expected to make the following commitments:

• Participation in brainstorming groups is a benefit of individual Sedona Conference Working Group Series membership. All brainstorming group members must always keep their membership current during the process.
• As the name suggests, brainstorming group members are encouraged to think creatively and actually "brainstorm," which may go beyond or even challenge the premise of the brainstorming group, as warranted.
• Accordingly, brainstorming group members are expected to regularly join and participate in brainstorming group virtual meetings. Brainstorming group leaders will take attendance for all meetings and track meeting participation and contributions. One or more brainstorming group members will be asked to take notes of group meetings.
• Brainstorming group members will be expected to draft or assist in drafting portions of the outline/project charter and/or perform research as needed.
• Brainstorming group members are expected to review all team drafts that are circulated, and comment and/or revise/edit as necessary.
• Brainstorming group members are expected to dialogue, not debate, and work collaboratively as part of a team to achieve consensus.
• If feasible, brainstorming group members are encouraged, but not required to attend WG 9/10 meetings where their work product is presented to the membership through a panel discussion and dialogue.

It is critical that all brainstorming group members are active, engaged participants in the outline/project charter drafting efforts to produce high-quality work product in a limited timeframe.

Factors in Brainstorming Group Selection

It is important that a wide range of perspectives and backgrounds are represented. Accordingly, the Steering Committees will work to ensure these perspectives are fairly represented. Please keep in mind, however, we do not seek differing perspectives so that one may advocate on behalf of a particular perspective or constituency; we seek differing viewpoints, backgrounds, and experiences to build consensus that is beneficial to all stakeholders. Perspectives we will seek to have represented on the groups may include, among others:

• In-House counsel
• Outside counsel
• Judges
• Judicial clerks
• Government counsel
• Academics
• Service providers/Technology companies
• Small firms/Solo practitioners

We will likely have more well-qualified, well-rounded applicants than we have openings. As a result, we may have a ranked waiting list. Brainstorming group member participation and contributions will be evaluated by the Steering Committee liaisons to the brainstorming group. If a member is unable to maintain the commitment to actively participate and contribute, it is possible that the member may need to be replaced to timely achieve the brainstorming group’s objectives.

How to Apply

NOTE: If you are not currently a Working Group Series member but are interested in participating, you may become a member by signing up for a Working Group Series (WGS) membership. Once a WGS member, one is eligible to take part in the activities of all Working Groups, including WG 9/10. If you have any questions about how to sign up for a membership or encounter any difficulties while doing so, please contact our office at [email protected] or (602) 258-4910.

To be considered for this brainstorming group, please provide separate answers to each of the questions below and submit to Casey Mangan at [email protected] no later than September 6, 2024. Please be brief when answering the questions; no more than 50 words per answer to a question.

• What is your profession and expertise?
• What organization do you work for?
• How many years of experience do you have?
• What qualifications or experiences make you particularly qualified to serve on this brainstorming group?
• Are you willing and able to attend WG 9/10 meetings to dialogue on the brainstorming group's work?

Please do not be discouraged if you are not selected for the brainstorming group. Because The Sedona Conference is a self-selected group of engaged, proactive people, we get many more excellent and eminently qualified applicants seeking to join a brainstorming group than we can take. If you do not get selected for a group, please try again! Even if you are not selected, your application and eagerness to be involved are favorably considered the next time you apply for a brainstorming group or drafting team. Also remember that as a member of WGs 9/10, you will have the opportunity to review and comment on any member-only work-product written by this brainstorming group.

Important Note About Subsequently Formed Drafting Teams

Frequently, after the brainstorming group has presented an outline to the membership and after a short period of member review and comment, the Steering Committee will approve the formation of a drafting team to produce a draft publication on the proposed topic. Being a member of the brainstorming group does factor into consideration for drafting team membership, but it is not a guarantee that you will be selected. This is because drafting teams are usually smaller than brainstorming groups, function over a longer period of time, and require a particular balance of perspectives and experiences in order to build a consensus-based document that is beneficial to all stakeholders.