Page:Thaler v. Hirshfeld.pdf/6

 "the use of a machine as a tool by natural person(s) does not generally preclude natural person(s) from qualifying as an inventor or joint inventors if the natural person(s) contributed to the conception of the claimed invention. MPEP § 2137.01 …. Where an application names an incorrect inventor, the applicant could submit a request to correct inventorship under 37 CFR 1.48. MPEP § 602.01(c) et seq.;  MPEP § 706.03(a), subsection IV."

AR 133; 412.

On January 20, 2020, plaintiff sought reconsideration of the USPTO’s decision by filing a “Petition to the Director Under 37 CFR 1.181 – Request for Reconsideration.” AR 135–46; 414–25. On April 22, 2020, the USPTO denied plaintiff’s request for reconsideration in a final written decision, which plaintiff challenges in this civil action. AR 205–13; 456–64. Relying on multiple sections of Title 35 of the United States Code, the USPTO explained that “the patent statutes preclude such a broad interpretation” of “inventor” to cover machines. AR 209; 460. Additionally, although the USPTO acknowledged that the relevant Federal Circuit decisions holding that “only natural persons can be ‘inventors’ ” were “in the context of states and corporations,” it concluded that “the discussion of conception as being a ‘formation in the mind of the inventor’ and a ‘mental act’ is equally applicable to machines and indicates that conception—the touchstone of inventorship—must be performed by a natural person.” AR 210; 461 (quoting, 734 F.3d at 1323; , 990 F.2d at 1248). The USPTO also pointed to “numerous references to the inventor as a ‘person’ in Title 37 of the Code of Federal Regulations,” and the definition of “conception” in the Manual of Patent Examining Procedure (“MPEP”) as “the complete performance of the mental part of the inventive act” and “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice” as further underscoring that only a natural person may be an “inventor.” AR 211; 462. The USPTO addressed plaintiff’s remaining arguments, including policy considerations, and held that “they do not overcome the plain language of the patent laws as passed by the Congress and as interpreted by the courts.” AR 212; 463 (citing, 894 F.2d 392, 399–400 (Fed. Cir. 1990) for the holding that the USPTO and courts must honor the plain meaning of the patent statutes when Congress has spoken on an issue, and that striking policy balances when crafting legislative language is within the province of Congress).

Plaintiff filed this civil action seeking review of the USPTO’s decision, and, after an agreed briefing schedule was entered, plaintiff and defendants filed their cross-motions for summary judgment without having engaged in discovery. The parties’ motions have been fully briefed, and oral argument was heard on the record by teleconference due to the COVID-19 pandemic.

A.

Under the APA, 701 U.S.C. § 701,, a court may only set aside a final agency action if it is "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." 5 U.S.C. § 706(2)(A). An action is arbitrary and capricious if the agency "relied on factors which Congress has not intended it to consider, entirely failed to consider an important aspect of the problem, offered an explanation for its decision that runs counter to the evidence before the agency, or is so implausible that it could not be ascribed