Artificial intelligence litigation - déjà vu all over again

Imagine a trade secret lawsuit in Silicon Valley claiming theft of artificial intelligence technology and asserting that the defendant patented the stolen trade secrets. The plaintiff extorts: "I'll settle this case for no less than $100 million, plus some type of royalty." Imagine this occurring - not today - but over twenty five years ago in the mid-1990's. I defended that case in San Jose in the mid-1990's, and a version of it is happening again today.

My case began in September 1989 when a paralegal from Chico, California made an unsolicited submission for his futuristic concept "QueryMate" to West Publishing in St. Paul, Minnesota. This was a time when the only way to query the Westlaw database was with a Boolean search and the Chico paralegal dialed up to Westlaw by modem. QueryMate proposed to revolutionize legal research by offering a PC-based expert system on a set of diskettes that would formulate a query for the lawyer using artificial intelligence and natural language processing. A user could create a query offline using plain English rather than Boolean operators. In an iterative process, the QueryMate computer program would determine what the user wanted to know, process the user's question, query the Westlaw database, and deliver results to the lawyer. The Chico paralegal teamed up with two software developers in Silicon Valley to create a prototype.

The QueryMate proposal landed in West's R&D files in 1990 with the notation "Fly by Night" written across it. Not long afterwards, in 1992, West's "Westlaw is Natural (WIN)" launched, becoming the first commercially available search engine with probabilistic rank retrieval. West patented its new methods for natural language searching and information retrieval. Once QueryMate's developers learned of West's AI system (and its patents!), years of litigation began.

QueryMate's creators filed suit in 1996 in the Northern District of California for trade secret misappropriation, copyright infringement, fraud, breach of contract, and a constructive trust over West's patents. The lead plaintiff, seeking $100 million, proclaimed: "And it's not about money. It's about justice." QueryMate took note of a new 1996 decision from the Supreme Court called Markman v. Westview Instruments and requested a Markman hearing in an effort to prove that West patented and misappropriated plaintiffs' invention.

During the litigation, one of the plaintiffs described his view of the situation: "I'm just an individual with a sword, trying to slay a seven-headed dragon." Years later, QueryMate's effort in the trial court ended with the court's grant of summary judgment for West on all claims. Among other rulings, the court found that plaintiffs failed to adequately designate a protectable trade secret, saying: "Failure to do so has left both West and this court guessing as to what exactly Plaintiffs claim is their trade secret." (Canter v. West Pub. Co., 31 F.Supp.2d 1193, 1203 (N.D. Cal. 1999)).

Undeterred - despite losing summary judgment - QueryMate's creators lowered their settlement demand from $100 million to six figures (it was big news at the time that then-President Clinton agreed to a six-figure settlement with Paula Jones despite winning summary judgment). West declined to settle.

Flash forward twenty five years, and West again finds itself in AI litigation. In a case filed in the District of Delaware, West Publishing and Thomson Reuters sued Ross Intelligence Inc. for copyright infringement and tortious interference. Here, West claims that Ross, an artificial intelligence startup in the legal research industry, illegally copied content from Westlaw. Like QueryMate thirty years earlier, Ross allegedly sought to create a natural language search engine using machine learning and artificial intelligence. In doing so, West claims, Ross copied content from Westlaw. West's lawsuit pled on information and belief that Ross's users are able to search for relevant law by posing a question in natural language, as opposed to Boolean terms (notably, the same approach taken by QueryMate decades earlier). West claimed that Ross committed direct copyright infringement by reproducing and creating a derivative work based on West's content on Westlaw.

In a decision issued on Sept. 25, 2023 and published on Westlaw, the district court denied summary judgment on the issues of West's copyright infringement claim and Ross's fair use defense. The court first ruled that it cannot decide West's ownership of a valid copyright at summary judgment. While the court found actual copying, the court determined that substantial similarity must go to the jury. The court further denied cross motions for summary judgment on Ross's fair use defense, finding that fair use must go to a jury. The court further ruled that all of West's copyright theories - direct liability, contributory liability and vicarious liability - must go to trial. The court summarized the basis for its summary judgment rulings, stating: "Thomson Reuters alleges that Ross copied protected aspects of Westlaw, both directly and indirectly . ... And Ross disputes almost all of Thomson Reuters's story. But it is not my role at summary judgment to sort through the evidence and tidy these factual messes. It is the jury's role at trial. So, with the small exceptions noted throughout this opinion, I deny both Ross's and Thomson Reuters's motions for summary judgment." Thomson Reuters Enterprise Centre GmbH et al. v. Ross Intelligence Inc., No. 1:20-cv-613-SB, 2023 WL 6210901 (D. Del. Sept. 25, 2023).

While we can expect to see AI lawsuits increase in the coming years, they are certainly not new. Déjà vu - we have seen these cases before. Even though these West cases span 25 years, they share core intellectual property concepts. A trade secret plaintiff must identify a protectable trade secret and a copyright plaintiff has to prove all elements of ownership, copying and substantial similarity. While today's AI inventions are revolutionary, today's legal system relies on the core legal concepts we have known for decades.

Randall E. Kay is a partner at Jones Day, where he handles intellectual property and commercial disputes. He defended West Publishing in the 1990's Canter et al. v. West litigation.

The views and opinions set forth herein are the personal views or opinions of the author; they do not necessarily reflect views or opinions of the law firm with which he is associated.