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PTO cites lack of evidence of “routine” and “conventional” to support PTAB’s confirmation of claims under §101

Friday, December 9th, 2016

I have been listening to the oral argument of the Ameranth v. Apple case.  In the underlying PTAB decision, the PTAB granted CBM review  of some claims and denied CBM review of other claims.  Those decisions were appealed by the parties and the USPTO Solicitor’s Office intervened.  That put the Solicitor’s Office in the unusual position of arguing that the party that had been denied review of some claims under §101 by the PTAB had not met its burden.

As part of its brief, the PTO cited a lack of evidence that the claims recited routine and conventional [sic: and well-understood] activities:

“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”

USPTO Brief in Apple et al. v. Ameranth at page 20.

The PTO’s brief in Ameranth is available [here].

For comparison purposes, the PTO’s brief from In re Villena is available [here].

In its In re Villena brief, the PTO argues that the §101 inquiry is a “pure” question of law.  That assertion seems to be belied by a whole host of cases from the Federal Circuit and district courts that have stated that the §101 analysis is a question of law informed by underlying facts. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992); In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009); SINCLAIR-ALLISON, INC. v. FIFTH AVENUE PHYSICIAN SERVICES, LLC, No. CIV-12-360-M (W.D. Okla. Dec. 19, 2012); PROTOSTORM, LLC v. ANTONELLI, TERRY, STOUT & KRAUS, LLP, No. 08-CV-931 (PKC)(JO) (E.D.N.Y. June 5, 2015); WIRELESS MEDIA INNOVATIONS, LLC v. MAHER TERMINALS, LLC, Civil Action No. 14-7004 (D.N.Y. Apr. 20, 2015); EXECWARE, LLC v. BJ’S WHOLESALE CLUB, INC., Civil Action No. 14-233-LPS (D. Del. July 15, 2015); TRIPLAY, INC. v. WhatsAPP INC., Civil Action No. 13-1703-LPS (D. Del. Apr. 28, 2015); VS TECHNOLOGIES, LLC v. TWITTER, INC., Civil Action No. 2: 11cv43 (E.D. Va. Apr. 26, 2012); Cyberfone Systems, LLC v. Cellco Partnership, 885 F. Supp. 2d 710 (D. Del. 2012) — not to mention the PTAB’s decision in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014) citing a lack of evidence of a fundamental economic practice.

Oral Argument of the Week: Bose Corp. v. SDI Technologies, Inc.

Thursday, December 8th, 2016

The oral argument of the week is Bose Corp. v. SDI Technologies, Inc.  It was argued on November 7, 2016 and decided by Rule 36 Judgment on November 14, 2016.  I think you might enjoy listening to this oral argument because it discusses use of materials from the “Way Back Machine” on, as well as hearsay issues.

The oral argument is available [here].

The Rule 36 Judgment is available [here].

By the way, I just noticed that now has quite a library of old time radio programs, such as Dragnet.  I bet Joe Friday would have considered “well-known,” “conventional,” and “routine” to all be factual inquiries. []


Wednesday, December 7th, 2016

If you were curious about the two-judge decision in Impulse Technology Ltd. v. Microsoft Corporation decided today, it appears that the Federal Circuit judge that recused herself was Judge Moore.  From listening to the initial part of the oral argument, it appears that one of the parties raised a possible conflict issue upon learning the morning of oral argument that Judge Moore was to be part of the panel to hear the case. [Listen]

If memory serves correctly, it seems that the list of judges that have recused themselves since 2007 includes at least Judge Moore, Judge O’Malley, Judge Clevenger, Judge Michel (now retired), Judge Chen, Judge Taranto, and Judge Stoll.

PTO Position on Evidence in a §101 Rejection

Friday, December 2nd, 2016

The PTO has been notably silent on the issue of what evidence is required from the PTO in a §101 analysis.  The PTO Solicitor’s Office did express some views on the issue in its briefing of the In re Villena appeal.  Perhaps they have changed their mind after McRO v. Bandai.  You can access the PTO’s brief [here].  This might be helpful material to anyone that is planning on attending the upcoming PTO roundtable on Monday on subject matter eligibility.

The Federal Circuit issued a Rule 36 Judgment on the appeal.  Because the PTAB rejected the claims for 102 and 103 reasons in addition to 101, one cannot say that the Federal Circuit was endorsing the Solicitor’s Office views on patent eligibility.  The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board.  For example, in In re Gleave the court stated:

Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.

In re Gleave, 560 F. 3d 1331, 1338 (Fed. Cir. 2009)

Frankenstein’s Monster and the Federal Circuit

Thursday, December 1st, 2016

While the Federal Circuit makes reference to literary characters from time to time, it is rare that Frankenstein’s monster has ever come up in Federal Circuit or CCPA opinions.  I thought it was a creative expression in a recent oral argument where the patent owner referred to the PTAB’s rejection as a “Frankenstein hodge-podge collection of citations.”  [Listen]

I am familiar with a “rolling 103 rejection.”  Perhaps we should add a “Frankenstein’s monster rejection” to the list.

Too many references?

Thursday, November 24th, 2016

The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991).  On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.

In the most recent comment, Judge O’Malley commented about an Inter Partes reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims:  [Listen].

In two previous appeals, Judge Moore had more pointed comments.

In the oral argument of In re Neill, she had this exchange with the PTO’s Associate Solicitor:

Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.

Associate Solicitor for the USPTO:    It’s a good number of references; but, in this case the Examiner found the motivation to ….

Judge Moore:  The question I asked is actually quite personal.  How often have you seen a four reference obviousness rejection; because, I never have.  Not out of the PTO. Never.  I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.

Associate Solicitor for the USPTO:    Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….

Judge Moore:  Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!

Associate Solicitor for the USPTO:    It is; but, the Examiner here . . . All of those references come from the same field of art.  It’s all the transmission and recording of video programming data….

Judge Moore:  Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony.  Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home.  That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’…  ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . .  I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.


And, in one of the recent Data Treasury appeals, Judge Moore had these comments: [Comment to Patent Owner] and [Comment to PTO].

I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman), and Hughes are in the same camp.

Update 11/25/16:

I forgot about a similar comment that Judge Rader made when he was on the bench.  Judge Rader was also part of the panel in In re Gorman.  His comment from the oral argument of In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen].

Update 12/1/16:

Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC., No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen].  This is from an appeal of a district court decision, rather than an appeal from the USPTO.

Judge Barry of the Third Circuit

Wednesday, November 23rd, 2016

You might recall that Judge Barry of the Third Circuit is the sister of Donald Trump. If you were curious what Judge Barry sounds like during oral argument, you can listen to her questioning in the oral argument of MAIDEN CREEK ASSOCIATES, LP v. UNITED STATES DEPARTMENT OF TRANSPORTATION, No. 15-3224 (3d Cir. May 19, 2016) at this [link].  Her opinion for the Third Circuit is available [here].

An article from the Seattle Times about Judge Barry is available [here].  I thought it was interesting that she was appointed to a district court judgeship by President Reagan and appointed to the Third Circuit by President Clinton.

Federal Circuit Increases Number of Days Per Month for Oral Argument

Thursday, November 17th, 2016

The Federal Circuit will increase the number of days that it sits for oral arguments in upcoming months.  The announcement from the Federal Circuit web site is below.  While I suspect a big reason for the increase is due to the AIA, one has to believe that the fiasco commonly known as the Alice/Mayo test has a lot to do with the number of appeals going up to the court.



The Court of Appeals for the Federal Circuit has added an extra day of oral arguments in February, March, April, and May 2017 (the Monday after court week). Please click here for the updated court sessions calendar.

November 2, 2016 USPTO Subject Matter Eligibility Update

Wednesday, November 2nd, 2016

The USPTO issued a new memorandum today on subject matter eligibility.  The memo is available [here].

The table of Federal Circuit decisions was also updated.  The table is available [here].

Judge Dyk sitting by designation in Puerto Rico with First Circuit

Saturday, October 29th, 2016

If you’re arguing before the Federal Circuit next week, the odds are pretty low that Judge Dyk will be one of the panel members.  As highlighted by the Federal Circuit web site a few months ago [Link], he will be sitting by designation with the First Circuit November 2-4 in Puerto Rico.  [Link]