The PTO’s new acting Director, Joe Matal, has argued several cases before the Federal Circuit during his time in the Solicitor’s office. One case that comes to mind is Apple v. Ameranth, a patent eligibility case. One sound bite that I like from that case is available here: [Listen]. In that sound bite, Mr. Matal noted that it was the Office’s position that secondary indicia could be used by a patent owner to show patent eligibility. Implicit in his frank statement is a recognition that secondary indicia go toward resolving factual issues that underlie the patent eligibility analysis.
The PTO’s brief in the Apple v. Ameranth case — available [here] — is also instructive. Part of that brief argued that the patent challenger had failed to provide factual evidence under step 2 of the Alice test that a claim as a whole was (1) routine and (2) conventional. Therefore, the patent challenger failed to meet its burden of proving the patent claim to be patent ineligible.
1. The Petitioners Presented No Evidence or Argument that the Claims’ Recited Technology Is Routine and Conventional
Dependent claims 3 and 11 include the additional limitation that “the modified second menu can be linked to a specific customer at a specific table directly from the graphical user interface of” a hand-held or other computing device. A66; A67. Claims 6 through 9 and claims 13 through 16 include the additional limitations that the manual modification of the second menu is implemented via handwriting capture, handwriting recognition and conversion to text, voice capture, or voice recognition and conversion to text. A67.
The Board found that the petitioners failed to meet their burden of showing that these additional limitations require only routine and conventional technology. A42; A43.Before the Board, Ameranth asserted that the ’733 patent’s dependent claims “include additional and independently unique inventive elements.” A1515. In particular, Ameranth asserted that “linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handhelds.” A1530. Ameranth also argued that claims 6 through 9 and claims 13 through 16 “recite particular kinds of manual modification,” and quoted statements in the press made by the petitioners that, according to
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Ameranth, confirm the novelty of the recited technologies. A1530. Because Ameranth presented separate arguments for the patentability of these dependent claims, the Board was required to consider them individually rather than treat the independent claims as representative. See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014).
The entirety of the petitioners’ reply to Ameranth with respect to these dependent claims consisted of two sentences. First, the petitioners asserted that the claims’ additional “elements are, at most, insignificant extra-solution activity that cannot save subject matter from patent ineligibility.” A1619. The petitioners also argued that “‘linking a particular order to a particular customer at a table’ and ‘manual modification’ are classic examples of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Id.
The petitioners’ first sentence is merely a conclusion that is unaccompanied by any evidence or analysis. It did not satisfy the petitioners’ burden of showing that the challenged claims are unpatentable. See 35 U.S.C.
§ 326(e) (“the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence”); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015).37
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The petitioners’ second statement—that the claimed operations could be performed manually, without a computer—is directed only to the first step of the Alice inquiry. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (noting that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas”). The fact that a process can be executed without a computer, however, does not address the second step of the Alice inquiry: whether the process’s actual implementation on a computer requires nonobvious technologies. All computer technology has been, within living memory, new and unconventional. The fact that it could always implement mental processes has not forever rendered it patent ineligible. See Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).
The petitioners failed to present any evidence or analysis showing that the technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. They failed to make their case under Alice. The Board thus properly determined that they had not met “the[ir] burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 326(e).
2. The Petitioners’ New Arguments Were Never Presented to the Board and Are Now Waived
In this Court, the petitioners present several new arguments that the
technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. 38
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The petitioners contend that prior art patents, admissions in the ’733 patent’s specification, and the specification’s lack of a non-prior art enabling disclosure demonstrate that the recited technology is pre-existing and generic. Because none of these arguments was presented below, they are now waived. See Baxter, 678 F.3d at 1362.
These new arguments also suffer from other deficiencies. The petitioners quote passages of the ’733 patent’s specification that they contend contemplate the use of existing technology to implement handwriting and voice capture.
Pet. Br. at 35-36. The petitioners cite a passage that notes, with respect to the handwriting capture illustrated by figure 8, that “the operator screen on the hand-held [device] can capture handwritten information specific to a customer’s requests directly on the touch-sensitive screen.” A60, col.3, ll.58-60. The petitioners also cite a passage that describes how “a server taking a drink order could select from a menu of her hand-held device’s screen ‘Iced Tea,’ and then record the voice message ‘with lemon’ using her hand-held device integral microphone.” A60, col.4, ll.18-22.These passages simply describe the intended functioning of the claimed invention. They nowhere state that the technology for implementing handwriting and voice capture is pre-existing. In contrast, for example, to the passages of the specification that the Board relied on to establish that graphical
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user interfaces and data synchronization are conventional (A31; A32), nothing in these passages identifies commercially available software that implements the claimed functions.
Moreover, again, these passages from specification were never cited to the Board. The Board’s administrative patent judges “are not like pigs, hunting for truffles buried in the record.” Gross v. Town of Cicero, 619 F.3d 697, 702 (7th Cir. 2010). It is the petitioners who bore the burden of marshalling information to make their case.
The petitioners also contend that nothing in the ’733 patent’s specification describes non-prior art means for implementing handwriting and voice capture or linking customers’ locations to their orders. Pet. Br. at 35-37, 42. They appear to argue that such a gap compels a finding that the recited technology is ineligible.
As discussed in section IV.D.2.b of this brief, supra at pp. 27-30, when the Board’s background knowledge indicates that a recited computer function is conventional and routine, the specification’s failure to describe a non-prior art means for implementing the function can confirm that finding. See, e.g., Internet Patents, 790 F.3d at 1348. The absence of an enabling disclosure, however, does not require the Board to conclude that a recited technology is conventional. A claim may recite eligible subject matter and yet simply fail to
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satisfy the requirements of § 112(a). Claims directed, for example, to a machine for time travel, or to a process for transforming lead into gold, are patent eligible, despite the fact that their accompanying specifications have (so far) failed to describe a means for enabling these inventions. A lack of enablement does not compel a finding that a claim fails Alice’s step two.
Finally, the petitioners assert that they did cite a prior-art patent before the Board that they contend demonstrates the conventionality of handwriting capture and conversion, as well as linking an order to a customer’s location.
Pet. Br. at 37-38, 42 (discussing U.S. Patent No. 4,972,496). This patent was cited in the petitioner’s reply before the Board, but only with respect to the independent claims’ broad recitation of “manually modifying” a document on a handheld computer. A1614-1616. It was not cited in the portion of the reply that addresses the dependent claims, nor was it described in the reply as disclosing the conventionality of handwriting recognition or conversion or linking orders to locations. Because this evidence was never cited in relation to the disputed limitations, the argument is now waived. See Baxter, 678 F.3d at 1362.
Perhaps the PTO will revise its patent eligibility guidance under Mr. Matal to require factual evidence by examiners when they assert that a claim as a whole recites routine and conventional activity. Notably, in the PTO’s Ameranth brief, it states:
The Board’s§ 101 analysis is reviewed for legal error, while its underlying factual findings are reviewed for substantial evidence. See Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).
You can listen to the entire oral argument [here].
You can review the court’s decision [here].