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

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.

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