{"id":8999,"date":"2017-06-10T12:28:15","date_gmt":"2017-06-10T18:28:15","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=8999"},"modified":"2017-06-10T12:28:15","modified_gmt":"2017-06-10T18:28:15","slug":"new-pto-acting-director-joe-matal-arguing-before-the-cafc","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=8999","title":{"rendered":"New PTO acting Director Joe Matal arguing before the CAFC"},"content":{"rendered":"

The PTO’s new acting Director, Joe Matal, has argued several cases before the Federal Circuit during his time in the Solicitor’s office. \u00a0One case that comes to mind is \u00a0Apple v. Ameranth<\/span>, a patent eligibility case. \u00a0One sound bite that I like from that case is available here: [Listen<\/a>]. \u00a0In 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. \u00a0Implicit in his frank statement is a recognition that secondary indicia go toward resolving factual issues that underlie the patent eligibility analysis.<\/p>\n

The PTO’s brief in the Apple v. Ameranth<\/span> case — available [here<\/a>] — is also instructive. \u00a0Part of that brief argued that the patent challenger had failed to provide factual evidence<\/span> under step 2 of the Alice test that a claim as a whole was (1) routine and (2) conventional. \u00a0Therefore, the patent challenger failed to meet its burden of proving the patent claim to be patent ineligible.<\/p>\n

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1. The Petitioners Presented No Evidence or Argument that the <\/span>Claims\u2019 Recited Technology I<\/span>s Routine and Conventional <\/span><\/p>\n

Dependent claims <\/span>3 and 11 include the additional limitation that \u201cthe <\/span>modified second menu can be linked to a specific customer at a specific table <\/span>directly from the graphical user interface of\u201d a hand<\/span>-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.
\nThe Board found that the petitioners failed to meet their burden of showing that these additional limitations require only routine and conventional technology. A42; A43. <\/span><\/p>\n

Before the Board, Ameranth asserted that the \u2019733 patent\u2019s dependent claims \u201cinclude additional and independently unique inventive elements.\u201d <\/span>A1515. In particular, Ameranth <\/span>asserted that \u201clinking a particular order to a <\/span>particular customer at a table was novel then and unique to mobility and wire<\/span>less handhelds.\u201d A1530<\/span>. Ameranth also argued that claims 6 through 9 and claims <\/span>13 through 16 \u201crecite particular kinds of manual modification,\u201d and <\/span>quoted statements in the press made by the petitioners that, according to <\/span><\/div>\n<\/div>\n

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36 <\/span><\/div>\n<\/div>\n<\/div>\n

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Case: 15-1703 Document: 47 Page: 44 Filed: 10\/29\/2015 <\/span><\/div>\n<\/div>\n

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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. <\/span>See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A.<\/span>, 776 F.3d 1343, 1348 (Fed. Cir. 2014). <\/span><\/p>\n

The entirety of the petitioners<\/span>\u2019 <\/span>reply to Ameranth with respect to these dependent claims consisted of two sentences. First, the petitioners asserted that <\/span>the claims\u2019 additional \u201celements are, at most, insignificant extra<\/span>-solution activity that cannot save subject matter from patent ine<\/span>ligibility.\u201d A1619<\/span>. The petitioners also <\/span>argued that \u201c\u2018linking a particular order to a particular customer at a table\u2019 and \u2018manual modification\u2019 are classic examples of manual tasks that <\/span>cannot be rendered patent-<\/span>eligible merely by performing them with a computer.\u201d <\/span>Id. <\/span><\/p>\n

The petitioners<\/span>\u2019 firs<\/span>t sentence is merely a conclusion that is <\/span>unaccompanied by any evidence or analysis. It did not satisfy the petitioners\u2019 <\/span>burden of showing that the challenged claims are unpatentable. <\/span>See <\/span>35 U.S.C.
\n\u00a7 326(e) <\/span>(\u201c<\/span>the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidenc<\/span>e\u201d); <\/span>Dynamic Drinkware, LLC v. National Graphics, Inc<\/span>., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). <\/span><\/div>\n<\/div>\n

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37 <\/span><\/div>\n<\/div>\n<\/div>\n

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Case: 15-1703 Document: 47 Page: 45 Filed: 10\/29\/2015 <\/span><\/div>\n<\/div>\n

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The petitioners\u2019 second statement\u2014<\/span>that the claimed operations could be performed manually, without a computer<\/span>\u2014<\/span>is directed only to the first step of the <\/span>Alice <\/span>inquiry. <\/span>See CyberSource v. Retail Decisions, Inc.<\/span>, 654 F.3d 1366, 1371 (Fed. Cir. 2011) <\/span>(noting that \u201cmethods which can be performed mentally, or <\/span>which are the equivalent of human mental work, are unpatentable abstract <\/span>ideas\u201d). <\/span>The fact that a process <\/span>can <\/span>be executed without a computer, however, does not address the second step of the <\/span>Alice <\/span>inquiry: whether the process\u2019s <\/span>actual <\/span>implementation on a computer requires nonobvious technologies. <\/span>All <\/span>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. <\/span>See Alice<\/span>, 134 S. <\/span>Ct. at 2354 (\u201can invention is not rendered ineligible for patent simply because it involves an abstract concept\u201d). <\/span><\/p>\n

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 <\/span>Alice<\/span>. The Board thus properly determined <\/span>that they had not met \u201c<\/span>the[ir] burden of proving a proposition of unpatentability by a preponderance of <\/span>the evidence.\u201d 35 U.S.C. \u00a7 <\/span>326(e). <\/span><\/p>\n

2. The <\/span>Petitioners\u2019 New Arguments Were Never Presented to the <\/span>Board and Are Now Waived <\/span><\/p>\n

In this Court, the petitioners present several new arguments that the <\/span><\/p>\n

technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. 38 <\/span><\/div>\n<\/div>\n<\/div>\n

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Case: 15-1703 Document: 47 Page: 46 Filed: 10\/29\/2015 <\/span><\/div>\n<\/div>\n

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The p<\/span>etitioners contend that prior art patents, admissions in the \u2019733 patent\u2019s specification, and the specification\u2019s lack of a non<\/span>-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. <\/span>See Baxter<\/span>, 678 F.3d at 1362. <\/span><\/p>\n

These new arguments also suffer from other deficiencies. The petitioners quote <\/span>passages of the \u2019733 patent\u2019<\/span>s specification that they contend contemplate the use of existing technology to implement handwriting and voice capture.
\nPet. Br. at 35-36. The petitioners cite a passage that notes, with respect to the handwriting capture illustrated by figure <\/span>8, that \u201cthe operator screen on the <\/span>hand-<\/span>held [device] can capture handwritten information specific to a customer\u2019s <\/span>requests directly on the touch-<\/span>sensitive screen.\u201d A60, col.3, ll.58<\/span>-60. The petitioners al<\/span>so cite a passage that describes how \u201ca server taking a drink order <\/span>could select from a menu of her hand-<\/span>held device\u2019s screen \u2018Iced Tea,\u2019 and then record the voice message \u2018with lemon\u2019 using her hand<\/span>-held device integral <\/span>microphone.\u201d A60, col.4, ll.18<\/span>-22. <\/span><\/p>\n

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 <\/span><\/div>\n<\/div>\n

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39 <\/span><\/div>\n<\/div>\n<\/div>\n

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Case: 15-1703 Document: 47 Page: 47 Filed: 10\/29\/2015 <\/span><\/div>\n<\/div>\n

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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. <\/span><\/p>\n

Moreover, again, these passages from specification were never cited to the Board. <\/span>The Board\u2019s <\/span>administrative patent <\/span>judges \u201care not like pigs, hunting for truffles buried in the record.\u201d <\/span>Gross v. Town of Cicero<\/span>, 619 F.3d 697, 702 (7th Cir. 2010). It is the petitioners who bore the burden of marshalling information to make their case. <\/span><\/p>\n

The petitioners also contend that nothing in the \u2019733 patent\u2019s specification <\/span>describes non-prior art means for implementing handwriting and voice capture <\/span>or linking customers\u2019 locations to their o<\/span>rders. Pet. Br. at 35-37, 42. They appear to argue that such a gap <\/span>compels <\/span>a finding that the recited technology is ineligible. <\/span><\/p>\n

As discussed in section IV.D.2.b of this brief, <\/span>supra <\/span>at pp. 27-30, when <\/span>the Board\u2019s background knowledge indicates <\/span>that a recited computer function is <\/span>conventional and routine, the specification\u2019s failure to describe a non<\/span>-prior art means for implementing the function can confirm that finding. <\/span>See, e.g.<\/span>, <\/span>Internet Patents<\/span>, 790 F.3d at 1348. The absence of an enabling disclosure, however, does not <\/span>require <\/span>the Board to conclude that a recited technology is conventional. A claim may recite eligible subject matter and yet simply fail to <\/span><\/div>\n<\/div>\n

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40 <\/span><\/div>\n<\/div>\n<\/div>\n

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Case: 15-1703 Document: 47 Page: 48 Filed: 10\/29\/2015 <\/span><\/div>\n<\/div>\n

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satisfy the requirements of \u00a7 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 <\/span>Alice<\/span>\u2019s step two. <\/span><\/p>\n

Finally, the petitioners assert that they <\/span>did <\/span>cite a prior-art patent before the Board that they contend demonstrates the conventionality of handwriting <\/span>capture and conversion, as well as linking an order to a customer\u2019s location.
\n<\/span>Pet. Br. at 37-38, 42 (discussing U.S. Patent No. 4,972,496). This patent was <\/span>cited in the petitioner\u2019s reply <\/span>before the Board, but only with respect to the <\/span>independent claims\u2019 broad recitation of \u201cmanually modifying\u201d <\/span>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. <\/span>See Baxter<\/span>, 678 F.3d at 1362. <\/span><\/div>\n<\/div>\n<\/div>\n<\/blockquote>\n

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. \u00a0Notably, in the PTO’s Ameranth<\/span> brief, it states:<\/p>\n

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The Board\u2019s\u00a7 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<\/em>. (\u201cVersata II\u201d), 793 F.3d 1306, 1336 (2015).<\/p><\/blockquote>\n<\/div>\n<\/div>\n<\/div>\n

You can listen to the entire oral argument [here<\/a>].<\/p>\n

You can review the court’s decision [here<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

The PTO’s new acting Director, Joe Matal, has argued several cases before the Federal Circuit during his time in the Solicitor’s office. \u00a0One case that comes to mind is \u00a0Apple v. Ameranth, a patent eligibility case. \u00a0One sound bite that I like from that case is available here: [Listen]. \u00a0In that sound bite, Mr. Matal […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8999"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=8999"}],"version-history":[{"count":17,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8999\/revisions"}],"predecessor-version":[{"id":9020,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8999\/revisions\/9020"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=8999"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=8999"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=8999"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}