Thursday, October 8, 2020
Throughout patent prosecution earlier than the USPTO, applicant and examiner can turn out to be entrenched in conflicting positions on subject material eligibility. Attraction to the Patent Trial and Attraction Board (PTAB) might clear prosecution deadlock. Nonetheless, Alice associated points taken to the PTAB aren’t essentially the Alice associated points determined by the PTAB.
We herein talk about important distinction between consideration of Alice associated points in prosecution and their decision by the PTAB. Each the authorized analytical framework to handle Alice associated points in addition to determinations ensuing from utility of the analytical framework can diverge in prosecution versus the PTAB. Prosecution culminating in current PTAB selections supplies clear examples. The PTAB selections are mentioned under in abstract vogue to establish incongruities between prosecution and enchantment. Skilled practitioners will perceive the influence of those incongruities on enchantment consideration and technique.
II. CURRENT ANALYTICAL FRAMEWORK
Present USPTO pointers promulgated in 2019 concerning subject material eligibility mandate a two step authorized analytical framework. See USPTO, 2019 Revised Patent Topic Matter Eligibility Steering, 84 Fed. Reg. 50 (Jan. 7, 2019); USPTO, October 2019 Replace: Topic Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).Step one within the present analytical framework determines whether or not a declare is directed to a judicial exception. Within the first prong of step one, an examiner ought to establish the “particular limitations” that allegedly recite an summary concept. Within the first prong, the examiner additionally ought to decide whether or not the recognized particular limitations fall inside acquainted subject material groupings – i.e., mathematical ideas, sure strategies of organizing human exercise, and psychological processes. Within the second prong of step one, an examiner ought to consider whether or not a declare as an entire integrates a recited judicial exception right into a sensible utility of the exception. Within the second prong, the examiner ought to consider integration right into a sensible utility by figuring out any “extra parts” recited within the declare past the judicial exception. Within the second prong, the examiner additionally ought to consider these extra parts to find out whether or not they combine the judicial exception right into a sensible utility utilizing sure judicially acknowledged concerns. If step one concludes with a willpower that the claims recite a judicial exception, the second step within the analytical framework determines whether or not extra parts quantity to considerably greater than the judicial exception itself.
The USPTO examination corps and the PTAB alike, a minimum of in precept, now apply the present two step authorized analytical framework for points referring to subject material eligibility. In apply, nevertheless, the extent of adherence to the present analytical framework can fluctuate significantly, on the discretion of USPTO personnel. In any occasion, the appliance by the USPTO of the present analytical framework can engender problematic inconsistencies in dealing with Alice associated points.
A. Completely different Frameworks
The time between submitting of a PTAB enchantment and rendering of the enchantment resolution stays important. Throughout this time, authorized analytical frameworks, particularly these trying to handle the complexities of subject material eligibility, might very effectively evolve. Thus, an appellant might have prosecuted its patent utility and drafted its enchantment transient primarily based on one analytical framework. Nonetheless, the appellant in the end might discover its enchantment determined, most frequently unfavorably, on a unique analytical framework that the appellant had no alternative to think about or transient.
A current instance is Ex parte Gilbert, Attraction No. 2019-001719 (PTAB Aug. 12, 2020). The enchantment transient was filed on August 21, 2018. Fairly accurately, the appellant primarily anchored its enchantment transient on a then prevailing analytical framework primarily based on USPTO subject material eligibility pointers from 2016. Nonetheless, by the point the PTAB authored its resolution on the enchantment, the USPTO got here to embrace the present analytical framework over the sooner 2016 analytical framework. Accordingly, the PTAB in Gilbert utilized solely the present analytical framework. One necessary distinction between the analytical framework of 2016 on which the appellant primarily based its enchantment versus the present analytical framework utilized by the PTAB is the chance within the latter to determine a sensible utility in prong two. As skilled practitioners know, the chance is usually a patent saving device – however sadly one which the Gilbert appellant couldn’t wield in prosecution or enchantment. The appellant in Gilbert was left to simply accept a PTAB resolution, which was unfavorable in relation to subject material eligibility, that utilized a brand new analytical framework on which the appellant had not introduced argument. On this state of affairs, continued prosecution together with declare amendments after enchantment may be an choice to offer an appellant with the possibility to handle the brand new analytical framework. Nonetheless, such prosecution would proceed uphill in view of the PTAB resolution of ineligibility already on file.
As one other instance, the appellant in Ex parte Dangeville, Attraction No. 2019-002705 (PTAB July 1, 2020) likewise noticed the examiner affirmed after the PTAB utilized a unique authorized evaluation. In Dangeville, the ultimate workplace motion dated March 16, 2018 rejected the claims as ineligible. The ultimate workplace motion made no reference to extra parts, which even underneath then prevailing USPTO pointers have been related to a willpower about considerably extra. In distinction, the PTAB two years later crammed the hole. In making use of prong two of the present analytical framework, the PTAB recognized the extra parts intimately: “In declare 7, the extra parts are (1) ‘receiving an preliminary UML class diagram modelizing the software program utility’ and (2) a processor to switch ‘the preliminary UML class diagram to generate an prolonged UML class diagram.’” As soon as once more, this PTAB resolution decided key points implicated by the present analytical framework that weren’t raised by the examiner and thus not addressed by the appellant in prosecution.
Analytical frameworks of the USPTO will possible proceed to develop. Because the Alice resolution in 2014, the USPTO has steadily promulgated a sequence of evolving steerage on subject material eligibility. Given the continued Alice associated confusion expressed by the courts, academia, and practitioners alike, the sequence is more likely to proceed. In consequence, an applicant should concentrate on the risk posed by an enchantment grounded on prevailing USPTO requirements however rendered out of date by a PTAB resolution embracing totally different requirements.
B. Overlapping Frameworks or the Similar Framework
Inconsistencies exhibited between examiners and the PTAB aren’t restricted to utility of various analytical frameworks to handle Alice associated points. Even to the extent that earlier and present analytical frameworks utilized throughout prosecution and enchantment of a case considerably overlap with frequent points, decision of the frequent points nonetheless can engender necessary variations. Additional, even when an examiner and the PTAB apply the identical analytical framework, incongruities of their respective determinations can come up.
Whereas they distinction in lots of necessary respects, the earlier USPTO pointers and the present USPTO pointers each require, for instance, a willpower about considerably extra. Nonetheless, that willpower as made by examiners versus the PTAB can battle. For instance, in Ex parte Lee, Attraction No. 2019-004854 (PTAB July 20, 2020), the examiner utilized a previous model of USPTO pointers whereas the PTAB utilized the present model. In relation to the frequent difficulty concerning existence of an “ingenious idea,” the ultimate workplace motion advised the next as extra parts of the claims at difficulty: “offering a common processor machine operable with an information retailer configured to retailer license agreements” and “having the processor observe precise funds of royalties paid by the licensees, and monitoring for uniformity the precise royalty funds/charges within the licensing contracts to ‘most favored nation charges’ outlined within the plurality of licensing agreements, and supply by the pc processor a notification of a compliance when a sure situation happens.” In distinction, the PTAB, earlier than discovering the claims ineligible, recognized the extra parts as follows: “(1) offering an information retailer configured to retailer license settlement related to the licensing bundle; (2) the pc processor machine, and (3) offering an end-user visualization device whose show is conscious of clicking on a selected license settlement clause.” The delta between the disparate characterizations just isn’t insignificant, and represents a scope of potential argument in favor of subject material eligibility on which the appellant offered no advocacy.
Even utility of the identical analytical framework by an examiner and the PTAB can lead to important variations. One instance is formulation of an summary concept in prong one of many present analytical framework. An examiner’s identification of an alleged summary concept can dictate the arguments an applicant will advance to rebut the identification. Nonetheless, like different Alice associated determinations, the PTAB typically replaces an examiner’s willpower of an summary concept with its personal de novo willpower. This probably eliminates the relevancy of the rebuttal arguments earlier superior by the applicant. For instance, in Ex parte Jenkins, Attraction No. 2020-002816 (PTAB Aug. 12, 2020), the examiner specified the alleged summary concept in a prolonged formulation as follows: “conducting an public sale for a restricted quantity of reinsurance capability the place eligible (i.e. ‘validated’) bids for portions of capability that may’t be absolutely crammed are diminished in amount (i.e. ‘signed down’) in line with bid value precedence (and bid time of receipt precedence) in order that contracts can nonetheless be created for the partial parts of these bids that may be crammed at their decrease (or later) bid costs on the finish of the public sale whereas honoring extra absolutely the upper priced (or earlier acquired) bids to the extent that the restricted quantity of reinsurance capability permits.” For the desired summary concept, the examiner recognized these subject material groupings: sure strategies of organizing human exercise and psychological processes. On enchantment, the PTAB indicated high-level settlement with the examiner concerning the existence of an summary concept. Nonetheless, in divergence from the examiner, the PTAB rejected a prolonged formulation of the summary concept. As a substitute, the PTAB acknowledged a unique set of subject material groupings: sure strategies of organizing human exercise within the type of business interactions or a elementary financial apply. Opposite to the examiner, the PTAB rejected the relevance of the psychological processes subject material grouping.
PTAB selections, like Jenkins, reveal that variations in summary concept determinations have penalties. Arguments in opposition to an examiner’s identification of a sure summary concept over the course of prosecution and negotiation can develop and in the end persuade. In distinction, if the identical arguments are dropped at the PTAB, the method of the PTAB can render the arguments irrelevant. For instance, as in Jenkins, an applicant might embrace arguments of subject material eligibility in relation to a selected subject material grouping. Nonetheless, an enchantment of the case can shut the door on the arguments if the PTAB deems the subject material grouping inapplicable. Worse nonetheless, the wasted arguments might represent troublesome file historical past admissions for a patent obtained by means of continued prosecution on different grounds.
Incongruities in formulation of recited summary concepts can engender extra downstream divergence. Inconsistent identifications of particular limitations that recite an summary concept, in flip, can immediate totally different identifications of extra parts. When extra parts are decided inconsistently, the inquiry in regards to the existence of a sensible utility in prong two can lead to disparate conclusions. For instance, subject material eligibility arguments anchored to a sure extra ingredient in prosecution evaporate if the PTAB refuses to acknowledge the ingredient as such. Alternatively, the PTAB can acknowledge extra or totally different extra parts than the examiner. For instance, in Jenkins, the examiner and the PTAB alike recognized these extra parts in prong two: “server pc system,” “processor,” “reminiscence,” “acquired bids database,” “public sale database,” “adjusted bids database,” and “administration database.” Nonetheless, the PTAB alone additional recognized “cedent pc,” “bidder computer systems,” and “communications community” as extra parts. Variations in prong two analyses, like these in Jenkins, and their interaction with diverse formulations of the summary concept in prong one can outline the arguments accessible to appellants and thus dictate subject material eligibility outcomes.
In some cases, enchantment may be the one viable selection of a decided applicant. Largely, nevertheless, candidates have choices. In deciding amongst choices, an applicant ought to perceive that subject material eligibility points raised and addressed throughout prosecution might fluctuate markedly from these embraced and determined by the PTAB. No scarcity of PTAB selections reveal that Alice associated points on enchantment are a transferring goal.
A prediction in regards to the chance of a profitable PTAB enchantment typically depends upon acquainted points closely vetted in prosecution. Such a prediction ought to carry little weight if these points is not going to survive the enchantment or shall be outmoded by new points not contemplated by applicant, as current PTAB selections warning. Thus, the uncertainty in a PTAB enchantment poses important threat. That threat ought to inform the advisability of an enchantment.
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