Federal Circuit rules against PTAB “Chewbacca defenses”

European patent oppositions: litigation by unfair surprise?
Chewbacca defense?

Litigation by unfair surprise is out, at least for US patent PTAB cases — for European patent oppositions, not so much. 

One thing that I will never forget about my experience with European patent oppositions is that to American eyes, the European process appears to be rather “due process of law” impaired.

Europe has a system by which issued patents can be challenged. This system is called a patent opposition. In the US, the counterpart to this is the Patent Trial and Appeal Board (PTAB), which can conduct Inter Partes Review (IPR) hearings.

The two systems have various differences. For example, although in theory, issues should be argued in advance by written briefs, the European opposition process also allows parties to introduce new issues during the last-minute oral arguments.

This allows for litigation by “unfair surprise”, rather than by reasoned arguments.  In this sort of setting, I have seen that illogical but last-minute “Chewbacca defenses” can work quite well.  The clock is ticking, proceedings are going to finish in an hour, and suddenly you have to discuss entirely new and logically irrelevant issues. It is as if you suddenly have to shift gears and focus on if the Star Wars character Chewbacca lives on the planet Endor or not.

In this regard, it is refreshing to see that the Federal Circuit in Dell Inc., v. Acceleron, LLC (March 15, 2016) has confirmed that this sort of litigation by unfair surprise is unacceptable for US PTAB patent reviews. Due process wins!  That is, arguments made during oral argument must be restricted to only those arguments previously discussed in writing beforehand.  Thank you, Federal Circuit.

Part of why the European patent opposition process permits unfair surprise may be due to the difference between European civil law practice, and American (and UK) common law practice. The European civil law system, which generally does not use juries, assumes that the judges are all-wise, and therefore need little protection against bad input (irrelevant or improper evidence).  By contrast, the common law system, which is jury oriented, has greater protections (rules of evidence) against bad input.

Since all judges are human, a key difference between the two systems is that, at least for patent opposition matters, the European system is running with fewer quality control measures.

I prefer the American system, thanks. In any event, the take-home lesson is that for international patents, sometimes there can be unexpected differences between countries.

Why patent searches and prior art searches are a good idea

Prior art searches and patent searches
Thinking like a detective

Prior art searches: Before investing a lot of time, effort, and money in trying to patent a potential new invention, it is always good to spend at least a few hours doing patent searches to see if there is any prior art (earlier patent or non-patent publications) that might cause problems. As a rule of thumb, if you haven’t found any prior art that concerns you at least a bit, then you probably haven’t looked enough yet!

Why do this? Because eventually, skeptical USPTO examiners will be going through your patent application, looking for ways to reject on the basis that the application is either not novel or obvious in view of prior art.

Patent examination is an adversarial process. Patent examiners have, in effect, quotas that require them to initially reject most patent applications. It is a bit of a game, like tennis, where the examiner initially rejects by citing some combination of prior art.  The examiner then hits the ball back onto the applicant’s side of the court. The examiner is expecting the applicant to hit the ball back onto the examiner’s side of the court by submitting convincing arguments pointing out where the examiner was wrong. If the applicant can convincingly argue that the examiner is wrong, usually (often after a few additional volleys), the examiner allows the patent, and the applicant wins. But if the applicant cannot argue back convincingly, it is like dropping the ball or hitting the ball back out of bounds. The applicant loses, and that patent application is going nowhere.

The patent examiner typically starts by doing computer searches for prior art using search terms that the examiner thinks will work best. This computer search will come up with unexpected citations, which the examiner may, in turn, combine in unexpected ways to try to show that the invention is “obvious”. Because of the quota to initially reject almost everything, often these initial rejections are unreasonable. Unreasonable rejections are “good news” in disguise because the applicant can then rebut these by reasonable arguments. It is the reasonable rejections that are the real “bad news”. This is because these are harder to argue against. So before putting a lot of time and money into an invention, it is a good idea to do at least some initial checking to see what the examiner (or for that matter, a competitor) might try to use against you later. This is the idea behind a “feasibility study” type prior art search.

Sometimes, particularly when the inventor or inventors are experts, the inventors themselves may decide that they are sufficiently familiar with their field so that the search-time expense/benefit ratio is low, and no additional prior art searches are worthwhile. Here, since the USPTO will do an independent search anyway, the only obligation that the inventors have is to inform USPTO of the most important prior art that they are aware of.

Other times, particularly when the inventor or inventors are working in an area that is new to them, prior art searches have a better search-time expense/benefit ratio. Here many good sources are available over the Internet, including Google, Google patents, Google Scholar, the USPTO patent database, the WIPO patent database, and the like.

Some common mistakes that inventors make is to underestimate the amount of prior art that a patent examiner can use against their invention. Although pretty much everyone understands the problem of prior patent applications by others, this is only part of the prior art problem.

For example, for the US, anything published more than a year ago can be used against your invention, including your own publications. This includes that “cool” YouTube video, that “cool” social media posting, or that research paper/thesis that you may have published last year. Foreign patent offices are even worse in this regard. Patent examiners know that often the inventor’s own worst enemy is the inventor’s own earlier publications. As a result, patent examiners often specifically search for the inventor’s own publications and internet postings to use against them.

Another problem that inventors sometimes have is that they are a bit too emotionally attached to their cool new idea.  This problem can result in sub-optimal prior art searches. The inventor may, perhaps subconsciously, avoid search strategies that may kill that shiny new idea.

Here, there are several advantages to having a patent attorney do a quick feasibility prior art search for you. One is that the patent attorney does prior art searches all the time. Another is that the patent attorney, being both less emotionally invested in the idea, and being expert in finding prior art, may have an easier time thinking of thorough search strategies. The third is that often doing the search helps the patent attorney understand variants of your idea better, which can translate into a better patent application with better claims.

For example, if something highly relevant comes up (and often something does come up), then the new idea can be better evaluated in the context of this new-found prior art. The scope of the initial idea may be altered or expanded, and a better patent application can result. Worst case, if it becomes clear that the idea has been done before, then time and money can be saved. Alternative ideas can be explored instead.

In conclusion, “feasibility study” type prior art searches are a good way to get at least a rough estimate of the legal feasibility of a new idea. Although the prior art search may uncover what looks at a first glance to be a tough obstacle, often this initial obstacle may encourage further thinking and improvements to the initial idea, resulting in a better patent down the road.

Note that in addition to “feasibility study” type prior art searches, there are other types of patent searches called “freedom to operate” searches or opinions as well. These represent a different and more extensive type of search, and this is a different topic.

Harming the economy with over-aggressive, haphazard Alice-based 101 rejections

Alice problem, what is abstract under 35 USC 101, and what is not?
Alice in Wonderland – Mad Tea Party

What to do about “Alice”? The US Supreme Court’s “Alice” decision has invited us all to a Mad Tea Party.  What fun! But, as previously discussed, if you like logical coherency, or even just want to keep from crashing the economy, there are a few problems with this decision.

Attorney Louis Hoffman, writing in ipwatchdog.com, sums up some of these recent”Alice” problems nicely.

Damaging the economy: As Louis points out, some of the most important areas of US technology are based on software, business methods, and biotechnology.  The USPTO has recently taken upon itself to reject many patents in this area.  However, this loss of patent coverage can impede the economy by making investments difficult, and/or by driving inventions underground in the form of trade secrets.

http://www.ipwatchdog.com/2016/02/07/uspto-harms-over-aggressive-and-haphazard-application-of-alice/id=65810/

What about actual (written) patent law? Article I, Section 8, Clause 8 of the US Constitution has empowered Congress to:  “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Congress has done so, and has determined under 35 USC 101 that:  “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

The US Supreme Court has given itself the power to override Congress, however.  In Alice, they chose to exercise this power.  In this regard, Attorney John Duffy writes in Scotusblog:  “The uncertain expansion of judge-made exceptions to patentability” points out some interesting implications of this decision.

If you want to know what’s important about this case, it’s right there: the Court’s acknowledgement that the judge-made “exclusionary principle” has the potential to “swallow all of patent law” because “all patents” are at some level based on the very things that can’t be patented under the judge-made doctrine.

Decisions, decisions: So the Alice decision, read too broadly, produces an unconstitutional result.  At some point, there will be likely corrective action.  However, the practical question that some inventors, particularly business method inventors, have to address today is: file a patent and risk an “‘Alice” rejection, or don’t file a patent and be certain that the invention will become public domain?

Alice update — need true neutral party review

Need for impartial judges

In my opinion, part of the “Alice”, 35 USC 101 patent eligibility problem is that few true impartial (i.e. neutral or objective) judges have really been involved yet.

Both the USPTO and Federal judges have at least a subconscious incentive to get complex patents off of their respective desks with a minimum of time and effort.  Why fill your head with complex matters — just say the patent is “abstract”, and the problem is gone.  Instant relief!  So perhaps there is an inherent conflict of interest built into the legal system in this regard.

So, as the Supreme Court itself warned, “Alice” will continue to swallow up more and more patent law. At least until it finally reaches an opposing force.  Given our legal system, what might this opposing force be?

The Supreme Court is not likely to be this opposing force. It is is not really a neutral party, because it created this mess.  As a rule, the Supreme Court does not like to admit error.

I had hoped that this opposing force might be formed by a group of middle-to-large sized companies, or by the Federal Circuit doing its job and actually cleaning up patent law. This hasn’t happened yet, however. Rather, each Federal Circuit ruling has narrowly focused on a single case, without much regard to making consistent rulings between cases.

The USPTO has observed this inconsistency and has attempted to introduce some consistent patent eligibility rules. The problem is that the Federal Courts have made it clear that they consider themselves superior to the USPTO. So far, they have tended to ignore USPTO attempts to reconcile their many inconsistent rulings.

The only remaining true objective party is Congress.  There have been a number of congressional efforts in this regard. The problem here is that there are so many other issues that it is hard to get congressional attention.

Future generations will likely find the whole thing to be amusing. It is indeed worthy of Monty Python. The logical problems with Alice are a bit like the parrot in the dead parrot sketch.

CLS Bank v. Alice Corporation II: more cutting-edge legal confusion

Alice and legal confusion
Confused? So is everyone else!

Legal confusion:  There remains a lot of legal confusion in the US regarding the question, are software inventions patentable? How to answer this question? We could, of course, look at the letter of the law (e.g. 35 USC 101), which would give us the rather boring answer that software is patentable. But if someone doesn’t want software to be patentable (and a number of large powerful companies do not), that’s not the answer they want.

How else might we get an answer? In ancient Greece, we might consult the Oracle at Delphi, or perhaps sacrifice a goat and examine its entrails. However, in the modern US, we know that this is silly. As we all know, the modern US way to decide this is to put this question to a small panel of elderly individuals who know nothing about software, science, technology, or patent law. We call this small panel the Supreme Court of the United States (SCOTUS).

To answer questions, the Oracle at Delphi inhaled vapors, fell into a trance, and then spoke in riddles. These were then interpreted by various priests. In much the same way, SCOTUS (hopefully without the aid of vapors) has given us some confusing and inconsistent rulings, such as the CLS Bank v. Alice Corporation decision, that in essence are riddles that must be interpreted by various priests (e.g. lower courts, the USPTO).

So in “Alice”, SCOTUS told us that “abstract ideas” are patent ineligible, and also told us that “In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

So the ruling, in essence, is the riddle: “abstract ideas are not allowed“, and “abstract ideas are undefined”. This is a pretty good riddle. So the next step is, now that the Oracle (err… SCOTUS) has spoken, how are the various priests (err… the USPTO and lower courts) going to interpret this riddle?

The USPTO has thousands of patent examiners, and collectively they examine thousands of patents a day.  They can’t run each patent application by SCOTUS and wait for 5 out of 9 judges to make a decision.

The USPTO problem has been further compounded by the fact that lower federal courts, over hundreds of different trials, have issued hundreds of often contradictory patent eligibility rulings. For every ruling that clarified an issue, there are at least one or two other rulings that amplify the confusion. As a result, all anyone has to do to support their desired outcome is to pick and choose among the hundreds of cases. Then string together an argument using these selected cases.

Federal agencies can’t legally operate like this.

The USPTO has made many valiant efforts to cope with this legal confusion. They frequently (several times a year) update their patent eligibility examination guidelines with updated guidelines and examples. These efforts include a webpage with the latest patent eligibility guidelines and a frequently updated Manual of Patent Examination Procedure (MPEP) with a frequently updated MPEP section 2106 on patent subject matter eligibility. So the USPTO examination guidelines continue to change every few months.

Some USPTO examiners update their analysis based on the latest guidelines, and some do not. Some are so conservative that they won’t approve a given claim as patent-eligible unless it is almost identical to a small list of approved patent-eligible claims.

The courts ignore the USPTO guidelines and continue to do whatever they want.  Each new ruling adds to the legal confusion. Nobody reads the actual, Congress passed, 35 USC 101 law anymore.

The “Alice” case was aptly named, but “Wonderland” is not a nice place.

Oracle vs Google Java API case: blurring the distinction between patents and copyrights

Oracle v Google, JAVA, API, patent, copyright, litigation, Supreme Court
Java

Pushing the limits of copyright law:  A 2014 era copyright court case:  Oracle America, Inc. v. Google Inc. involving Java API, is showing that at times, the difference between patents and copyrights is not as distinct as you might think or like.  You can see the original 2014 court decision here:

https://www.eff.org/files/2014/11/10/oracle_v_google_13-1021.opinion.5-7-2014.1.pdf

As I understand it, Google attempted to reverse engineer Java by using standard “clean room” (e.g. fresh and original code) techniques. However in the case of 37 Java API classes, Google copied some elements on the belief (based on prior case law such as a 1995 Lotus v Borland case) that because these API were functional, such functional elements were therefore not copyright protected.

Oracle, which obtained rights to Java when it acquired Sun Microsystems in 2010, did not agree.

In the May 9, 2014 decision, the Court sided with Oracle.  The Court rejected the Lotus finding, and about 20 years of legal precedent, that menu structures (being essential to operation), were therefore not copyrightable.  Instead, the Court held that elements that can perform a function indeed sometimes can be copyrightable.  Indeed, the Court argued that something that can be patented can potentially be copyrighted as well (page 43).

The Court argued that no deference should be given to findings of operation or function and that copyright should be determined by an “abstraction-filtration-comparison” inquiry.  Perhaps so, but neither this Court nor the previous Trial court actually attempted to perform this test!

In what looks to me to be an important part of the decision, the Court equated the Java language to the English language and concluded that making the API subject to copyright would not restrict Google from using Java any more than a copyrighted paragraph would hinder other authors from using the English language.  “However Google, like any author, cannot employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages — the details and arrangement of the prose.” (See page 44).

To me, this reasoning appears to be problematic.  API are much more fundamental than standard copyrighted paragraphs.  API are more akin to the functional neural networks in the human brain that are used to understand various short and common English words and phrases.   I can express myself just fine in everyday life without quoting paragraphs from copyrighted novels.  However if, due to copyright restrictions, the underlying brain neural networks (or computer software structure) needed to understand many short and common English phrases are off-limits, then copyright turns standard English into a proprietary language.  In effect, the court is making large chunks of the Java language proprietary as well.

What is more dangerous:  patents go away unless filed within a year of first disclosure, then properly prosecuted, properly maintained, and have a maximum life of 20 years in any event. Trademarks go away unless filed, maintained every 10 years, and efforts are continually expended to protect against the trademark turning generic.  But copyrights automatically attach without effort, and are then good for 95 to 120 years without any need for renewal!

The Court remanded the case to the trial court, where other copyright principles such as “fair use” may then get Google out of hot water.  However, in my opinion, the Court’s analysis missed some key points.  We don’t allow short and common English phrases to be subject to copyright because to do so would unduly constrain normal speech.  There appears to have been no consideration as to what extent forcing a rewrite of the 37 Java APIs at issue would constrain the universe of previously written Java code, and prevent use of many short and common phrases in the Java language.

Was the Court, in essence, telling Google that although standard Java is now off-limits, they, of course, are welcome to create their own unique dialect of Java?   Put this way, then the decision looks off.

Time has passed. In November 2019 the Supreme Court agreed to hear the case. After various intermediate court decisions, the issues continue to focus on the legal question of if software interfaces, such as Java API, are copyrightable.  Among other arguments (such as fair use), Google argues: “Consistent with Congress’s expectation, courts have held that “aspects” of a computer program that constitute “functional requirements for compatibility” with other programs are “not protected by copyright” … The Federal Circuit erred when it failed to draw a similar distinction here.

The Supreme Court has the final say here. So the results will be interesting.

Impressions on the new (post AIA) Patent Trial and Appeal Board (PTAB) patent trial format

USPTO PTAB IPR reviews
Gavel

PTAB:  The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed.  The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise).  It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak.   Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO had and continues to have a low budget process to challenge an issued patent, called an Ex-Parte Reexamination. Here the challenger essentially writes their own office action challenging a patent as being not novel or obvious in view of some new prior art citations. This process is very inexpensive but only allows a challenger one time “at bat”. No further challenger comments or rebuttals are allowed. So it is a more limited type of challenge.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process.  The US version is called an “Inter Partes Review” (IPR). The USPTO has been hosting roundtables to show their progress to date and solicit feedback.  I attended one of their roundtables at Santa Clara University and came away favorably impressed.  The present rules are here:

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process.  Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys.  These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology.  By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome.  In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions. At the same time, relative to standard trials, the PTAB approach appears to be relatively simple. There is only one forum (even for Indian tribes), and certain procedural rules are clearly defined.

With some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology), as well as litigation attorneys, should be able to handle PTAB IPR.

If it’s so obvious, why didn’t anyone think of it sooner?

Leo pharmaceuticals: 35-USC-103 obvious traversal arguments
Shoot the moon

35 USC 103 “obviousness” rejections: The recent Federal Circuit case of Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 suggests that the Federal Circuit may be starting to develop a new set of criteria and arguments that can help protect against hindsight bias in obviousness rejections.  In Leo pharmaceuticals, the Federal Circuit held that “to avoid the trap of hindsight”, probative evidence of nonobviousness should also be considered.  What was new was that the Leo court held that this can include both evidence of long-felt but unsolved needs, and the length of time between the publication dates of the prior art (used in the obviousness rejection) and the claimed invention.  Specifically, Leo court held that the existence of a large time gap between the prior art publications, and the invention, can also be used as indicia of non-obviousness.

How long must this time gap be?  The Leo pharmaceuticals court held that given a longstanding need, if the prior art citations used in the obviousness rejection are on the order of about 14-22 years old, then this is too long.  That is, such an extensive time delay is probative for non-obviousness because if the combination of such long known citations was actually obvious, then the combination would have been disclosed sooner.

An interesting consequence of this ruling is a novel (but risky) “shoot the moon” type of patent defense strategy for obviousness rejections.  That is, Leo can be interpreted as a Federal Court suggestion to find out how far back in time the relevant citations actually extend.  For example, if the prior art is actually 30 years old, but the citations used to demonstrate the prior art were only 5 years old, the following could be done:

  • Explore the roots of the 5-year-old prior art citation
  • Trace it back to the original 30-year-old prior art
  • Disclose the 30-year-old prior art citations
  • Make a Leo type argument

The logic seems sound – something that was known 30 years ago was also known 5 years ago.  The fact that the citations were not combined until the invention, despite a long-felt need, is probative that the combination was not obvious.

This is arguably a “shoot the moon” legal strategy (i.e. a long shot).  However, it is a strategy better suited for patent trials, rather than patent prosecution. The problem here is that patent examiners, who usually are not attorneys, must follow the Manual of Patent Examining Procedure (MPEP).  The MPEP is somewhat slanted to help examiners find reasons to reject patents. Certain applicant-helpful cases, such as Leo pharmaceuticals v. Rea, are often omitted. To a patent examiner, if you can’t cite an MPEP reference number, it doesn’t exist.

Thus USPTO examiners, who must follow the MPEP, will generally ignore this approach.  However, this case represents a valid legal precedent that can be used in a Federal Court trial situation. The utility of this approach for PTAB IPR remains to be seen.

Cleaning up obsolete case law: time to revisit In re Gorman

re Gorman
Spiderweb

35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references?  The re Gorman case is how such absurd rejections are rationalized.

Patent examiners must follow the Manual of Patent Examining Procedure (MPEP). According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”.  Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).  However, Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the In re Gorman decision were:

When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious

However, since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentiverequirement for combining citations is no longer required (although still allowed).  When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer applies!

Yet they persist… Under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did:  “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections. Some 35 USC 103 rejections look more like ransom notes, where the examiner parses the applicant’s claim into various sentence fragments, and then computer-matches these with corresponding sentence fragments from other citations.

Note to USPTO:  At present, MPEP 2145 cites In re Gorman as justification for combining 13 prior art references in a 35 USC 103 (obvious) rejection! Indeed, MPEP 2145 teaches no upper limit. Under the present post-KSR rules, where hindsight is not viewed as being a problem, an examiner could, in theory, write a pure “ransom note” type rejection. Just use the applicant’s claims and assign each claim word to a different reference.

CLS Bank v. Alice Corporation

CLS Bank v Alice
Confusing directions

CLS Bank v Alice Corporation: what is patentable? Perhaps I was too optimistic in my earlier “Prometheus bound (or at least distinguished)” post.

The May 10 Federal Circuit court decision, “CLS Bank v Alice Corporation” shows that the Federal Circuit is unfortunately still spinning its wheels with regards to determining basic questions about what is patent-eligible.

The good news is that the decision’s various logical problems, and the logical problems with the underlying Supreme Court decisions, are being widely publicized.  Indeed interest in this decision was so high that the Federal Circuit Court servers crashed under the load of everyone trying to download the decision at once!

If you are interested in seeing the present state of the art in regards to cutting-edge legal confusion, you can download the Federal Circuit decision at:

https://www.eff.org/files/cls_bank_v_alice_en_banc_ruling.pdf

Note added in 2020:  An alternate title for this article could have been “the insanity begins“, but arguably the insanity actually started a bit earlier with the earlier Mayo v Prometheus case.  However, CLS Bank v Alice dialed the insanity “up to eleven“.

In retrospect, the original 2012 dissenting opinion by Judge Moore (joined by Judges Rader, Linn, and O’Malley) clearly shows that nearly half the Federal Circuit judges realized that the Federal Circuit (and as it turns out, later the Supreme Court) were about to go seriously “off the rails” with regards to patent eligibility.

Here is what the Judges wrote in 2012 (see page 88 in the above file):

I am concerned that the current interpretation of § 101, and in particular the abstract idea exception, is causing a free fall in the patent system. The Supreme Court has taken a number of our recent decisions and, in each instance, concluded that the claims at issue were not patent-eligible. See Bilski, Prometheus, Myriad (under consideration)…

Holding that all of these claims are directed to no more than an abstract idea gives staggering breadth to what is meant to be a narrow judicial exception…

My colleagues erroneously apply Prometheus’s “inventive concept” language by stripping away all known elements from the asserted system claims and analyzing only whether what remains, as opposed to the claim as a whole, is an abstract idea…This approach is inconsistent with the 1952 Patent Act, and years of Supreme Court, CCPA, and Federal Circuit precedent that abolished the “heart of the invention” analysis for patentability…

Moreover, my colleagues’ analysis imbues the § 101 inquiry with a time-dependency that is more appropriately the province of §§ 102 and 103… Under my colleagues’ approach, however, a system claim that passes § 101 when the patent issues could later magically transform into an abstract idea simply because certain computer hardware elements no longer seem inventive.”

So these judges, writing in 2012, analyzed the problem with total clarity and foresaw exactly what would happen.  Too bad the Supreme Court apparently ignored this opinion!

With the passage of time, dissenting opinions often become majority opinions. In this context, the 2012 dissenting opinion by Moore, Rader, Lin, and O’Malley spells out exactly how, when, and why the patent eligibility legal framework went amock. It also gives a good clue as to how to fix these problems.