EditorsAbout the SiteComes vs. MicrosoftUsing This Web SiteSite ArchivesCredibility IndexOOXMLOpenDocumentPatentsNovellNews DigestSite NewsRSS

02.19.18

PTAB Continues to Invalidate a Lot of Software Patents and to Stop Patent Examiners From Issuing Them

Posted in America, Patents at 4:00 am by Dr. Roy Schestowitz

…when petitioned to do so anyway

Erasure

Summary: Erasure of software patents by the Patent Trial and Appeal Board (PTAB) carries on unabated in spite of attempts to cause controversy and disdain towards PTAB

THE progress made by the Patent Trial and Appeal Board (PTAB) is commendable. The number of petitions keeps climbing and the number of patent invalidations proportionally rises.

It’s not hard to imagine who this would infuriate. Two PTAB-bashing pieces have just been published (twice on a Sunday!) by Watchtroll [1, 2] and it’s that same old attempt to make up scandals. Earlier this month they even exploited “the children!”

Watchtroll’s Gene Quinn will soon be in this ‘webinar’ about how to avoid patent rejections and on February 22nd (three days from now) IPO will also do a ‘webinar’ to a similar effect (trying to overcome PTAB rejections). Suffice to say, these so-called ‘webinars’ are more like lobbying. Here’s another new one intended to cover “Roadblock PTAB: Litigation Strategies & IPR Antidotes.”

Roadblock? Seriously?

Above The Law says that “over 85% of IPR filings concern patents that have been litigated in District Court.”

This is hardly surprising. PTAB helps resolve patent disputes outside the court. It deals with legitimacy of granted patents rather than matters like venues, damages and so on. It typically deals with matters of obviousness — a subject recently covered by M. David Weingarten and Kevin D. Rodkey. If a company wishes to bring legal action against another, why shouldn’t the validity of the patent/s at hand be ascertained first? We already know that examiners don't always make the right decisions. PTAB just sort of ‘double-checks’ them.

Several days ago, in relation to Polaris, one pundit/educator wrote: “Polaris v Arctic Cat FedCir 2/9/18: 2 IPRs on same Polaris patent; aff’d PTAB in one IPR sustaining cls; vacated part of other rejecting cls–Bd erred inter alia by applying an ill-defined “subjective preferences” analysis to reject Polaris’s teaching away argument re Denney ref. [] “We find Polaris’s argument that there is no evidence why one of skill in the art looking to create a four-wheel drive ATV would be motivated to start with Denney’s dune buggy unavailing.” NB ~30 words in “that” clause before “unavailing.” Tiresome for reader! Place after verb.”

Long story short, the high court agreed with PTAB. As usual (it agrees about 80% of the time — that is upon examining PTAB decisions). It is very reassuring that PTAB does not take granted patents for granted. No patents should be blindly assumed to be valid. Because many are not! We only find that out in the rare circumstances/cases of them being challenged in a lawsuit or by PTAB. It means that less than 1% are really looked at properly.

It is quite revealing that PTAB is effective and is a positive thing. Friends of patent trolls refer to it by words like “ridiculous”, “certainly NOT there”, and “bad”. There are many exclamation points in relation to § 101 (it’s about a general-purpose computer). The general theme is, they really hate § 101 because PTAB uses it to eliminate a lot of software patents. One blog they link to mentions this rant:

Somebody commented on the Patently-O blog the other day that a claim that is patent eligible under §101 can become patent ineligible simply by narrowing the claim to recite a specific function that is a purported abstract idea.

They still try to figure out some magic wordings or a loophole. Sometimes they just use buzzwords. We wrote about these over the weekend. A week ago Anticipat instructed/advised readers/clients how to protect bogus patents from PTAB:

In filing a patent application at the USPTO, an applicant cannot choose its Examiner. Nor can it typically switch to a different Examiner once assigned. And since not all Examiners are equally agreeable or reasonable, being stuck with an Examiner sometimes puts the applicant at a serious disadvantage.

Two different appeal conferences provide applications with another set of examiner eyes. Here, we show that these fresh sets of eyes can have meaningful impacts on prosecution despite any built-in biases. This can happen even before the appeal reaches the PTAB judges’ desk.

Citing a case involving not software patents (but a court reversal nonetheless), Patently-O wrote about reversing versus vacating PTAB decisions. To quote:

In a split opinion, the Federal Circuit has rejected the PTAB’s anticipation and obviousness decisions – finding that the Board erred in holding that the key prior art reference inherently disclosed the an “inlet seat” defined by a “valve body” of the claimed drain assembly.

Last week Donald Zuhn wrote a blog post which “addresses the Board’s reversal of the § 101 rejection.”

These are rare. We’ve already mentioned how the patent microcosm resorts to cherry-picking cases that help support low-quality patents in the US. Here’s what Zuhn says:

In an interesting decision issued last year, the Patent Trial and Appeal Board reversed the final rejection of claims 1-5 and 9 in U.S. Application No. 12/959,017. The claims at issue had been rejected under 35 U.S.C. § 101 as reciting patent ineligible subject matter in the form of an abstract idea, and under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 6,454,707 and U.S. Patent Application Publication Nos. US 2006/0226079 A1 and US 2009/0082684 A1. This post addresses the Board’s reversal of the § 101 rejection.

A PTAB reversal of § 101 rejection/s must always be a reversal of an examiner’s decision, i.e. they deal with a mere application rather than a patent (or just tentative grant). For them to reverse a rejection is pretty rare a thing although we have not seen statistics about this for a while. It might be interesting. “Currently, about 1-2% of applications go up for appeal,” Anticipat wrote 3 days ago, but that speaks of applications alone, not patents.

A patent maximalist said: “Considering that they get to pick and choose what to challenge, and the PTAB heavily favors challengers, it’s surprising that they don’t win every challenge. Their motions success/denial ration is not very good.”

“Maybe you don’t understand this (or choose to ignore it),” I told him, “but IPRs target the likely invalid patents…”

It has always been like that. They don’t just pick applications/patents at random; they target those which are more questionable and have more at stake in the outcome (enough to merit a payment for a petition).

The other day in relation to Smith & Nephew, Covidien v. Hologic got brought up again. And also in relation to Smith & Nephew, PTAB was mentioned by Kevin E. Noonan, noting Judge Newman's typical dissent in Arthrex (another Federal Circuit case).

Here are some of the details:

Although having built up a track record for several years and several thousand petitions and “trials,” inter partes review proceedings under the Leahy-Smith America Invents Act are still relatively new. As a statute administered by an administrative agency having the power (and duty) to promulgate rules effecting implementation of that statute, IPRs, like many administrative proceedings, have in due course generated controversies on how the statute has been implemented.

[...]

The Federal Circuit affirmed, in an opinion by Judge Dyk joined by Judge O’Malley (who filed a concurring opinion) over a dissent by Judge Newman. The panel first held that the Board’s decision was appealable, not falling within the proscriptions of 35 U.S.C. § 314(d) regarding institution decisions. The panel majority started from the presumption that PTAB decisions were appealable as for any other final administrative agency action. 5 U.S.C. §§ 701,704. The panel also found support in 28 U.S.C. § 1295(a)(4)(A), which provides for judicial review of final agency action absent statutory provisions precluding review. The Board did not find the Court’s decision in St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), to be to the contrary, based on the different procedural posture in that case (which considered whether § 1295(a)(4)(A) permitted appeal of the PTAB’s decision not to institute, which is precluded by § 314(d)).

[...]

Judge Newman’s dissent is based on her opinion that Arthrex had disclaimed all claims challenged in the petition prior to the Board’s decision whether to institute an IPR, and accordingly under 37 C.F.R. § 42.107(e) there were no claims against which an adverse judgment could be entered. For Judge Newman, the relevant language of 37 C.F.R. § 42.73(b) in subparagraph (2) is that “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis in opinion), because under the factual circumstances at bar there was no trial and thus entering an adverse judgment was contrary to the express language of the rule. Judge Newman believes that the PTAB has exceeded its statutory authority, and it is “[t]he judicial obligation is to assure agency compliance with its legislated authority,” citing Nat’l Broad. Co. v. United States, 319 U.S. 190, 224 (1943). For Judge Newman, “[s]ubsection (b)(2) on its face is directed to disclaimer or cancellation ‘in the trial.’ It is not disputed that ‘in the trial’ can occur only after institution.” Thus, because claims 1-9 were disclaimed before the IPR was instituted, it is a misapplication of the rule for the Board to have entered an adverse judgment. Any other interpretation is for Judge Newman an explicit change in the rule, which requires rulemaking procedures specified under the APA (35 U.S.C. § 2(b)(2)(B)).

In short, it’s yet another affirmation, which means patent maximalists will try to forget it and move on. One of them rejoiced the reversal of an examiner’s decision to reject and on that same one decision he further expanded and commented. But that’s just a drop in the ocean. That same person wrote about at least nine [1, 2, 3, 4, 5, 6, 7, 8, 9] other outcomes which went in the exact opposite direction. So what we’re seeing here is a bunch of software patents rotting away, with maybe 1 in 10 going the other way (from ‘dead’ to ‘live’). There have been many affirmations of rejections of patent applications lately (mostly based on Section 101) and that seems to suggest that examiners too are getting tougher on such patents. Here are a couple of Section 101/Alice-based rejections (affirmations of rejections) [1, 2] and two more from recent days [1, 2]. In this particular case “PTAB Denied Reconsideration of 101 Rejection Because Patent Application Spec Did Not Describe Signal as “Non-Transitory” Signal…”

PTAB isn’t exactly easy a barrier to leap past. It’s not always about § 101; here’s an example of PTAB being affirmed on a § 121 rejection: “The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision affirming invalidity of claims of US Patent 6,284,471 under the doctrine of obviousness-type double patenting.”

Here’s an attempt to apply Section 101 to something which is not software but a doorbell. Wrong test to apply. As we wrote several times last year, this particular lawsuit was not about software patents, so the following outcome is not surprising.

The court denied defendant’s motion to dismiss on the ground that plaintiff’s audio-video doorbell patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea.

They ought to go for something like prior art. This new analysis by Mark Kachner and Ashley C. Morales speaks of a PTAB affirmation based on similarity. Here’s the outline:

The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation, without further explanation, is insufficient to support a finding of anticipation.

[...]

The Examiner also construed the claimed term “signal,” and determined this term was disclosed by Reference B. The PTAB affirmed.

The Federal Circuit reversed the Board’s anticipation rulings, and vacated the Board’s obviousness ruling. The Federal Circuit determined that the only correct interpretation of Reference A is that the inlet seat in the unlabeled valve is external to the outer casing of the drain valve.

The bottom line is:

  1. PTAB overturns decisions to grant far more often than the opposite
  2. CAFC (the Federal Circuit) remains largely supportive of PTAB
  3. Section 101 is often used to invalidate patents, but other sections and methods are being used to persuade PTAB/judges

Expect many more rants about PTAB and be sure to check where they come from. Watchtroll published two yesterday (on a Sunday) and we pretty much know what Watchtroll stands for. It’s well documented that they’re to patent news what Breitbart is to political news.

Share this post: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Digg
  • del.icio.us
  • Reddit
  • co.mments
  • DZone
  • email
  • Google Bookmarks
  • LinkedIn
  • NewsVine
  • Print
  • Technorati
  • TwitThis
  • Facebook

If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

Pages that cross-reference this one

What Else is New


  1. Links 13/12/2018: IRS Migration, GNOME 3.31.3 Released

    Links for the day



  2. Patent Trial and Appeal Board (PTAB) Decisions Still Uncontroversial Unless One Asks the Patent Maximalists

    Contrary to what the Director of the U.S. Patent and Trademark Office has claimed, PTAB is liked by companies that actually create things and opposition to PTAB comes from power brokers of the Koch brothers, law firms, and trolls (including those who foolishly repeat them)



  3. Latest Talk From IBM’s Manny Schecter Shows That IBM Hasn't Changed and After the Red Hat Takeover It'll Continue to Promote Software Patents

    IBM's hardheaded attitude and patent aggression unaffected by its strategic acquisition of a company that at least claimed to oppose software patents (whilst at the same time pursuing them)



  4. The European Patent Troll Wants as Much Litigation as Possible

    Patent quality is a concept no longer recognisable at the European Patent Office; all that the management understands is speed and PACE, which it conflates with quality in order to register as much cash as possible before the whole thing comes crashing down (bubbles always implode at the end)



  5. António Campinos Turns His 'Boss' Into His Lapdog, Just Like Battistelli and Kongstad

    The European Patent Organisation expects us to believe that Josef Kratochvíl will keep the Office honest while his predecessor, the German who failed to do anything about Battistelli's abuses, becomes officially subservient to António Campinos



  6. Links 12/12/2018: Mesa 18.3.1 Released, CNCF Takes Control of etcd

    Links for the day



  7. EPO Trust, Leadership and Commitment

    "Trust, leadership and commitment" is the latest publication from EPO insiders, who in the absence of free speech and freedom of association for the union/representation are an essential spotlight on EPO abuses



  8. Links 11/12/2018: Tails 3.11, New Firefox, FreeBSD 12.0

    Links for the day



  9. Number of Filings at the Patent Trial and Appeal Board (PTAB) Highest in Almost Two Years

    Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs), which [cref 113718 typically invalidate software patents by citing 35 U.S.C. § 101], are withstanding negative rhetoric and hostility from Iancu



  10. With 'Brexit' in a Lot of Headlines Team UPC Takes the Unitary Patent Lies up a Notch

    Misinformation continues to run like water; people are expected to believe that the UPC, an inherently EU-centric construct, can magically come to fruition in the UK (or in Europe as a whole)



  11. The EPO Not Only Abandoned the EPC But Also the Biotech Directive

    Last week's decision (T1063/18, EPO Technical Board of Appeal 3.3.04) shows that there's still a long way to go before the Office and the Organisation as a whole fulfil their obligation to those who birthed the Organisation in the first placeLast week's decision (T1063/18, EPO Technical Board of Appeal 3.3.04) shows that there's still a long way to go before the Office and the Organisation as a whole fulfil their obligation to those who birthed the Organisation in the first place



  12. Patents on Abstract Things and on Life (or Patents Which Threaten Lives) Merely Threaten the Very Legitimacy of Patent Offices, Including EPO

    Patent Hubris and maximalism pose a threat or a major risk to the very system that they claim to be championing; by reducing the barrier to entry (i.e. introducing low-quality or socially detrimental patents) they merely embolden ardent critics who demand patent systems as a whole be abolished; the EPO is nowadays a leading example of it



  13. Links 10/12/2018: Linux 4.20 RC6 and Git 2.20

    Links for the day



  14. US Courts Make the United States' Patent System Sane Again

    35 U.S.C. § 101 (Section 101), the Patent Trial and Appeal Board (PTAB) and other factors are making the patent system in the US a lot more sane



  15. Today's USPTO Grants a Lot of Fake Patents, Software Patents That Courts Would Invalidate

    The 35 U.S.C. § 101 effect is very much real; patents on abstract/nonphysical ideas get invalidated en masse (in courts/PTAB) and Director Andrei Iancu refuses to pay attention as if he's above the law and court rulings don't apply to him



  16. A Month After Microsoft Claimed Patent 'Truce' Its Patent Trolls Keep Attacking Microsoft's Rivals

    Microsoft's legal department relies on its vultures (to whom it passes money and patents) to sue its rivals; but other than that, Microsoft is a wonderful company!



  17. Good News: US Supreme Court Rejects Efforts to Revisit Alice, Most Software Patents to Remain Worthless

    35 U.S.C. § 101 will likely remain in tact for a long time to come; courts have come to grips with the status quo, as even the Federal Circuit approves the large majority of invalidations by the Patent Trial and Appeal Board’s (PTAB) panels, initiated by inter partes reviews (IPRs)



  18. Florian Müller's Article About SEPs and the EPO

    Report from the court in Munich, where the EPO is based



  19. EPO Vice-President Željko Topić in New Article About Corruption in Croatia

    The Croatian newspaper 7Dnevno has an outline of what Željko Topić has done in Croatia and in the EPO in Munich; it argues that this seriously erodes Croatia's national brand/identity



  20. The Quality of European Patents Continues to Deteriorate Under António Campinos and Software Patents Are Advocated Every Day

    The EPC in the European Patent Office and 35 U.S.C. § 101 in the USPTO annul most if not all software patents; under António Campinos, however, software patents are being granted in Europe and the USPTO exploits similar tricks



  21. Team UPC is Still Spreading False Rumours in an Effort to Trick Politicians and Pressure Judges

    Abuses at the European Patent Office, political turmoil and an obvious legislative coup by a self-serving occupation that produces nothing have already doomed the Unitary Patent or Unified Patent Court (UPC); so now we deal with complete fabrications from Team UPC as they're struggling to make something out of nothing, anonymously smearing opposition to the UPC and anonymously making stuff up



  22. Patents on Life and Patents That Kill the Poor Would Only Delegitimise the European Patent Office

    After Mayo, Myriad and other SCOTUS cases (the basis of 35 U.S.C. § 101) the U.S. Patent and Trademark Office is reluctant to grant patents on life; the European Patent Office (EPO), however, goes in the opposite direction, even in defiance of the European Patent Convention



  23. EPO 'Untapped Potential'

    "Campinos is diligently looking for ways to further increase the Office’s output without increasing the number of examiners," says the EPO-FLIER team



  24. Links 9/12/2018: New Linux Stable Releases (Notably Linux 4.19.8), RC Coming, and Unifont 11.0.03

    Links for the day



  25. Links 8/12/2018: Mesa 18.3.0, Mageia 7 Beta, WordPress 5.0

    Links for the day



  26. The European Patent Organisation is Like a Private Club and Roland Grossenbacher is Back in It

    In the absence of Benoît Battistelli quality control at the EPO is still not effective; patents are being granted like the sole goal is to increase so-called 'production' (or profit), appeals are being subjected to threats from Office management, and external courts (courts that assess patents outside the jurisdiction of the Office/Organisation) are being targeted with a long-sought replacement like the Unified Patent Court, or UPC (Unitary Patent)



  27. Links 7/12/2018: GNU Guix, GuixSD 0.16.0, GCC 7.4, PHP 7.3.0 Released

    Links for the day



  28. The Federal Circuit's Decision on Ancora Technologies v HTC America is the Rare Exception, Not the Norm

    Even though the PTAB does not automatically reject every patent when 35 U.S.C. § 101 gets invoked we're supposed to think that somehow things are changing in favour of patent maximalists; but all they do is obsess over something old (as old as a month ago) and hardly controversial



  29. The European Patent Office Remains a Lawless Place Where Judges Are Afraid of the Banker in Chief

    With the former banker Campinos replacing the politician Battistelli and seeking to have far more powers it would be insane for the German Constitutional Court to ever allow anything remotely like the UPC; sites that are sponsored by Team UPC, however, try to influence outcomes, pushing patent maximalism and diminishing the role of patent judges



  30. Many of the Same People Are Still in Charge of the European Patent Office Even Though They Broke the Law

    "EPO’s art collection honoured with award," the EPO writes, choosing to distract from what actually goes on at the Office and has never been properly dealt with


CoPilotCo

RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

CoPilotCo

Recent Posts