Bonum Certa Men Certa

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

...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.

Recent Techrights' Posts

Approaching 10,000 Articles/Pages Since Going Static
Trying to silence or derail the site was always a dumb strategy
Microsoft is Shedding Off Loads of Staff and That Can be Dangerous Too
Working for Microsoft is a choice; nobody forces you to do it
Richard Stallman and the Unix Philosophy
When asked about systemd people must remember that RMS speaks as an active Board member of the FSF and also the founder of the FSF
Get Rid of Back Doors, Don't Obsess Over Bounties and Other Corporate PR Stunts (or Needless Reboot Rituals)
Security as a term has mostly lost its meaning due to repeated misuse for many years
Serial Sloppers Are Killing the Web (They Probably Don't Care, Either)
Slop is a disease on the Web
IBM's Debt Ballooned by 8.5 Billion Dollars in Just 3 Months!
Hallmark of a company in a state of disarray, trying to spend its way out of trouble
Big Trouble in GNOME
even GNOME people admit the CoC went wrong
 
Links 25/04/2025: Slop Fatigue and Patent Judges Flocking to Fake, Unconstitutional and Illegal Kangaroo Court (UPC, Captured 'Justice')
Links for the day
Gemini Links 25/04/2025: Night Manager and Devuan in Hosting
Links for the day
Windows Falls to New Lows in Nicaragua, Now Below a Quarter (It Used to be Almost 100%)
Another all-time low for Windows
The Cost (to Linux) of LLM Slop
Slop 'artists' like Fagioli are far from harmless
Links 25/04/2025: Ubisoft Spyware, Hegseth Fails at Tech on Every Level
Links for the day
Gemini Links 25/04/2025: Food Forest Update and Facebook Destroying the Net
Links for the day
Streaming Apps Are “Investor Fraud” That Kills the Planet
Reprinted with permission from Ryan Farmer
Things Get Increasingly Nasty at Microsoft Ahead of the Fake Results and May's Mass Layoffs Wave
They try to get people to 'resign' so that they won't count as layoffs and the company's 'wellbeing' will seem better
Slopping the Trough: Disney Plus Loses Billions and the Decline of Physical Media in America
Reprinted with permission from Ryan Farmer
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Thursday, April 24, 2025
IRC logs for Thursday, April 24, 2025
Links 24/04/2025: GAFAM Problems and No Peace (or Ceasefire) in Sight
Links for the day
Slopfarms on the Web Almost Always Generate Anti-Linux FUD When They Produce "Linux" Output
Welcome to the dying Web
Richard Stallman's Oxford Talk Has Just Ended, Here Are Some Photos
he might hop over to another European country
Gemini Links 24/04/2025: Birthday and Good Work of Academia in Esotericism
Links for the day
Links 24/04/2025: EU fines Apple and Facebook, Another Microsoft GitHub Security Blunder
Links for the day
New Article Explains How the GPL Came About and WordPress Having Copyleft Obligations
Having been involved in the WordPress development community since almost the beginning, I know why it chose the GPL and how it restricts abuse by Automattic
IBM Gained Almost 6 Billion Dollars in "Goodwill" Value in Just 3 Months, According to IBM
Congrats to the management!
In Belarus, Yandex is Now Measured as 50 Times More 'Popular' (by Usage) Than Microsoft
Yandex continues to gain, whereas Bing cannot even register at 1%. Last month it was registered or measured at a measly 0.65%.
IBM Cannot Lie to Shareholders Anymore
"I would not be surprised if we see a layoff every quarter this year."
Dr Richard Stallman (RMS) Gives Talk in Oxford University in 4 Hours
If you live nearby, go there (it's free as in gratis)
Using a Law Firm's Licence to Exercise Politics Through Frivolous SLAPPs and Nastygrams (to Silence People, Remove Pages, Demand Fake or Forced 'Apologies')
Things must be getting really bad when lawyers act for raving antisemites
We're Working to Make Full-Site Search Available
This site has over 1,000 'wiki' pages, many thousands of documents, several thousands of videos, and about 50,000 blog posts or articles. We need to make them easier to find/navigate.
Links 24/04/2025: IBM Loses Many Contracts, Intel to Lay Off Over 20% (Not Counting Those Who Leave 'Voluntarily')
Links for the day
Richard Stallman Can Explain to Oxford Artificial Intelligence Society Why LLM Slop is Not Artificial Intelligence and Why It Hurts Society
another 'crop' of LLM slop that damages GNU/Linux and facts
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Wednesday, April 23, 2025
IRC logs for Wednesday, April 23, 2025
Open Source Initiative (OSI) Promoting Microsoft and Proprietary Software Using Microsoft Operatives
Because nothing says "Open Source" like GPL violations facilitated by Microsoft
Another Site Bites the Dust: "Open Source For You" Becoming a Slopfarm (LLM Slop)
What a shame. Another dead site.
Links 23/04/2025: Crackdowns on Dissent, Palin Loses Libel Retrial Against New York Times
Links for the day
Links 23/04/2025: Hard Times and Digital Amnesia
Links for the day
The GNU/Linux Site Formerly Known as "linoxide.com" is Back... as an LLM Slopfarm!
Better for linoxide.com to go offline than to do this
Richard Stallman to Speak in Oxford University Exactly a Day From Now
outsourced to GAFAM
Links 23/04/2025: "Hiding Corruption" and "The Cost of Defunding Harvard"
Links for the day
Microsoft 'Studies' Again? Leon Musolff is Writing Papers With Microsoft.
Even if one can see/find a link to "the study" (in the Bezos-controlled publication), most people won't look any further and just take everything at face value.
Towards GNU World Domination
The FSF led by Geoffrey S. Knauth with his friend Richard Stallman in the FSF's Board [...] Let's encourage people to adopt GNU/Linux. There has never been a better time.
statCounter Helps Visualise Just How Deep in Trouble Microsoft is (Especially in Africa)
Microsoft sabotaged efforts to connect Africans and equip them with GNU/Linux laptops
The Register is Using Linux-Hostile Clickbait in Articles of Linux Proponents
Don't be a "whore" to advertisers, team El Reg
Microsoft Windows in Cyprus Lacking a Future
Most people access the Web there from mobile
Matrix Has a Severe Problem With Illegal Images
If Matrix cannot get the CP problem under control, many projects and people will dump Matrix
Never Try to Justify Strangulation of Women (Not in the US and Not in the UK)
Joint post by Mrs. Rianne Schestowitz and Dr. Roy Schestowitz
Links 23/04/2025: Tesla Profits Plunge 71%, Intel Ready to Lay Off 20% of Staff, Microsoft and IBM Layoffs
Links for the day
Microsoft's Most Profound Issue is That People Moved to 'Mobile' and "App Stores" (Microsoft's Presence There is Negligible)
Expect a wild ride for Microsoft this year
Google News is Amplifying FUD and Lies About Linux (and OpenSSH/SSH) by Promoting Slopfarms With Machine-Generated FUD and Slop Images
Google should know better
Gemini Links 23/04/2025: Librarians, Anubis, and Refactoring a Gemini Capsule
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Tuesday, April 22, 2025
IRC logs for Tuesday, April 22, 2025