Bonum Certa Men Certa

PTAB Continues to Enforce Section 101 and New Paper From Christopher Walker and Melissa Wasserman Has Suggestions for Agency Head Review

The New World of Agency Adjudication



Summary: Despite endless attempts to undermine PTAB, its work carries on, invalidation of abstract patents continues unabated, and academics who are not patent maximalists (or in bed with the patent 'industry') offer constructive advice

The Patent Trial & Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) continues to improve patent quality. To say that PTAB has had an impact would an understatement. The EPO is kicking to the curb its equivalent of PTAB, whereas in the US the role of PTAB grows over time (all-time record last year).



"As one might expect, patent maximalists aren't happy about it, to say the least."Over the past week we've witnessed many new examples where PTAB and patent examiners squashed applications using Section 101 (here are three new examples with links to the corresponding decisions [1, 2, 3]).

As one might expect, patent maximalists aren't happy about it, to say the least. Recently, when a rejection was affirmed by PTAB citing laws of nature Patently-O decided to make a big deal out of it, writing not one but several posts about it [1, 2]. To quote:

In its original decision, the PTAB affirmed an examiner rejection – finding the claim ineligible as directed toward a natural phenomenon. However, the patentee requested a rehearing – arguing that the PTAB had failed to properly identify the natural phenomenon being claimed. On reharing though, the PTAB reaffirmed the decision of no patentable subject matter.

In its analysis, the Board first noted that the claims are not directed toward any transformation of the isolated DNA, but rather simply detecting its parts. We know from prior cases that isolated DNA remains a product of nature (Myriad) and that detecting DNA sequence is also a phenomenon of nature (Ariosa).

[...]

It will be interesting to see whether the patentee pushes this case to a District Court or the Federal Circuit for review. Although those options are fun, the more likely outcome is that the patentee will narrow the claims and try again. Mark Nuell at Roberts Mlotkowski argued the case for the applicant.


Also see this article from 6 days ago, titled "Are These INOMax Therapeutic Method Claims Directed To A Natural Phenomenon?"

Natural phenomenon patents were declared not valid owing to 35 USC ۤ 101. This makes perfect sense. To quote:

In Mallinckrodt Hospital Prods. IP Ltd. v. Praxair Distrib., Inc., Judge Sleet of the U.S. District Court for the District of Delaware invalidated personalized method of treatment claims under 35 USC ۤ 101 as being directed to a natural phenomenon. If the Federal Circuit affirms the decision, will it leave room to draw a line that spares other methods of treatment?

[...]

Conducting step 2 of the Mayo/Alice framework, the district court determined that all steps either were routine and conventional (steps (a), (b) and (d)) or did not transform the claim into patent-eligible subject matter (step (c).

[...]

Although the district court referred to the Federal Circuit decision in Cleveland Clinic, the claims invalidated in that case were diagnostic claims, not therapeutic method claims. While I would like to predict that the Federal Circuit would not invalidate a method of treatment claim under €§ 101, Judge Sleet’s analysis highlights the slippery slope presented by the “natural phenomenon” paradigm. The judge characterized the claimed invention as “a patient populations’ natural physiological response to 20 ppm of inhaled nitric oxide treatment.”—couldn’t the same be said about any therapeutic method of treatment?


Attention is now shifting to attempts to discredit the courts and PTAB. The anti-PTABers want the applicant to appeal (of course!) this decision. The anti-PTABers maintain their sick illusion that PTAB is not bound by law and is some out-of-control entity (simply because it keeps patent quality high). There's a whole case about it in the Supreme Court (to be decided within months). It's known as Oil States and blogs like Watchtroll and Patently-O keep trying to meddle in it (it's obvious in whose favour).

"It's known as Oil States and blogs like Watchtroll and Patently-O keep trying to meddle in it (it's obvious in whose favour)."A short while ago, Christopher J. Walker and Melissa F. Wasserman (from Ohio State University and University of Texas at Austin) published this new paper that talks about Oil States. It's 55 pages long and considering recent papers from Wasserman and a colleague (explaining why examiners over-grant), it might be worth a read. She said that this paper "situates PTAB in the modern agency adjudication landscape and explores one critical difference: the lack of agency head review."

From the paper's general tone we conclude that they offer constructive advice rather than ridicule of judges (like Patently-O does). They are "exploring alternative mechanisms to remedy the lack of agency-head review at the PTAB."

Here is the abstract:

In 1946, the Administrative Procedure Act (APA) set forth the basics for “formal” adjudication, with the classic account requiring an administrative law judge to make the initial determination and the agency head to have the final word. Today, however, the vast majority of agency adjudications are not paradigmatic “formal” adjudications as set forth in the APA. That is the lost world. It turns out that there is great diversity in the procedures by which federal agencies adjudicate. This new world involves a variety of less-independent administrative judges, hearing officers, and other agency personnel adjudicating disputes. Like in the lost world, however, the agency head retains final decision-making authority.

In 2011, Congress created yet another novel agency tribunal—the Patent Trial and Appeal Board (PTAB)—to adjudicate disputes between private parties as to the validity of issued patents. Questions abound concerning the PTAB’s proper place in the modern administrative state, as its features depart from the textbook accounts of APA-governed “formal” adjudication. Many of these questions are working their way through the Federal Circuit and to the Supreme Court. Indeed, the Court will decide this Term whether PTAB adjudication unconstitutionally strips parties of their property rights in issued patents.

This Article situates PTAB adjudication within administrative law’s larger landscape of agency adjudication. By surveying this new world of agency adjudication, it becomes clear that PTAB adjudication is not that unusual. But we also identify one core feature of modern agency adjudication that is absent at the PTAB: the Director of the Patent and Trademark Office lacks final decision-making authority. To be sure, the Director has some power to influence outcomes, in her ability to order rehearing and stack the board with those who share her substantive vision. But these second-best means of agency-head control raise problems of their own, including constitutional questions. This Article concludes by exploring alternative mechanisms to remedy the lack of agency-head review at the PTAB.


We don't expect the corporate/mainstream media to cover this because such media barely understands or cares to educate the public about patents. Will the Justices read it though?

Recent Techrights' Posts

Gemini Links 04/01/2025: Geminispace Contributions and Security Theatre
Links for the day
 
Free Software Foundation (FSF) Almost 85% Funded
Probably 85% by Sunday or Monday
Links 04/01/2025: Demolition of IBM Building (Its Birthplace), Microsoft Layoffs, Microsoft Vice President Quits
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Friday, January 03, 2025
IRC logs for Friday, January 03, 2025
Apple 'Articles' That Aren't... Just SPAM From Beta'News', Generated by LLMs
A 'news' sites reduced to garbage crafted by bots
A Salad of Microsoft FUD Against Linux, Published by LinuxSecurity.com Using LLM Slop/Copypasta
LinuxSecurity.com is an anti-Linux FUD site, powered by Microsoft chatbots on the face of it
Gemini Links 03/01/2025: GNU Emacs Key Bindings in GNU Midnight Commander's Mcedit and Gemini Editing Setup with Vim
Links for the day
Links 03/01/2025: Neil Young Drops Out of Glastonbury and MElon Attacking the Free Press
Links for the day
[Memes] Two Dictators. Donald Trump Loves TikTok.
This is a problem
Jeff Bezos (Washington Post) Spreads Political Propaganda Against the Internet (and the Web)
Then people wonder why trust in the media has gotten so low
In Hong Kong and Taiwan People Flock to GNU/Linux (Unlike Windows, GNU/Linux Doesn't Capture Screenshots of Everything You Do and Add Back Doors to Encryption)
Hong Kong and Taiwan have bright engineers. They know Windows is a joke.
When You Get Your "Latest Technology News" From an LLM Slop Farm
They still call themselves "BetaNews" (the word "news" is in the name)
For Software Freedom (and for Broader Personal Freedom), the Goalposts Are Moving
we need to open up our eyes and identify/classify other threats, such as social control media
Engineering Things to Last 70 Years in an 8-Bit, 16-Bit, and 32-Bit World
Nowadays they make things that barely last 7 years
Slow News, But Not Slow for Us
So far this year (maybe premature to say so because many journalists are still on holiday) the news is very, very slow
GNU/Linux Rose to 5% in Belgium (It Was 1.66% Last January)
Trebling in 12 months, according to statCounter
A Golden Opportunity that Canonical and IBM Intentionally Ignore (in Order to Appease Microsoft)
They're too dependent on Microsoft "sweeteners"
[Meme] Crushing Free Speech Before Even Taking Public Office...
someone who isn't even president is already meddling
[Meme] Be a Good and Obedient Citizen. Use Microsoft Windows.
Microsoft actively works with China to censor search results and spy on citizens
Canada: Windows at All-Time Lows, ChromeOS and GNU/Linux Rise to Almost 8%
It is widely known that many schools in Canada adopted ChromeOS
In Mexico, Windows Down to All-Time Low, GNU/Linux Up to All-Time High
Yesterday we showed that in North America adoption of GNU/Linux is growing fast
The Free Software Foundation Extends Cutoff Date (Two More Weeks), Raises About 330,000 Dollars
Isn't it predictable that people who worked for Microsoft GitHub gave money to some unscrupulous lawyers in London to harass us?
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Thursday, January 02, 2025
IRC logs for Thursday, January 02, 2025
Windows Falls to ~22% in France and Spain, Based on statCounter
Windows 'corrected' at 22% "market share" in France - i.e. roughly the same as Spain
Gemini Links 02/01/2025: Goals 2025, Microsofter Clickbaiting Again, Advice for the Newbie or Returning Perl Hacker
Links for the day
GNU/Linux and ChromeOS in Australia Tripled in 5 Years? That's How statCounter Sees It....
Based on statCounter...
[Meme] Wrestling With Pigs in Social Control Media
“Never wrestle with pigs. You both get dirty and the pig likes it.” ― George Bernard Shaw
Even Worse Than Racism at the Linux Foundation
And worse than corporate colonialism
It's Not Just MElon X, President Frank-Walter Steinmeier, All Social Control Media is Basically a Digital Weapon
The question is, what are you going to do about it?
Microsoft Especially Important to Phoronix (It Also Gives Gifts to Phoronix)
A whole section devoted to Microsoft, mostly with puff pieces/ads of proprietary things
Microsoft Plummets to New Lows in Azerbaijan
Perhaps the Azerbaijani population is looking for something other than the NSA's foremost facilitator
GNU/Linux Reaches 5% in Indonesia (Population Size Near 300 Million)
You would need not envy "Microsoft Indonesia" right now
We Need Something More Like DMOZ, Not Search Engines and Bill-Funded Wikipedia (Censoring Unfaltering Information About Powerful People and Institutions)
era of LLMs trained on Wikipedia... Microsoft tried - and failed - to game the narrative to the same extent Google does
Tens of Billions of Dollars Down the Drain (Microsoft Lost the Search "Arms Race" or Market)
But caused injury to itself and others, just like with Nokia in mobile
Seems Like GNU/Linux Usage Doubled in Japan Last Year
So says statCounter data anyway
GNU/Linux Measured at 4.4% in South America and 3.34% in Africa, Based on 2025's Preliminary Data
All-time highs
GNU/Linux Leaps to 6% in the United States of America (Not Even Counting ChromeOS)
Additionally, the FSF in Boston is managing well
GNU/Linux Usage in Europe Leaps Above 6% in 2025
This is a big deal because a lot of Microsoft's revenue came from Europe
Windows Falls to 22.5% Worldwide, Android Up to 48%
The world's (by far) biggest populations don't use Windows much
GNU/Linux Back to 5% in 2025
That's not counting ChromeOS
Links 02/01/2025: Production of Apple Vision Pro Halted, More on Public Domain Day 2025
Links for the day
GNU/Linux Gained About 0.5% Last Year, According to StatCounter
2024 ended with "proper" GNU/Linux at +0.4%, ChromeOS at +0.1% (based on statCounter/StatCounter)
Links 02/01/2025: OpenAI Whistleblower Suchir Balaji Alleged to Have Been Murdered, Islamic Terrorism in New Orleans
Links for the day
Gemini Links 02/01/2025: Friends, Blunder Valley, and New Year
Links for the day
Links 02/01/2025: Violence Crisis in South Africa and Arrest Warrant for South Korean Leadership
Links for the day
Rumour: IBM Will Try to Induce Mass Resignations This Month Using R.T.O. (Just Like Amazon Does This Month)
Amazon will start some of this in March, sources have told us
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Wednesday, January 01, 2025
IRC logs for Wednesday, January 01, 2025