02.19.18

Gemini version available ♊︎

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 in other sites/networks: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Reddit
  • email

Decor ᶃ Gemini Space

Below is a Web proxy. We recommend getting a Gemini client/browser.

Black/white/grey bullet button This post is also available in Gemini over at this address (requires a Gemini client/browser to open).

Decor ✐ Cross-references

Black/white/grey bullet button Pages that cross-reference this one, if any exist, are listed below or will be listed below over time.

Decor ▢ Respond and Discuss

Black/white/grey bullet button If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

DecorWhat Else is New


  1. In Picture: After Billions Spent on Marketing, With Vista 11 Hype and Vapourware, No Real Gains for Windows

    The very latest figures from Web usage show that it’s hardly even a blip on the radar; Windows continues bleeding to death, not only in servers



  2. [Meme] [Teaser] Double-Dipping Friedrich Rödler

    As we shall see tomorrow night, the EPO regime was supported by a fair share of corrupt officials inside the Administrative Council



  3. The EPO’s Overseer/Overseen Collusion — Part XIV: Battistelli's Iberian Facilitators - Portugal

    How illegal “Strike Regulations” and regressive ‘reforms’ at the EPO, empowering Benoît Battistelli to the detriment of the Rule of Law, were ushered in by António Campinos and by Portugal 5 years before Campinos took Battistelli’s seat (and power he had given himself)



  4. Links 16/10/2021: SparkyLinux Turns 10 and Sculpt OS 21.10

    Links for the day



  5. “Facebook Whistleblowers” Aside, It Has Been a Dying Platform for Years, and It's Mentally Perverting the Older Generation

    Guest post by Ryan, reprinted with permission



  6. [Meme] Microsoft Has Always Been About Control Over Others

    Hosting by Microsoft means subjugation or a slavery-like relationship; contrary to the current media narrative, Microsoft has long been censoring LinkedIn for China’s autocratic regime; and over at GitHub, as we shall show for months to come, there’s a war on information, a war on women, and gross violations of the law



  7. EFF Pushes for Users to Install DuckDuckGo Software After Being Paid to Kill HTTPS Everywhere

    Guest post by Ryan, reprinted with permission



  8. The Reign in Spain

    Discussion about the role of Spain in the EPO‘s autocratic regime which violates the rights of EPO staff, including Spanish workers



  9. [Meme] Spanish Inquisition

    Let it be widely known that Spain played a role in crushing the basic rights of all EPO workers, including hundreds of Spaniards



  10. Why You Shouldn’t Use SteamOS, a Really Incompetent GNU/Linux Distribution With Security Pitfalls (Lutris is a Great Alternative)

    Guest post by Ryan, reprinted with permission



  11. IRC Proceedings: Friday, October 15, 2021

    IRC logs for Friday, October 15, 2021



  12. Links 16/10/2021: Xubuntu 21.10 and DearPyGui 1.0.0

    Links for the day



  13. DuckDuckGo’s HQ is Smaller Than My Apartment

    Guest post by Ryan, reprinted with permission



  14. Post About Whether Vivaldi is a GPL violation Was Quietly Knifed by the Mods of /r/uBlockOrigin in Reddit

    Guest post by Ryan, reprinted with permission



  15. The EPO’s Overseer/Overseen Collusion — Part XIII: Battistelli's Iberian Facilitators - Spain

    The EPO‘s António Campinos is an ‘Academy’ of overt nepotism; what Benoît Battistelli did mostly in France Campinos does in Spain and Portugal, severely harming the international image of these countries



  16. From Competitive (Top-Level, High-Calibre, Well-Paid) Jobs to 2,000 Euros a Month -- How the EPO is Becoming a Sweatshop by Patent Examiners' Standards

    A longish video about the dreadful situation at the EPO, where staff is being ‘robbed’ and EPO funds get funnelled into some dodgy stock market investments (a clear violation of the institution’s charter)



  17. [Meme] Protecting European Patent Courts From EPO 'Mafia'

    With flagrant disregard for court rulings (or workarounds to dodge actual compliance) it seems clear that today's EPO management is allergic to justice and to judges; European Patents perish at unprecedented levels in national European courts and it should be kept that way



  18. Links 15/10/2021: Pine64's New PinePhone Pro and Ubuntu 22.04 LTS Codename

    Links for the day



  19. [Meme] GitHub Isn't Free Hosting, It's All About Control by Microsoft

    Deleting GitHub isn’t a political statement but a pragmatic decision, seeing how Microsoft routinely misuses its control over GitHub to manipulate the market



  20. With EPO 'Strike Regulations' Belatedly Ruled Unlawful, EPO Management May be Lowering the Salary Even Further by Introducing Outside 'Temps' or Casual Workers

    Institutional capture by an 'IP' (litigation) Mafia is nearly complete; with illegal so-called (anti) 'Strike Regulations' out the door, they're quickly moving on to another plan, or so it seems on the surface



  21. Links 15/10/2021: 95% of Ransomware Targets Windows

    Links for the day



  22. IRC Proceedings: Thursday, October 14, 2021

    IRC logs for Thursday, October 14, 2021



  23. The EPO’s Overseer/Overseen Collusion — Part XII: The French Connection

    The EPO‘s presidency (led by Frenchmen for nearly 15 years out of the past 18 years; Benoît Battistelli and António Campinos are both French despite their somewhat misleading surnames) is extremely unlikely to even be mildly scrutinised by the French delegates because of a web of nepotism and protectionism



  24. [Meme] Another Maladministration Meeting Comes to an End

    Did the EPO‘s overseeing body properly tackle Benoît Battistelli‘s illegal acts, authorised by that very same overseeing body? Don’t hold your breath as António Campinos continues to crack down on staff (maybe ILOAT will rule on it in 2030)



  25. Links 14/10/2021: LibreOffice 7.2.2, Happy Birthday to Jolla, Ubuntu 21.10, Devuan GNU+Linux 4.0, OpenBSD 7.0

    Links for the day



  26. [Teaser] What Miguel de Icaza Really Thinks of the CEO of Microsoft GitHub

    Following the opening of a new series about Microsoft GitHub we drop a little teaser today; we expect dozens of parts to be released in the coming weeks/months as facts are being validated and organised



  27. Splitting the Time to Cover More Leaks and Exposés

    We take stock of Part 11 of the ongoing EPO series (“EPO’s Overseer/Overseen Collusion”) and explain what caused various delays yesterday; we may have to up our pace a little in order to keep up with an influx of leaks and whistleblowers



  28. [Meme] Destroying the Workplace

    The working conditions at the EPO continue to worsen under the António Campinos regime, perpetuating the decade-long 'demolition project' of Benoît Battistelli and his cohorts in the complicit Administrative CouncilThe working conditions at the EPO continue to worsen under the António Campinos regime, perpetuating the decade-long 'demolition project' of Benoît Battistelli and his cohorts in the complicit Administrative Council



  29. Microsoft GitHub Exposé — Part I — Inside a Den of Corruption and Misogynists

    Today we commence a new series that implicates Microsoft, GitHub, Copilot, and Team Mono



  30. EPO Management Tricks EPO Staff Into Taking More Paycuts

    “Education and childcare reform” [sic] is an António Campinos "reform" in the same sense regressive salary reductions are just “adjustments” (euphemism); Electronic opt-in gaffes, according to staff representatives, show that the tradition of Benoît Battistelli carries on at the Office, taking away from staff for a few corrupt officials to milk the institution to death


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

Recent Posts