10.09.18

The USPTO’s Principal Issue is Abstract Patents (or Patent Scope), Not Prior Art Searches

Posted in America, Courtroom, Google, Patents at 6:21 am by Dr. Roy Schestowitz

Obviousness (§ 103), prior art (§ 102) and scope (§ 101) not the same issue

Some coloured papers

Summary: In spite of the fact that US courts prolifically reject patents for being abstract (citing 35 U.S.C. § 101) Cisco, Google, MIT, and the USPTO go chasing better search facilities, addressing the lesser if not the wrong problem

THE conundrum associated with prior art is an old one. How can one search and identify similar past work? By what terms? By which means? Literature? Internet? What if the terms used aren’t the same? This is why examiners tend to be domain experts. Many are doctors and professors. The U.S. Patent and Trademark Office (USPTO) can attract quite a few of them, including the wife of the previous patent ‘chief’ at Patent Progress.

“Google is a private firm and it is itself a prolific patent applicant. That’s a potential conflict.”The principal issue at the USPTO isn’t prior art, however, but patent scope, judging by the number of US patents being ejected by the courts based on that criterion, e.g. 35 U.S.C. § 101. It’s a bit disappointing to see Google getting involved at patent offices in various capacities like searches, translations etc. Google is a private firm and it is itself a prolific patent applicant. That’s a potential conflict.

This morning we spotted Susan Miller’s article from yesterday (titled “Patent Office gets search help from tech industry heavyweights“). CCIA represents “tech” but a lot of “big tech” so the interests of small firms isn’t always in the mix. This is why the CCIA’s (or Patent Progress‘) Josh Landau was reasonably OK with this wrong 'solution' in yesterday’s post (titled “Cisco, Google, MIT, and USPTO Team Up To Create Prior Art Archive“) which said:

One of the biggest problems in patent examination is actually finding prior art. When it comes to patents and patent applications, that’s relatively easy—examiners have access to databases of all patents and applications, and they’re well-trained in searching those databases. But when it comes to non-patent prior art—product manuals, journal articles, standards proposals, and other such technical documents—that prior art is harder to find. Examiners are correspondingly less likely to cite to non-patent prior art.

Cisco and MIT, with some help from Google and the USPTO, are trying to help solve that problem. Their solution? The Prior Art Archive, a publicly accessible archive created with contributions from technical experts and industry stakeholders, designed to preserve and make searchable exactly the kind of non-patent prior art that’s currently hard to locate.

This is, as we’ve already explained over the weekend, the wrong ‘solution’ tacking the wrong ‘problem’. What we really need to explore is how to compel the USPTO to stop granting software patents that courts and sometimes inter partes reviews (IPRs) would invalidate anyway. How can examiners be made to realise that abstract patents are a thing of the past? The choice of the new Director isn’t helpful. He gives the examiners guidelines that limit their ability to reject abstract patents.

“The choice of the new Director isn’t helpful. He gives the examiners guidelines that limit their ability to reject abstract patents.”“Abstractness is not the malleable concept the Supreme Court thinks,” Peter Kramer wrote yesterday in Watchtroll. Still that sort of court- or SCOTUS-bashing in Watchtroll? These patent maximalists would also literally patent mathematical equations and paintings if they could…

There’s no point bashing judges and Justices; it would only further alienate them. SCOTUS is fine with a decision against patent maximalism, based on yesterday’s post from Patent Docs. It refuses to assess and decide on Regeneron Pharmaceuticals v Merus:

Last week, the Supreme Court denied certiorari to Regeneron Pharmaceuticals in its appeal of the Federal Circuit’s decision in Regeneron Pharmaceuticals v. Merus that affirmed the District Court’s decision that the claims of Regeneron’s patent-in-suit were unenforceable due to inequitable conduct in the patent’s procurement. In so doing the Court passed up the opportunity to consider whether the split panel’s decision was consistent with the Federal Circuit’s own inequitable conduct jurisprudence, most recently handed down en banc in Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). The Court also deigned not to consider for the first time in over 70 years a doctrine stemming directly from a trio of its own decisions (specifically, Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 250-51 (1944); Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945); and Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933)). Under the circumstances it is prudent for patent practitioners (prosecutors as well as litigators) to consider the lessons of the Federal Circuit’s Regeneron decision.

We have meanwhile learned that the Patent Trial and Appeal Board’s (PTAB) inter partes reviews (IPRs) filed by Comcast have helped Comcast “Get Two More TiVo Patents Invalidated,” to quote this headline from a new article that says:

The U.S. Patent Trial and Appeal Board has once again sided with Comcast in its intellectual property battle with TiVo, invalidating two more of the latter’s patents.

The patents include No. 9,172,987, “Methods and Systems for Updating Functionality of a Set-top Box Using Markup Language”; and No. 8,713,595, “Interactive Program Guide Systems and Processes.” (No. 9,172,987 was ruled invalid on Sept. 7, while No. 8,713,595 was invalidated in an earlier Aug. 27 ruling.)

35 U.S.C. § 101 makes patents like these “fake” (enshrined as patents but not deserving this status). Fake patents or abstract patents surface in press releases all the time (examples from yesterday [1, 2] courtesy of OneTrust) and crushing them one by one would be expensive, not just time-consuming. It would be better if such patents never got granted in the first place.

“It would be better if such patents never got granted in the first place.”In the following new example, the Federal Circuit “found that the claims are directed to the abstract idea of “locating and sending product information in response to a request”,” based on yesterday’s article from Patently-O (reaching the Court of Appeals for the Federal Circuit (CAFC) with a patent case is extremely expensive). To quote:

The Federal Circuit has issued its R.36 Affirmance Without Opinion in the eligibility dispute: Product Association Tech. v. Clique Media Group (Fed. Cir. 2018). In the case, C.D. Cal Judge Wu dismissed the case on the pleadings under R.12(b)(6) — finding that the claims of U.S. Patent 6,154,738 invalid as a matter of law on subject matter eligibility grounds. In particular, the court found that the claims are directed to the abstract idea of “locating and sending product information in response to a request” and fail to include anything beyond the excluded idea sufficient to transform the claims into a patent-eligible invention. I’ll note here that I believe the invention is the brain child of retired patent attorney Charles Call, and is part of a family of five patents.

Another new example from CAFC involved the typical Newman dissent and the following final decision, citing obviousness rather than prior art:

In a split decision, the Federal Circuit affirmed the district court’s holding that the ZUP Board patent claims were invalid as obvious under § 103(a) because a person of ordinary skill in the art would have had a motivation to combine the prior art references in the method it claimed and further held that the district court properly evaluated ZUP’s evidence of secondary considerations. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and Graham v. John Deere Co., 383 U.S. 1 (1966).

The Federal Circuit agreed with the district court’s conclusion that the ZUP Board patent merely identified known elements from prior patents (food bindings, handles etc.) and combined them. Further, the Federal Circuit agreed with the district court that ZUP’s purpose in so combining (helping riders maneuver between positions by focusing on rider stability) had been a longstanding goal of the prior patents – a goal predictably shared by many inventors in the industry. The Federal Circuit further concluded that because ZUP presented only minimal evidence of secondary considerations, ZUP did not “overcome” the strong showing of obviousness established by application of the other three Graham factors to the facts of the case. Chief Judge Prost authored the majority opinion that was joined by Judge Lourie.

As we said at the start, prior art seems like less urgent a matter and Google might give a false sense of prior art not existing. In our humble view, Google would be wiser to help examiners identify abstract patents and cut off the applicants as soon as possible. It would actually be a favour to applicants because nobody wants to brandish a patent (and potentially spend a lot of money on litigation) only to discover this patent is fake and rejected by courts at all levels.

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