Bonum Certa Men Certa

With PTAB's Growing Role in Assessing Patent Applications, Pursuing Software Patents is a Dangerous Gamble

An unseen Hawaii



Summary: With €§ 101 increasingly being enforced by PTAB both before and after a patent grant -- as recent trends serve to suggest -- the whole strategy of pursuing low-quality software patents in high quantities looks like a misguided one

THE Patent Trial & Appeal Board (PTAB), which improves patent quality at the USPTO, is loathed by patent maximalists. Low-quality patents mean business to them; more lawsuits, more applications, more threatening letters to dispatch and so on...



Scott McKeown, writing for his firm of patent maximalists, is cherry-picking PTAB cases in an attempt to influence Oil States and sabotage PTAB. Watch his 5 picks and how these relate to Oil States:

With so much attention being paid to Oil States, it was easy to lose sight of many of the more noteworthy Patent Trial & Appeal Board (PTAB) related decisions of 2017. Last year brought significant feedback from both the Federal Circuit and Board on a number important aspects of administrative trial practice. From important issues of appellate standing, the use of ancillary petition art, to a crack down on follow-on petitions and recycled prior art, both the Board and Federal Circuit delivered a host of critical clarifications.


The reality of the matter is, the Federal Circuit continues to agree with the Board and almost always rejected software patents last year. 2017 was a nightmare year for patent maximalists, so these people (like Scott McKeown) now pray for Oil States to cause PTAB to collapse. But worry not, that won't happen. Their lobby is losing momentum and Watchtroll, for example, barely managed to squeeze out any anti-PTAB articles this past week. Watchtroll wrote about thwarting PTAB IPRs a few days ago, but that's about it.

Other PTAB bashers, like those who are connected to literal patent trolls, ranted a little less than usual. "Once again," this one said, Section "101 rulings PANEL SPECIFIC at PTAB: "Claim 6 explicitly recites “an engine including an exhaust gas conduit"... reasoning used to determine that the claimed subject matter...excepted from patent eligibility under €§ 101 is therefore inadequate https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016006129-02-16-2018-1 …"

Chalk up another win for €§ 101.

Then there's the PTAB case of Exxon (a mere application). Section 101/Alice ended it. To quote another PTAB basher: "PTAB Reversed Examiner's 101/Alice Rejection of Exxon Patent Application Claims: [...] (1/2) Reversal by PTAB of Examiner's 101 Rejection in Exxon Shows Internal USPTO Dispute--Can an improvement in an algorithm satisfy step 2 of Alice or...: https://storage.googleapis.com/pbf-prod/pdfs/2018-02-13_14484603_176360.pdf [...] (2/2)...Must the improvement be in the CPU; Algorithm improvements don't count in an Alice analysis."

So again it just goes "poof!"

Arendi v Google is another such example. PTAB is doing very well against such software/abstract/baseless patents and from the decision we learn that "the PTAB found that Goodhand shows all of claim 1’s limitations, when giving effect to the prosecution disclaimer and limiting the scope of the “single entry” command. This finding is supported by substantial evidence. On the PTAB’s findings, the alternative conclusion of unpatentability on the ground of obviousness in view of Goodhand is sustained."

Here's how Patently-O covered it:

In its petition for inter partes review (IPR), Google argued the obviousness of all 79 claims of Arendi’s of U.S. Patent No. 6,323,853. The PTAB granted the petition (acting on behalf of the PTO Director) and issued a final decision cancelling the claims. In its decision, the PTAB followed a common district court practice of issuing alternative reasons for its judgment – holding that (1) its preferred broad claim construction rendered the claims invalid; but (2) the claims would still be invalid under a more narrow construction. On appeal, the Federal Circuit disagreed with the broad construction, but agreed with the alternative reasoning – thus affirming the obviousness holding.


This is noteworthy because it's "PRECEDENTIAL", as noted here. Another person (more moderate than all the above) wrote: "Arendi v Google FedCir 2/20/18 PTAB erred by not considering applicant's prosecution disclaimer BUT PTAB correctly rejected as obvious claims to method of "single command" information handling under its alternative, more limited (correct) construction recognizing the disclaimer.

Going back to the angry person, here's another example of Section 101 in action: "Infineon loses at USPTO under 101 because claim "when interpreted under the broadest reasonable interpretation, is capable of being performed “mentally” or “with pencil and paper,” https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017008563-02-13-2018-1 … suggesting that all autonomous vehicle patents are void bc people can drive..."

"They are correct," I told him. "Autonomous driving means software, and thus software patents. I say this as one who actually developed programs to do this..."

It's interesting that the "pencil and paper” analogy was resurrected there. A revived trend?

Here's a long new article dealing with an older case where PTAB let a software patent be. These people cling pretty hard onto exceptions. The "patent application was inevitably assigned to the dreaded USPTO Technology Center 3600," it says, "home to the e-commerce art units, and was destined for certain death following the Supreme Court’s June 2014 decision in Alice Corp. v. CLS Bank Int'l."

Here it is with some additional background:

In 2012, a fledgling startup, AdSupply Inc., filed a patent application for a method for delivering leave behind ads which are displayed behind the browser window when a user leaves a website. These ads are considered to be one of the most effective ad formats for high viewability and user engagement (5x higher than interstitials and overlays), as they do not interrupt the user’s online experience. An example of a leave behind ad can be viewed here.

The patent application was inevitably assigned to the dreaded USPTO Technology Center 3600, home to the e-commerce art units, and was destined for certain death following the Supreme Court’s June 2014 decision in Alice Corp. v. CLS Bank Int'l. Predictably, the patent examiner rejected the patent claims under 35 U.S.C. 101 “for being directed to an abstract idea of (i) a fundamental economic practice, (ii) a method of organizing human activities, (iii) an idea of itself, or (iv) a mathematical relationship or formula.” Despite the Applicant’s insistence that the patent claims were patent eligible, the patent examiner rejected them repeatedly. Confident in patent-eligibility of their claims, the Applicant appealed the patent examiner’s rejection to the Patent Trial and Appeal Board (PTAB) (Appeal No. 2016-000497; PTAB October 15, 2015) and in Ex parte Adam Carasso, the PTAB reversed the patent examiner’s rejection under 35 U.S.C. 101. The patent was issued on January 25, 2018.


Notice that this 'case' was about a mere application. If this is the kind of thing the patent maximalists are celebrating, then they must be pretty hopeless. This same patent, if/once assessed by a court, can be invalidated.

There were also a couple of new articles about 35 U.S.C. €§€§ 102 and 103 (not just €§ 101).

Mike McCandlish noted that the "Federal Circuit held a distribution agreement including transfer of title to the distributor and exclusivity in the United States for three years to be an “offer for sale” under the on-sale bar.

"In The Medicines Company v. Hospira, Inc., (Fed. Cir. Feb. 6, 2018) the Medicines Company (MedCo) appealed findings of no infringement made by the U. S. District Court for the District of Delaware. Hospira cross-appealed the district court’s finding that a distribution agreement did not constitute an invalidating “offer for sale” under 35 U.S.C. €§102(b)."

In Blacoh Fluid Controls, Inc. v Syrinix, Inc., as the Docket Navigator noted a few days ago, a "court granted defendant's motion to stay pending its petition for inter partes review because the potential simplification of issues and lack of undue prejudice favored a stay."

The bottom line is, the past week lacked much opposition to PTAB. Even PTAB haters didn't have much to say. In the interim, quite a few software patents got rejected, some of them before they even became patents (axed at the examination stage).

Recent Techrights' Posts

WebProNews is a Slopfarm
Please avoid linking to WebProNews
Another "Told You So!": XBox Mass Layoffs at Microsoft (Many Recent Reports Were Chaff and Spin), Many Other Divisions Affected
With mass layoffs at Microsoft the world would be much better
When the Microsoft Aggressors Rely on Several Law Firms ('Attack Dogs', 'Guns for Hire'), Not Just One, Lawyering Up Against Techrights (Acting on Behalf of Americans Against UK Publishers)
From serving customers at some restaurant he has moved on to bullying people with demand letters
Polygamy, from Catholic Synod on Synodality to Social Control Media & Debian CyberPolygamy
Reprinted with permission from Daniel Pocock
Only a Third of or 1 in 3 Web-Connected Devices is a Desktop or Laptop, According to statCounter
we can expect Android to widen its lead
 
Moral Duty for "Linux Sites" to Speak Out Against LLM Slop
My wife has long complained about "Linux bloggers" keeping quiet and thus passive about a growing problem: slop
In Recent Hours Google News Promoted at Least 3 Slopfarms That Relayed Linux Foundation Propaganda Made by Bots or LLM "Bullshit Generators" (as Dr. Stallman Dubbed Them)
Google is circling down the drain and Google News too is hopeless
Linux Journal is a Slopfarm, It's Experimenting With LLM 'Authors'
Is Slashdot next?
Microsoft LinkedIn is Dying and Many More Layoffs Are on the Way
LinkedIn is just a failed acquisition of Microsoft. It causes losses and debt.
Gemini Links 25/06/2025: Combinatorial Music and Self Hosting
Links for the day
Richard Stallman Coming Back to Europe This Autumn to Give More Talks
His last talk in Europe attracted about 400-450 people
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Tuesday, June 24, 2025
IRC logs for Tuesday, June 24, 2025
Social Control Media, Technology & Catholicism: Synod on Synodality review and feedback
Reprinted with permission from Daniel Pocock
How Many More Women Will Managers at Microsoft Strangle and Tell to Kill Themselves (or Try to Kill)?
The world needs to know what happened
The New BetaNews: 7 New 'Articles', All of Them LLM Slop
BetaNews is basically defunct. Nobody writes there anymore.
statCounter Estimates Only 1 in 300 Iranians Would Use Microsoft for Search
Iranians don't quite trust Microsoft
Gemini Links 24/06/2025: ftpd on FreeBSD and Online Small Web Magazine
Links for the day
Google News Does Great Harm by Promoting Slopfarms as Legitimate News Sites
Slopfarms are sites which are 100% LLM slop
Links 24/06/2025: Trouble at "Open" "AI" and ‘Siarhei is Free’
Links for the day
Gemini Links 24/06/2025: Stimulants and Subscription Costs for DRM
Links for the day
Links 24/06/2025: OpenAI [sic] May Soon Die (Too Much Debt) and Social Control Media Accused of Being Misinformation/Disinformation/Propaganda Amplifier
Links for the day
Nirbheek Chauhan in Planet GNOME Explains Why Wayland Pushers Are Losing
"A strange game. The only winning move is not to play."
The Days Are Getting Shorter, the First Half of 2025 is Almost Over
We're gratified to see significant increase in traffic and also positive feedback on the work we do
Turning GNU/Linux Into a Political Football
X (not the site) is Free software
X Server Still Works for Many People
A lot of people will grow suspicious of Wayland boosters/pushers if they persist and insist on using these tactics
Exactly a Week Ago "BetaNews Staff" Said "Betanews Is Growing Alongside You". Since Then Every Article (All by "Camila Nogueira") Has Been LLM Slop.
BetaNews is basically a slopfarm
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Monday, June 23, 2025
IRC logs for Monday, June 23, 2025
The "Tarzan Effect" in Compilers and Software
What happens when you forcibly make things 'work', either by hacks or by disregarding warnings (like those that compilers tend to issue)?
Gemini Links 23/06/2025: Mass Tourism, Hair Love, and Google Gemini as a Googlebomb
Links for the day
Law Firm Burgess Mee Does Not Fully Deny Participating in Abusive Litigation for Serial Strangler From Microsoft
I am not unfamiliar with these tactics
The Modus Operandi of Wayland Pushers: Make It Political
do what I say or you're a nazi...
Links 23/06/2025: RFE/RL Contributor Vladyslav Yesypenko Released, Recording Industry Cutbacks
Links for the day
Brett Wilson LLP Solicitors (M): Over 99.9% of Our E-mail is Self-Marketing, We Send You 3.5MB E-mails for Less Than 1KB of Text
Why would tech people entrust legal matters to such people?
Peter Moon's (Computerworld) Interview With Richard Stallman
Stallman: If you want freedom don't follow Linus Torvalds
At What Point Does Outsourcing Constitute Malpractice?
Brett Wilson LLP's new staff page is misleading
United Arab Emirates (UAE) Sailing to GNU/Linux, According to statCounter
countries in that region will quickly learn the price of neglecting digital sovereignty
From Do Your Own Research to Do Your Own Search
The Web is full of garbage; search engines amplify this garbage
More People Moving to Geminispace?
at age 6+ Gemini Protocol seems to have gained some maturity and it seems like more people use it
Permutation in LLMs Does, Inevitably, Change Meanings and Therefore LLMs Cannot Properly Rephrase or Summarise Texts
LLMs lack actual grasp or comprehension of what they spew out
Links 23/06/2025: Many Security Breaches, Population Declines
Links for the day
Gemini Links 23/06/2025: "America at the Crossroads" and OpenWRT Surgery
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Sunday, June 22, 2025
IRC logs for Sunday, June 22, 2025
Pure Dove
Different means different, and sometimes those who "deviate" from "the norm" have a point
Censorship is a Sign of Weakness Which Invites More Censorship Attempts
revolutionaries don't succumb to pressure from bullies
Why It's Unlikely That LLM Slop Will Dominate the Web in the Long Run
Slopfarms will eventually perish (they have no actual value) and "survivors" on the Web will be sites that never depended on search engines and social control media
GNU/Linux in Argentina Now Measured Near 5%
Like in central Europe, they must be seeing an increasingly hostile US
BetaNews is Fake News, Composed by LLM Slop
nothing in BetaNews is written by humans anymore