Update: These firms overturn abstract idea (Alice) rejections on appeal at PTAB

(Update: Kilpatrick was previously reported as having 4 reversals; in fact, it has 7)

A previous post showcased firms that successfully appeal abstract idea rejections at the PTAB. In that post, two firms stood out as clear leaders in overcoming the most difficult ground of rejection on appeal, Section 101 abstract idea. These firms were Schwegman Lundberg Woessner and Morgan Lewis. Five months later, we update the top firms to now add Kilpatrick Townsend and provide additional context of how many appeals it took to get there, with the aid of a recently introduced Customer Number lookup functionality.

Total Reversals for Abstract Idea Rejections (Numerator)

In an almost 2-year span post-Alice (July 25, 2016-April 30, 2018), there were 189 reversed abstract idea rejections on appeal at the PTAB. Of these, three firms–Schwegman, Morgan Lewis and Kilpatrick Townsend–were responsible for 11% of these reversals, with 7 reversals each. This is far ahead of the rest of firms. For context, the next closest firm had 3 abstract idea reversals on appeal. We discuss each of these three firms in more detail.

Total Abstract Idea Appeals (Denominator)

The first firm, Schwegman, took 42 abstract idea appeals to get its 7 reversals. This means that the reverse rate is 17%. This is a higher rate (more successful) than the average reverse rates for abstract ideas. From a comparison to other big patent firms, Schwegman pursues appeals for abstract idea rejections a lot more by a long shot. For comparison, during this window Knobbe Martens had 6 total abstract idea appeal decisions; and Fish & Richardson and Finnegan each had 19 total abstract idea appeal decisions.

But even with a more aggressive appeal strategy, Schwegman still maintains a higher-than-average reversal rate. And from the 204 total appealed decisions, almost a quarter have an abstract idea rejection. This suggests that a focus of the overall appeals includes in abstract idea rejections. Here is the firm’s information filters on the Anticipat Research page and the link to the Schwegman-filtered page here

schwegman

The second firm, Morgan Lewis, took far fewer appeals to get to its 7 reversals. It only appealed eight cases to get seven reversals. This translates into a reversal rate of 88% for abstract idea rejections. For a firm as big as Morgan Lewis, having only eight abstract idea appealed decisions is low compared to firms that are comparable in number of applications: Schwegman, Finnegan, Fish, Kilpatrick and Knobbe.

The overall number of appeals for Morgan Lewis during this time period is 52. This suggests that Morgan Lewis is conservative in pursuing ex parte appeals–not only for abstract idea rejections but in general. But when Morgan Lewis does proceed to appeal with a case (at least for Section 101 abstract idea rejections), it is very good at overturning such rejections. Again, the Research page and the Morgan Lewis-filtered Research page here.

morganlewis

The third firm, Kilpatrick, took 40 abstract idea rejections to get to its 7 reversals. This reversal rate of 18% is slightly above average, suggesting that Kilpatrick aggressively pursues appeals for this type of rejection. From 170 total appeals during that time period, it shows that abstract ideas make up a sizable part of the appealed rejections.  Kilpatrick Townsend-filtered Research page here.

kilpatrick

Conclusion

Each firm should be commended on the high number of abstract idea reversals. With such a difficult rejection, these firms are showing that one avenue of overcoming the rejection is by going straight to the Board for relief.

Context is extremely important for these statistics. Just because a particular firm has a higher reversal rate than another firm does not necessarily mean that the higher reversal rate firm is better. Perhaps the lower reversal rate firm is taking on more difficult cases. Perhaps the lower reversal rate firm had victories earlier in prosecution (like at the pre-appeal conference or appeal conference or even by responding to an Office Action) that are not counted in these statistics. But these statistics do show that when the Examiner conferees believe that an abstract idea rejection is proper, these firms know how to pursue a favorable outcome for their clients.

With a user account to Anticipat (sign up here for a free trial), you can lookup the above-discussed listing of reversed abstract idea decisions using the following links.

 

 

 

 

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