How anyone can win an argument through analogy using PTAB big data

A distinguishing feature of a good patent practitioner is his or her ability to analogize or distinguish. But the usefulness of such analogizing/distinguishing is not limited to patent prosecutors. In fact, patent litigators are increasingly using ex parte appeals data in court with the same approach. 

First some context. Patent practitioners have long used a technique of analogizing to rules and case law to bolster their position. For example, a patent lawyer can use the universe of MPEP, case law or other USPTO guidance to point out that an examiner’s rejection is improper. A problem with this is that there is only finite hours to spend to sift through the thousands of pages of such resources for such analogizing information. This is where help from big data comes in. 

Ex parte PTAB appeals data can help patent practitioners analogize to overcome a particular rejection. With Anticipat Research, a savvy practitioner can simply input an examiner name, art unit or technology class of interest, along with the rejection type, filter for all reversals, and then quickly distill which argumentation and case law the Board found persuasive in overturning an application’s current rejection. 

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Board panels often analogize favorable case law and distinguish unfavorable case law, specific to the present claims. With the structure presented, the practitioner can piggy-back off of this work.

Of course, just as reversals can be helpful for those seeking to overturn a particular rejection, so can affirmances be used on the other side of patent prosecution. An examiner can use Anticipat to easily find supporting argumentation and case law that supports his or her position by locating similar decisions where the PTAB affirmed a particular rejection. 

Analogizing using this kind of patent prosecution data (ex parte appeals) predictably flows for patent prosecution responses (Office Action responses, appeal briefs) because both the data and the responses are integrally rooted in patent prosecution. But the use case can extend in an even less intuitive way: to patent litigation. 

For patents that some say should never have been granted in the first place, a patent litigator can use ex parte appeals affirmance data to quickly find argumentation and case law for invalidating a patent. Take a broadly claimed software patent allowed in an era pre-Alice. Actually, take one of the Alice patents that the Supreme Court held was invalid. 

aliceAny issued patent (including the above patent) will have an examiner, an art unit, and a technology class. One can simply input any of that patent’s metadata (e.g., technology class, examiner, art unit, technology center) into the Anticipat engine and filter for affirmances and you instantly have very recently decided cases where the Board applied relevant case law for this particular technology.

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So rather than keeping current on all Section 101 case law across all technologies (GUIs, business methods, algorithms, diagnostics, etc.), a practitioner can simply use effectively proven outcomes in related applications. Some discretion will be needed to see whether the Board decision claims are similar to the claims of interest (to be analogized to), but Anticipat gets you close to the needed resources at your disposal.

Big patent data is incredibly useful in finding the best and most persuasive course of action to advance your particular case. This applies to the patent prosecutor, the examiner and the patent litigator. Sign up for a 14-day free trial and see for yourself. 

 

If Congress does not act on Section 101, has the PTAB hinted at a path forward?

A recent blog post by IPWatchdog recapped specific consensus views at the Patent Masters Symposium™ where Congress can help fix the messy state of patent-eligibility at the USPTO. Getting Congress involved seems like the best way to stabilize and make patent-eligibility more predictable. But if patent reform loses steam on Capitol Hill, it working with the current law is critical. Recent developments at the PTAB show most effective arguments (Step 2A or Step 1 of Alice/Mayo) to argue against patent-ineligibility. 

Last week, we published updated data of appeal outcomes for abstract idea rejections in April 2019. Now we delve into one of the more interesting trends for these reversals since the 2019 revised Subject Matter Guidance. This is the growing disparity of PTAB panels relying on step 2A (Step 1 of Alice/Mayo) versus step 2B (Step 2 of Alice/Mayo).  

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As can be seen from the graph below, starting in January, the number of decisions reversing abstract idea rejections increasingly rely on Step 2A compared with Step 2B. The past couple months of March and April has been particularly noticeable. March had 61 Step 2A such decisions compared with 15 Step 2B decisions. April was even more stark with 46 Step 2A reversals and only 4 Step 2B reversals. This is at least partially due to the courts constantly struggling to make sense of Alice and Mayo’s definition of “inventive concept”. It appears that for those decisions where the Board reverses, Step 2B (including the Berkheimer/Aatrix requiremen for evidentiary support for conventionality) has become a forgotten approach for many panels.

As the USPTO has struggled to reconcile the confusion about an inventive concept (Step 2B), the actual analysis of the step has recently veered into Step 2A. As most US patent practitioners are aware, the 2019 guidelines have split the Step 2A analysis for abstract ideas into two prongs. The first prong asks: do the claims recite one of three groupings of abstract ideas (mathematical relationships, mental processes, or methods of organizing human behavior). The second prong asks whether the claim is directed to a practical application of the judicial exception. Exemplary considerations are as follows:

  1. an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
  2. an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  3. an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
  4. an additional element effects a transformation or reduction of a particular article to a different state or thing; and
  5. an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

 Confusingly, above point 1 was explicitly analyzed in the Alice Supreme Court decision in Step 2 (Step 2B). This shows signs that the search for the inventive concept at the USPTO is now happening at Step 2A and Step 2B. This is not too surprising to those following subsequent Federal Circuit case law. But knowing the specific arguments that are successful, it can be helpful to press the right inventive concept buttons early in the argumentation.  

Before getting into how recent Board decisions overturn abstract idea rejections, some context is helpful. Indeed, much of the confusion about the inventive concept is historical. When the Supreme Court decided Parker v. Flook (an appealed Board decision by the way), a split Court found that the claim for adjusting alarm limits was a patent-ineligible abstract idea under Section 101. It states that what was needed was an inventive concept for patent-eligibility. The majority ignored arguments that other statutory provisions should address concerns the Court had over the patent application.

A few years later, a split Supreme Court in Diamond v. Diehr (another appealed Board decision) reversed course. The majority held that the rubber-curing claim was a practical application of a known mathematical equation and was therefore patent-eligible. In a footnote, the majority rebutted the dissent by saying that Section 101 is not the vehicle for inventiveness. It seemed like Diehr had overturned at least the inventiveness dicta of Flook.

Years later the Supreme Court in Mayo reversed course yet again. In invalidating a claim as directed to a law of nature, the Court introduced a two-step framework for determining patent-eligibility under Section 101. Step 2 of this framework was the inventive concept under Flook. A couple years later, Alice cemented the Mayo framework for computer-implemented claims.

How can this information be helpful in guiding your personal prosecution strategy? For one, this can help you identify winning strategies for overturning Examiners during open prosecution of an application. The Examiner or SPE will know about any of his/her recent reversals on a particular abstract idea rejection, and using argumentation that is consistent with this Board panel’s reversal can resonate with the Examiner or supervisor (especially if the decided claim has some similarities to your claim).

Consider a case where the Board recently overturned an abstract idea rejection Ex parte Dearing et al (PTAB June 27, 2019). If you are facing abstract rejections with Examiner Dante Ravetti, or in art unit 3685, or even have a business method application in general, it could be helpful to see the arguments used in both Step 2A and Step 2B in overturning this abstract idea rejection. Likewise, if you’re hitting headwind prosecute abstract idea rejections with Examiner John Chunyang Kuan, you could look at the argumentation in a recently decided decision Ex Parte Hunter et al. (PTAB June 27, 2019). This decision shows arguments for Step 2A that were sufficient to overturn the rejection in computer art unit 2857. 

The other way this data can be helpful relates to appeal strategy. If an Examiner or supervisor is unconvinced of your arguments, tailoring argumentation that has been used by PTAB judges overseeing similar technology or art units will more likely set you up for a favorable outcome on appeal. 

By using Anticipat Research, you can easily find those cases that have been reversed in your technology class, by your examiner, the art unit, or technology center. You can then model argumentation to your present case, if applicable. While you can find this information for any type of rejection (102, 103, 112, OTDP, etc.), Section 101 is a powerful breakdown because you can drill into the subissues of judicial exceptions and filter away the other Section 101 rejections not relevant to your rejection.  

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In times of flux, it is great to push for change and progress. But in the meantime, having the best patent prosecution data can dramatically improve your advocacy and ability to show patent-eligibility.