Get fresh ex parte PTAB decisions delivered to your inbox

For those who like to stay current on the latest appeals decided by the PTAB, we have good news. Anticipat Email Recap just rolled out a major new feature. Now, rather than waiting for a particular decision date to be populated, you can get all the organized and curated decisions from the previous day delivered right when you start off the day.

For some time, the USPTO published their appeals decisions in a somewhat reliable and timely manner. We could delivery recaps based on decision date, with some sort of a lag. But as the lag time grew larger and larger, much of the value of having these emails diminished. Now, you can see every decision that was published on efoia webpage–a less than 24 hour turnaround time.

For those interested in recap covering longer spans of time, we have built in that functionality preference.

You can also apply a filter for only decisions that meet a certain criteria, e.g., from a particular art unit, examiner, issue type, outcome. This can minimize emails that aren’t relevant to you or your practice.

As many are aware, our world has too much information. We’d like to help you get the most value out of PTAB appeal decisions. Give the new fresh recap a try here: https://anticipat.com/accounts/signup/research/

The PTAB sets Another Record for Reversing Abstract Idea Rejections

On April 30, 2019, a customer partnership meeting took place between the USPTO Technology Centers 3600 and 3700 and American Intellectual Property Law Association (AIPLA). The topics for this meeting varied widely (e.g., a training on functional claim drafting and a training on means-plus-function limitations in medical device claims). But for this meeting in these tech centers, the elephant in the room was Section 101, which Paul Kitch covered. Here we provide updated data on how the revised guidance continues to drive record-setting reversals for abstract idea rejections at the Board. We also show that these reversal rates are unevenly distributed throughout the tech centers, especially in tech centers 3600 and 3700.

March 2019 saw the PTAB break another record for total abstract idea rejections reversed. We previously reported that February broke the record with 62 total reversals, but we predicted that this record should not last long. This post turned out to be particularly prescient. In March 2019, the PTAB wholly reversed 77 decisions, exceeding the previous record-holding month by 15.

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Besides the total number of reversals, the PTAB also maintained a high reversal rate. That is, about 33%, or one in three abstract idea rejections were reversed.

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We’re also seeing that Step 1 is becoming the main way in which PTAB panels overturn Examiner abstract idea rejections. In March, 61 decisions relied on Step 1 of the Alice/Mayo framework (Step 2A of the USPTO vernacular) while only 15 relied on Step 2 (Step 2B).

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How does these reversals and reversal rates relate specifically to tech centers 3600 and 3700? With tech center 3600 being the home of many business method art units, one would correctly assume lower reversal rates. Since December 2018 – March 2019, 134 out of 520 decisions were wholly reversed, yielding a reversal rate of 26%. Tech center 3700, home to mechanical and medical device tech, had 23 such reversals out of 47 total, yielding a reversal rate of 50%. The tech centers with the highest rates turned out to be tech center 2100 (27/43 = 63%), home to electrical and computer tech, followed by tech center 2400 (14/26= 54%), home also to electrical and computer tech. 

The abstract idea reversals should continue for several months as applications that have been on appeal wait their turn before the Board. But as applications further upstream (e.g., appeal conference, pre-appeal conference and before the Examiner) are increasingly getting allowed, expect the reversals to return to earth. Especially when Federal Circuit decisions such as Athena v. Mayo (Fed. Cir. Feb. 2019) are pushing back on how valid allowed claims (inspired by USPTO guidance and examples) really are in the real world, .

 

Updated February ex parte decisions show Alice-based rejections getting overturned at a dizzying rate

For the past year, the PTAB has increasingly reversed so-called abstract idea rejections (Alice). But in recent months, the pace of these reversals has been nothing short of remarkable. Here, we report updated February numbers, which show the PTAB continuing to overturn abstract ideas at an unprecedented rate. We also look more deeply into how these rejections are getting overturned. It turns out the Board is increasingly relying on step 2A (Step 1 of Alice/Mayo) thanks to new guidance that makes it more difficult for an examiner’s rejection to hold.

As we recently reported on Patexia, the new examination guidance (effective early January) has fueled reversals at the Board. Now, with increased numbers for February 2019, this effect can now be seen much more dramatically.
reversalratefebup

In February, there were 61 completely reversed decisions from a total 149 such rejections. This yields an astonishing 41% reversal rate. This is of course astonishing by standards of Section 101 judicial exceptions. We have long reported that many grounds of rejection are overturned by the PTAB (such as Section 112 and Section 102) at even higher rates. But even just over a year ago, the PTAB routinely sided with examiners on abstract idea grounds upwards of 90% of the time. Now the climate is completely different.

Notable changes in reversal rates can be seen from the color-coded timeline events in the graph above. Red refers to when Berkheimer and similar Federal Circuit decisions were decided, which put a higher evidentiary standard on showing that claims did not recite an “inventive concept.” With a little lag, the reversal rate ticked up. Then in the fall of 2018, Director Andrei Iancu started more actively promoting better (more consistent) Section 101 examination, eventually resulting in new 101 Examination guidance shown by the yellow line. The PTAB appears to quickly adapt to case law, guidance and internal cultural changes.

And these results do not appear to be from a sample size distortion (because applicants have already given up). while the total number of abstract idea rejections decided did not reach months seen last year, this is likely due to the PTAB picking up the new year on a slow note, which is historically the case. In fact, February 2019 saw the Board decide more abstract idea rejections than February 2018. See below. And even with the total number of decisions deciding abstract idea grounds of rejections being lower than prior months, it still set a record in the total number of such reversals (61) breaking the previous record of December 2018 (58).

totalabstractreversalsfebup

How is the PTAB overturning these rejections? Thankfully, the Anticipat research database makes this question easy to answer, cataloging the specific rationale (tag) that is used in overcoming the rejections. As shown from the following graph, Step 1 (which the USPTO refers to as Step 2A) has now separated itself from Step 2.

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A good practitioner will tell you that thanks to the new Section 101 guidance and other case law developments, it is now easier to overcome Abstract Idea rejections. These Board decisions directly show this at the final stage, but results can also be felt farther upstream of these decisions. 

Like many USPTO personnel, PTAB judges are quota-motivated. Because of this, end of quarters typically have higher output of decisions. For this reason, expect March 2019 to be a big month in the volume of abstract idea rejections decided and in the total number of reversals. If history is any indication, we could be looking at another record month.

PTAB’s Abstract Idea Reversal Rate Surges in January after New Examiner Guidance Takes Effect

At last week’s Utah IP Summit (and subsequently published in a post at IPWatchdog), Gene Quinn squarely blamed the Federal Circuit for the “101 crisis”. And his point is hard to ignore as many divided Federal Circuit panels seem unwilling to distinguish Alice and Mayo even in the face of strong dissents that would. As much as Director Iancu would like to move the needle of patent-eligibility in a more straightforward and predictable way, the USPTO is bound by these majority Federal Circuit panels–not strong dissents. But the PTAB seems to be quietly listening to all the buzz, being more willing to reverse abstract idea rejections under Section 101 than ever before.

The new subject-matter eligibility guidelines took effect in early January 2019 and almost immediately Board panels started citing to the guidelines in their analysis. The result on reversals was profound. Of 91 total abstract idea decisions, the Board completely reversed 32. This is an astounding 35% reversal rate, a rate not seen in two years, which saw a significantly lower sample size than January 2019.

revisedreversalrate

While the reversal rate for January 2019 was dramatic, it is too early to tell whether this high of a reversal rate will continue, especially with the lower-than-expected total number of abstract idea decisions. While 91 such total decisions is not paltry, such a low number has not been seen since last February. This is not completely unexpected as the PTAB typically starts out the calendar year slow. But the next couple months will be insightful to see whether the high reversal rate continues even with a higher volume of abstract idea appeals being decided.

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The PTAB (previously BPAI) has a rich history in shaping patent-eligibility. The Supreme Court case Diamond v. Diehr moved the 101 needle in finding an algorithm claim to be patent-eligible because of its practical application to curing rubber. This decision originally stemmed from the CCPA (predecessor to the Fed circuit) reversing a Board decision that affirmed the Examiner’s 101 rejection. Another Supreme Court decision, Diamond v. Chakrabarty, paved the way for patenting man-made genetically-modified living organisms. This decision also stemmed from a Board rejection of the claims under 101, with the CCPA again reversing the Board’s affirmance of the examiner’s 101 rejection. 

Expect the PTAB to continue to reverse improper Section 101 rejections as it has a tail wind at its back. This could benefit the entire patent bar at least for predictability sake. Just by virtue of the Board deciding a more diverse set of applications than courts, there are more shades of gray to work with. And some of these gray cases can be good candidates for testing the proper boundaries of what is patent-eligible. Even if the Board affirms the rejections as patent-ineligible, appeals that go higher up could help give the Federal Circuit (like its CCPA predecessor) a chance of redeeming itself as the 101 conundrum culprit.

December 2018: PTAB Records Highest Total Number of Abstract Idea (Alice) Reversals

The PTAB continues to decide a large number of Alice-based (Section 101 – patent-ineligible subject matter) decisions. December continues both the large number of abstract idea reversals and the high reversal rate, compared to previous months. Expect the appellant-friendly trend to continue with revised USPTO Examiner Guidance, which the PTAB is bound to follow.

December 2018 showed two interesting data points. First, the total number of abstract idea reversals was record-setting. For context, the previous record number of such reversals was in November 2018 with 42. In December, the PTAB quietly crushed this previous record of reversed abstract idea rejections with 58 total such reversals. It was a quiet crushing because the holidays and end-of-year logistics at the USPTO resulted in a long lag-time for decisions to finally publish.

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Second, the total reversal rate for these rejections was very high as well. We previously reported that in November 2018, the PTAB hit an abstract idea reversal rate of 20%, which it had not done in quite some time. December continued November’s high reversal rate trend with 58 complete reversals out of 232 total abstract idea decisions, yielding a reversal rate of 25%. The last time the PTAB saw two consecutive months with such a high reversal rate was two years ago. The obvious difference is that two years ago saw much fewer abstract idea appeal decisions.

On January 7, 2019, the USPTO put into effect Examiner Guidance that looks to make it more difficult for Examiners to maintain abstract idea rejections. We have already seen many reversals citing to this Guidance. See below screenshot from Anticipat’s Research Database.

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More on this in a follow-up post. Expect in the coming months abstract idea rejections to continue to be reversed at higher rates and at a higher volume.

 

Backlog for PTAB ex parte appeals reverses course, up across almost all tech centers

While Chief Judge of the PTAB, David Ruschke took pride in the PTAB’s work in reducing the backlog of ex parte appeals. And for good reason. As we previously reported, the historically long backlog for appeals plunged during his leadership. But since Ruschke stepped down from his position, the backlog has been going back up.

The USPTO recently released the December 2018 ex parte statistics, showing some significant changes in appeal backlog from the previous year.

As can be seen, almost every tech center experienced an increase in the pendency of decided appeals from the prior year. The two exceptions are 3600, home to business methods and software-related tech, and 3700, home to medical devices and mechanical tech. Looking at similar graphs of previous months, there are a few ways to interpret these data.

The first interpretation for the overall backlog increase is that PTAB judges are focusing their production work less on ex parte appeals. Assuming the number of judges has not considerably changed across tech centers, we can see the production difference most apparently in the number of total decisions. In 2017, there were about 11,899 ex parte appeal decisions whereas in 2018, there have been 8,928 to date. One caveat to the 2018 numbers is that as of January 16, 2019 the USPTO is still delayed in rolling out all of December 2018’s decisions. But the total number for 2018 should only shift upward by a few hundred decisions at most. This means that 2018 saw judges deciding fewer appeal decisions than in 2017.

We may assume that the impressive backlog reduction under Ruschke was the exception rather than a sustainable norm. With the ramping up of hiring PTAB judges to accommodate post-grant trials involved training new PTAB judges, which required a period of judges to work on ex parte appeals. Speculating, the PTAB may have seen fit to shift priorities, especially with the ex parte appeal backlogs at historic lows. In August of 2018, Scott R. Boalick became acting chief judge after Ruschke stepped down to become a special adviser to the USPTO patent division. It is unclear whether Boalick has the same enthusiasm for reducing backlog as Ruschke or whether he is interested in other issues, such as quality of decisions.

Further, the change in backlog may be the simple result of monthly fluctuations. But going back to previous months, some tech centers do not seem like a flash in the pan. For example, tech center 1600 increased a significant 4 months each of the three months, fundamental examination disputes being appealed specific to the technology in these tech centers might be at issue. An increase of pendency of decided appeals can be the result of increased appeals. This can indicate a measure of perceived unreasonableness by Examiner rejections assuming applicants appeal at a greater frequency with more unreasonable rejections. What exactly is the specific reason for this consistently higher backlog in TC1600? It’s unclear. It could stem from great uncertainty regarding subject matter eligibility in the diagnostics space.

Another tech center with a skyrocketed backlog is 2900, home of design patent applications. This was consistently and significantly higher for three consecutive months including December 2018. True, the sample size for design appeals is much smaller than other tech centers so the much higher standard deviation contributes to increased flux. See below.

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But at the same token there could be grounds of rejection specific to design applications that are getting appealed. The trickiness here is that since design applications are not published, the e-Foia page does not publish these appealed decisions so Anticipat currently does not keep track of them.

One tech center that consistently continued to decrease its backlog was 3600, home of software/business method applications. At a current backlog of 17 months, it makes the strategy to pursue an appeal ever more appealing, especially in the face of difficult rejections with no progress with the examiner in sight. Knowing the backlogs in real-time for an application you are pursuing can arm you with the information you need to make the best patent prosecution decision.

November 2018 PTAB Appeal Decisions: Record Number of Abstract Idea Reversals, Reversal Rate Dramatically Increases

Ever since a slew of Federal circuit decisions in early 2018, we predicted that many abstract idea rejections would be reversed by the PTAB to comply with the case law. This did not immediately come to pass, as we pointed out. But our prediction has turned out to be prophetic, even if it took longer than predicted. We report here that the PTAB continues its trend of overturning these types of rejections on appeal. In November, it was relatively dramatic, given the high number of abstract idea appeals decided.

First some context for why we have been tracking abstract idea (Alice) rejections so closely at the PTAB. While Examiners can apply multiple types of rejections under Section 101, one category stands out as the most arbitrary: patent-eligible subject matter.

patentineligiblesubjectmatter

This so-called judicial exception to eligibility has no real statutory foundation, but is instead rooted in Supreme Court decisions dating back to the 19th century. Today, the most frequently applied–and controversial–of the judicial exceptions is abstract ideas. And over the past 10 years, this type of judicial exception has crept into almost every technology field, but especially computer-related inventions.

November 2018 was a fairly normal month in the number of total appeal decisions, at 708. The number of appeal decisions that included an abstract idea rejection (200) was proportionally higher than previous months, but not by much. In fact, previous months having decisions with abstract idea rejections have exceeded 200.

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But November was remarkable in its number of reversals. Of these 200 decisions, the Board completely reversed 42 times–a record number of reversals for this type of rejection. This bested the previous record in September 2018 with 37 reversals, but with far fewer abstract idea decisions to get there.

November’s high number of abstract idea reversals with fewer total decisions translates into a reversal rate much higher than previous months. That is, November took far fewer abstract idea decisions to yield this record number of reversals, a complete reversal rate (all claims reversed) of 21%. The last time the reversal rate exceeded 20% was back in February 2017 (almost two years ago), when the total number of abstract idea decisions for that month was far fewer. In fact, the 31 such decisions in February 2017 was a small fraction of November’s 200 decisions, making February 2017 at least partially due to a statistical blip. With such a high number of abstract idea decisions in November, it seems like November’s high reversal rate is not an anomaly, but instead a new normal.

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This confirms our predictions that Berkheimer and other factors are contributing to the PTAB reversing Examiner rejections at an unprecedented rate.

Through the Anticipat Research database, you can find these reversals for Board analysis that is persuasive and/or relevant to a related matter you may be working on. You can filter based on Examiner, Art Unit, Tech Center, classification, and many more filters.

Besides showing high-level trends of reversal rates, as described above, Anticipat allows for targeted appeal lookups for specific grounds of rejections or issues. Here, by narrowing the search to November 2018 for the subissue under Section 101 of Abstract Idea, you can access every relevant decision. See filters outlined in red below.

And of course knowing how the Board is reversing Examiners can guide your prosecution strategy.

With recent revised subject matter eligibility guidance, and comments from high-level USPTO personnel, the USPTO is poised to continue to relax the high standard for patent-eligibility, especially for abstract idea rejections. The PTAB is one front that should continue to support this relaxation. Expect more reversals at the PTAB for abstract idea rejections. And subscribe to Anticipat to stay current on developments at the PTAB.