Patent prosecution makes it on to Data Crunch–a machine learning podcast

Most people would not consider patent prosecution an electrifying conversation topic. Patent practitioners can be stereotyped as the most likely to wear a pocket-protector. And knowing how much of a practitioner’s time is spent staring at patent documents, it is with little wonder that practitioner social abilities do not measure up to societal expectations. But with the advent of big data, times are changing, as shown in a recent DataCrunch podcast episode that focuses exclusively on getting patents.

The relevant episode, published on March 27, 2018 as”The Patent Law Land Grab“, can be accessed by subscribing to the DataCrunch podcast on iOS and Android devices. You can also access the episode directly on the DataCrunch website here.

In the episode, the podcast walks through the patent process in a way that even someone unfamiliar with patents can follow. Trent Ostler discusses the fundamental balancing act in getting a patent. He also discusses how big data is playing a role in improving the patent prosecution process, including discussing Anticipat.com. Janal Kalis, partner at Schwegman, Lundberg, Woessner, joins the episode as well to discuss this intersection between big data and patent prosecution.

patent land

Feel free to check out the podcast, especially this episode. Perhaps after listening to the episode, you will see that the allure of patent prosecution is here to stay. But perhaps not.

Upcoming Webinar on strategically using ex parte appeals in your patent prosecution practice

This blog has focused much on the advantages of pursuing an ex parte appeal during patent prosecution. We have pointed out that pursuing an appeal carries a number of unique advantages above alternative procedures in patent prosecution. In a free webinar hosted by Fitch Even on March 21, 2018 (with some CLE provided), panelists will discuss many of these advantages. The webinar’s title is “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense.” Register by clicking here, as explained in the summary below.

  • FITCH EVEN WEBINAR: MARCH 21, 2018
Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense,” on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an ex parte appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the ex parte review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures.

During this webinar, we will explore how the AIPLA findings may provide guidance on

  • When to file ex parte PTAB appeals
  • How often to file these appeals
  • Which issues to choose to appeal

Additional topics will include

  • USPTO incentives
  • Working with the examiner
  • Patent term adjustment
  • Pre-appeal brief reviews
  • Other relevant statistics

Our speakers:
Thomas F. Lebens, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters.

Trent Ostler is in-house counsel for Illumina, Inc., where he helps protect the company’s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of Anticipat.com, a PTAB appeals database.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required. To reserve your place, please REGISTER HERE.

PatCon8 Conference: State of Patent-Eligibility of Medical Diagnostics Not Good

The eighth annual PatCon hosted by the University of San Diego School of Law included a wide range of speakers and presentations. Perhaps due to the largely academic audience, participants openly disagreed on various points. But one point had almost universal consensus: patenting medical diagnostics in the US is very bleak due to patent-eligibility. And it’s unlikely to change any time soon.

Since the Supreme Court decided Mayo v. Prometheus in 2012, the USPTO has shown a sharp decrease in finding good diagnostics claims to be patent-eligible. One session in particular focused on this: “Patentability of Medical Diagnostics” on March 2, 2018. This panel included Dirk van den Boom, CEO, Juno Diagnostics, former CEO of Sequenom; Brian Sun, Director, Intellectual Property, Prometheus Laboratories;  Matthew Bresnahan, Partner-Elect, Wilson Sonsini; Donna Shaw, UC San Diego;  Prof. Joshua Sarnoff, DePaul University School of Law; Prof. Jeffrey Lefstin, Hastings School of Law. We report on this session.

First off, Matthew Bresnahan shared statistics of decreased allowance rates and decreased filings in the 1630 art units. Matthew stated that the problem with diagnostics claims is not getting allowed claims, but rather getting good claims that do not suffer from divided infringement issues. He pointed out that the lone example claim deemed patent-eligible in the USPTO’s subject matter guidelines has a divided infringement issue. As a solution to fixing the patent-eligibility of diagnostics, Matthew suggested that the USPTO provide a “good” example claim in the guidelines that is deemed patent eligible.

Next, former CEO of Sequenom, Dirk van den Boom, talked about his experiences of having the courts take away all his company’s core IP based on patent-ineligibility. It was not planned, according to him. It was also not pleasant.

At one point audience member Mark Lemley tried to maintain an “All is well at the USPTO” attitude by pointing out that overall filings and grants in tech center 1600 may be up. Even if such data exists, which it wasn’t immediately clear to this correspondent, panelists agreed that certainly the types of claims currently granted are much different/worse than previously or in other tech centers.

Prof. Joshua Sarnoff then talked about a need to study the effects of the US choosing not to prioritize the patenting of diagnostics the same way that other countries do. To Professor Sarnoff, whether the US is correctly pursuing this policy is somewhat beside the point. With the proper data of what the patent-eligibility conundrum of diagnostics is doing to the economy, patent stakeholders can be in a better to know what to do.

While this session raised important problems about diagnostics, the solutions seemed unsatisfying. Outside of providing another patent-eligible example claim in the USPTO guidelines and gathering more data, there was some discussion on amending Section 101. For example, IPO and AIPLA proposals to amend Section 101 were generally deemed unrealistic in today’s congressional climate. Perhaps a more narrowly tailored amendment. But overall, all the solutions discussed seemed overly hopeful to change the status quo.

One solution not discussed relates to waiting for appeals currently percolating up the system. This blog has pointed out that the PTAB is currently doing a great job of reversing Examiners in tech center 1600 on Section 101, compared to other tech centers. This suggests that these Examiner rejections are not supported by precedent, and so the Board overturns. If the Board is showing an increase in not finding support in the case law, Federal Circuit panels will likely also find this with other cases. As some other diagnostics cases come up to the Federal Circuit, perhaps it is possible that a case can be distinguished over Mayo but still falls within the area of patent-eligibility.

Below is a photo of Carter G. Phillips, who did a wonderful job of opening the conference.

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Wisdom of the Board: Most Effective Arguments for Obviousness

(Presented during the AIPLA Annual Meeting for the Patent Law Committee/Mentoring Committee session on Friday October 20, 2017 )

The title of my presentation is a play on words with the concept of “wisdom of the crowds,” which had its origins over a century ago. In 1907, at a lifestock annual show in England, a contest to estimate the weight of an ox attracted 800 participants. It was observed that the median guess of these participants, 1207 pounds, was accurate within 1% of the true weight of 1198 pounds. This finding spawned the wisdom of the crowds concept—that a median of a crowd’s individual judgments can be used to reflect a true center of a quantity to be estimated. This concept has infiltrated many disciplines and studies. In short, aggregate data can be a powerful thing.

Can Board decisions help in knowing how to overcome obviousness rejection? I think so. There may not be a one true obviousness response, but looking at the frequency of arguments can provide a framework and see the most effectively used. In appeal briefs, the Board entertains a lot of arguments and they coalesce around a finite set of them in overturning an obviousness rejection. Board decisions can definitely help organize these arguments. Plus, knowing the most frequent arguments can help in knowing how to draft appeal briefs. But more generally, it helps to align response arguments for proper prosecution. Because if you are following the way that judges overturn rejections, that information can be useful.

Laying the Foundation for an Obviousness Framework

Stepping back a little bit to talk about appeals more generally, it’s an interesting data point. One reason why I like looking at appeals data is you’re only looking at arguments of two sides who have vested interests in the case. And obviousness is the most common ground of rejection that gets appealed (by far).

With anticipat.com, we’ve found that there is quite a lot of disparity in how grounds of rejection are handled by the Board. Section 102 and 112 rejections are consistently reversed at a greater frequency than Section 101 and double patenting, for example.

Obviousness is in the middle of the pack. Since there are so many obviousness appeals, this means that there is a lot to learn from. Going through the decisions gave us order to what is going on with obviousness. There are a lot of possible arguments, but seeing how the judges apply the terms gives us a nice framework.

prima facie

First, you have the prima facie case, which the examiner must establish for a proper obviousness rejection. This prima facie case first requires that claim features be disclosed or suggested in the prior art. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“requires a suggestion of all limitations in a claim”). 

The second requirement is that there must be an articulated reason for obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).

After creating the above diagram, it appeared something like a brain with a left hemisphere and right hemisphere. After some thought, I realized that’s actually a good way of thinking about these two elements. As you may be aware, the left side of the brain is responsible for the logical functions such as science and math and the right side of the brain is responsible for the creativity functions, such as the arts. And that fits with what these elements do. The teaching or suggestion element is more of the logical “is it in the reference or not?” analysis. Whereas the second element (why would it have been obvious?) involves more creativity.

So starting with the left side, we touched on the highest level “are the features disclosed or suggested in the prior art.” But it breaks down into several categories.

left103

On this left side, claim interpretation is a big aspect of whether the prior art discloses or suggests the claim features. This includes whether features are properly given patentable weight, how the claim term is construed, and whether the broadest reasonable interpretation is correctly applied. There is also whether inherency is properly applied if a reference does not explicitly disclose a feature. Then there are arguments about the references themselves, whether they qualify as prior art and whether they are non-analogous art.

On the right side, a reason for obviousness must be clear and articulated—not conclusory. Usually Examiners use the rationales listed in KSR (e.g., obvious to try, etc.), but common sense can also be used. Thus, the Examiners can run afoul by incorrectly applying an established or made-up rationale. But beyond this global argument, it breaks down as well.

right103

If combining references, one skilled in the art must have a reasonable expectation of success in combining the references and must be motivated to combine them. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The references cannot teach away, a reference cannot be modified to render it unsatisfactory for its intended purpose, and cannot be modified to change the principal mode of operation. Also, the Examiner cannot rely on improper hindsight bias.

In sum, the left side of the arguments involve more technical thinking while the right side involves some creativity—just like our brains.

Finally, once a prima facie case of obviousness has been made, the applicant can rebut that with objective evidence.

bottom103_1

A lot of components go into objective evidence such as, for example, secondary considerations and unexpected results.

Here is the complete framework of arguments that are used in overturning an obviousness rejection.

complex103

Which arguments are most frequently used by the Board?

Now that we have the framework of arguments that the Board uses to overturn, we drill into the data. I used Anticipat.com Research database for a window of two months’ worth of recent decisions: July 1, 2017 – August 31, 2017. There was a total of 1607 decisions. Of these, 1345 included obviousness rejections (84%). And of these, 446 were wholly reversed on obviousness (33%). I looked at each of these manually to confirm accuracy. Any of the data discussed can be accessed using the research tool.

graph

1. Must disclose or suggest (63.9%)

By far, the most frequent way that the Board overturns the Examiner’s obviousness rejection is on the reference(s) not disclosing or suggesting the claim features. Sometimes this comes out as “the examiner didn’t make his case clearly enough so we can’t uphold”, but other times it is more confrontational by saying “the examiner is incorrect; the claim features are not shown or suggested in the cited references”.

2. Clear and factually-supported articulation of reasons for obviousness (35.9%)

The reason for obviousness (often times based on KSR language) was found to be faulty or not good enough.

3. Examiner Bears Initial Burden (Prima Facie Case) (12.6%)

So far it is to be expected that these arguments are the most frequent because they are required for a prima facie case so it makes sense that board uses these to attack. The next is the argument that the Examiner has not met his/her burden for a prima facie case. This gets used as a conclusion at the end or as a introduction. It never is the only argument used, but is coupled with either element of the prima facia case.

4. Scope and Content of Prior Art – Claim Construction (10.8%)

Often times the Board couples a generic argument (such as listed above in 1-3) with another argument nested inside. That is most true of the fourth most frequent argument to overturn obviousness: claim construction. This is always tied with “disclose or suggest” because the argument is that the prior art is not disclosing the claim language by focusing on what the claim language actually means.

5. Scope and Content of Prior Art – Broadest Reasonable Interpretation (6.7%)

Next is broadest reasonable interpretation. This is also almost always tied with “discloses or suggests” focusing on where the Examiner is interpreting too broadly. Suzanna Sundby gave a fantastic talk on obviousness on broadest reasonable interpretation. This can be a sore point of contention between an applicant and the examiner. The Board will step in and overturn unreasonably broad interpretations.

6. Inherency (5.8%)

Next is inherency. This is a relatively common argument that is tied to left side “discloses or suggests”. The Examiner may assert that the claim feature is inherently in the reference and the judge panel disagrees or holds that the examiner’s showing was insufficient.

7. Hindsight Reasoning (5.2%)

Hindsight is the most frequent argument that is usually tied to the right side, although it is not exclusively used here. In other words, the Examiner may propose a reason for why it would have been obvious and the panel can say that the reason was flawed and also on top of that the Examiner relies on hindsight. Sometimes in the combination discloses analysis the judges can say that the references do not disclose a particular feature and thrown in that the Examiner relies on hindsight.

8. Positively recited structure required for patentable weight (3.4%)

This is another left side argument. Here the Examiner may not be giving patentable weight to claim language and the judge panel overturns because the Examiner improperly did not give the claim patentable weight.

9. Proposed modification cannot render the prior art unsatisfactory for its intended purpose (2.5%)

The first of two classic rebuttal arguments is used by the Board in overturning obviousness rejection, but perhaps at a lower rate than one might expect. This gets coupled with the right side or reason for obviousness.

10. Proposed modification cannot change the principal mode of operation of a reference (1.8%)

The second of the two classic motivation rebuttal arguments. This is also tied to the right side.

11. Non-Analogous Art (1.3%)

This gets used usually with the left hand side of the logical argumentation. But sometimes when the Board overturns by attacking the Examiner’s reason for obviousness, the Examiner will conclude that the one reason why the reason for obviousness is flawed is because the Examiner improperly used a non-analogous reference.

12. Reasonable Expectation of Success (1.1%)

This is a right side argument that is highly tied to the motivation to combine. This argument will be thrown in as a small companion to the bigger motivation to combine argument.

13. Objective Evidence (0.9%)

Yesterday a presenter talked about how objective indicia are gaining in popularity since KSR. But it seems like they are not used very much here likely because objective indicia are more persuasive over time (after grant of patent) as more evidence becomes available with time.

14. What is Prior Art? (0.7%)

Whether a reference is prior art or not is rarely applied by the Board. One possible reason for this is that the appeal conference may kick out improper rejections by having the SPE and another primary analyze the contested prior art reference.

15. Teaching Away (0.2%)

The Board only used “teaching away” in one decision, showing how difficult of an argument it is to make. If the frequency of arguments by the Board is in any way correlated with effective arguments, teaching away is a losing argument.

Tech Centers

Looking across tech centers, it is interesting to see some anomalies. Biotech (tech center 1600) strongly overrepresents “articulated reason for obviousness” and “what is prior art?” and underrepresents “features not disclosed or suggested”. This suggests that it is best to focus on attacking the reason for obviousness instead of attacking the features not being disclosed or suggested.

Chemical (tech center 1700) strongly overrepresents inherency and hindsight. This suggests that Examiners in this space excessively use inherency.

Electrical/Computer (tech centers 2100, 2400, 2600, and 2800) overrepresents “must disclose or suggest,” and “broadest reasonable interpretation”. This shows that Examiners in this space may interpret claim terms too broadly and that it is worth fighting back on it. It also shows that it is effective to point out gaps in the applied art for the claim elements.

Business methods/software (tech center 3600) underrepresents “articulated reason for obviousness”. This may be because Examiners are given more leeway in this art in crafting creative reasons for obviousness since software is easy to plug in different modules or features.

Medical Device/mechanical (tech center 3700) overrepresents “reasonable expectation of success” and “claim construction” and “non-analogous art”. This suggests that it can be helpful to rely on the interpretation of a claim term. It also shows that non-analogous art can be effective in this space.

Conclusion

The Board generally tends to use the left-side arguments in overturning obviousness rejections, but there are exceptions as noted in specific tech centers. Some arguments are much more frequent than others.

Why is this useful? Have you struggled with a particular point of contention with an Examiner (for example thinking that the Examiner’s reason for obviousness is inadequate), wondering how this specific point of contention compares to others. Anticipat Analytics provides you with the organized and personalized information from the Board. 

anticipat

You can see a ranked listing of all the arguments that were found to be successful at the Board. For example, if you believe that your Office Action has an unreasonably broad interpretation, you can see where that argument falls in relation to others. Plus, you can access the Board decisions for your particular Examiner on that issue (if it exists). If it does not exist, you can go up to the art unit level or tech center for greater coverage of arguments. Seeing how often these arguments get used compared to others gives you a better sense of the likelihood of success in appealing or in working with the Examiner.

Consider using the most relevant arguments, but also find the persuasive arguments to support your particular application’s case. You might be surprised at how much the Board borrows arguments from a good appeal or reply brief. The tool allows for you to easily find the language that the Board uses, which can be a model for you to incorporate into your own filings.