Which law firms are successful in overturning abstract idea rejections on appeal?

For difficult grounds of rejection, the right advocacy can make all the difference. The right counsel can know when to appeal and how to win on appeal. Here, we explore the demographic of firms that represent appellants that overturn one of the most difficult of all rejections: Section 101 abstract idea. Recent data show that while some big/specialized firms are successful, others without the same name recognition also are doing relatively well.

We have previously reported that in the post-Alice era, the PTAB reverses abstract idea rejections about 17% of the time. Updated for the past few months (blog post forthcoming), this overall rate has dipped. But this low percentage still represents a sizeable 135 decisions over the past year and a half (specifically, July 25, 2017 through December 1, 2017). This span of time represents the applications that are most likely to have been issued a post-Alice rejection and subsequently appealed. It turns out that select firms make up a good share of these successes, followed by a long tail of single reversals per firm.

Two firms immediately stand out from the pack: Morgan Lewis and Schwegman, Lundberg & Woessner. These firms each have 5 reversed decisions on appeal, a laudable number in this post-Alice climate.

Next are firms each having three reversals: Cuenot, Forsythe & Kim and Brinks Gilson and Lione (stemming from three related applications issued the same day).

Next come the firms/companies with two reversals apiece (arranged alphabetically):

Finally, there are 90 other firms/corporations/pro se applicants who have achieved one reversal (see end of post for names).

Our methodology involved using Anticipat Research database to find all reversed Section 101 decisions decided on abstract idea grounds. We then identified the law firm/corporation who signed the reply brief or appeal brief and crediting them with the reversal.

Two things are clear from these data: First, some firms are really quite good (relatively speaking) at appealing abstract idea rejections–even in the face of fast-evolving case law and various application filing dates (pre- and post-Alice). Make no mistake, a firm that can overturn an abstract idea rejection several times over the past year and a half is not doing so out of luck.

Additional research is needed into normalizing these data, which could identify whether these successful firms are achieving such high reversals by appealing much more frequently than others. However, Morgan Lewis and Schwegman would need to appeal quite a bit more than others for their high reversals to be explained only from sheer numbers of ex parte appeals.

Another related question relates to firms having smaller patent prosecution practices. Do these firms’ reversal numbers come in the face of handling a much smaller number of cases than bigger patent prosecution firms? This would indicate that smaller firms are in fact equally if not more successful than the Morgan Lewis and Schwegman types.

The second point that is clear is that a broad diversity of counsel succeeds in appealing abstract idea rejections. Counsel ranges from firms in big cities with the highest of billable rates to boutiques in smaller cities who carry much lower overhead. Solo practitioners also win and even pro se appellants succeed on Section 101 appeals. Common wisdom may suggest that you get what you pay for in patent counsel, and that a high stakes appeal of such a difficult rejection requires a Tom Brady billable rate. But the data show a broad range of counsel are successful, indicating that a superstar billable rate is not required to overturn an abstract idea rejection on appeal.

These two points strike at an interesting concluding point. While there are some certainties in navigating the abstract idea waters, there is a great deal of uncertainties. For the certainties, a certain level of legal sophistication and experience may be needed to successfully argue an abstract idea rejection at the PTAB (persuasive writing and rebutting the Examiner’s points with the right, relevant case law).

For the uncertainties, Section 101 case law has been evolving very regularly since Alice, meaning that there is a large amount of unpredictability and volatility. That being said, having the most up-to-date data available on Section 101 ex parte appeals can equip any counsel with the right tools. Anticipat Practitioner Analytics lets you see the reversal rates for certain Examiners, art units, and tech centers for all types of rejections. It also shows you the most often cited case law used by the PTAB for abstract idea grounds of rejection. Watch this YouTube video for more information or check out this page here: https://anticipat.com/accounts/signup/analytics/ Sign up now for a free trial.

 

As discussed above, here are the firms with one reversal, sorted alphabetically:

 

PTAB: Protein modeling software claims are patent-eligible, arguing preemption

It has been over a year since the Federal Circuit decided McRO v. Namco Bandai. In short, McRO decided that software models can be patent-eligible. This long-awaited case sent ripples of hope to many in the patent bar, especially to those reeling from the confusion and unpredictability of Alice decided two years prior. But the McRO message has still not made its way to all examiners, especially in the life sciences. Fortunately, the PTAB sees fit to correct and overturn such examiners, as shown in a recent case Ex parte Ohrn, Appeal No. 2017-003914 (PTAB Nov. 20, 2017).

In Ex parte Ohrn, the Examiner had argued that the claims simply used a computer as a tool, i.e., “converting one form of numerical representation into another by organizing information through mathematical concepts,” and were thus an abstract idea. In addition to holding that this was an overgeneralization of the claims, the Board used three main arguments to counter this assertion.

First, the Board found that the exact manner in which the modeling was implemented was novel, and thus the Examiner failed to provide evidence that the computer was used simply as a tool for generic activity. The Board found that the “claimed method uses a combined order of specific rules that render information into a specific format that is then used and applied to create desired results.”

Second, the specific, claimed features of rules permit the improvement realized by the invention. Claim 1 focused on a specific articulated improvement in protein modeling instead of a result of an abstract idea itself.

Third, the Board found the preemption argument persuasive that the specific method recited in the claims did not improperly monopolize the basic tools of scientific and technological work. It cited fairly specific characterizations made by the appellant of what the claims do not cover.

While the preemption argument can be a strong one, the savvy patent practitioner will tell you that this argument is not without consequence. For purposes of prosecution history estoppel, characterizations made on the record as to what the claimed invention does not cover greatly weakens or even destroys such equivalence coverage in litigation. But a granted patent narrowed by such prosecution history estoppel can be better than an application where the argument was not used, leading to an abandoned application. That being said, the preemption argument can be a double-edged sword.

Rare split panel at PTAB reverses abstract idea rejection

 

Rarely do the three-judge panels at the PTAB offer differing opinions in ex parte appeal decisions. It’s not necessarily that these judges all agree with each other all the time. Instead, it’s because the USPTO production quota system does not reward judges for separate concurrences or dissents. So any time that a judge decides to spend in writing a separate opinion is in essence off-the-clock work. But this does not deter some judges from branching out from the panel, as shown in a recent case that reversed an abstract idea rejection: Ex Parte Boucher et al, Appeal No. 2017-003484 (PTAB Oct. 31, 2017).

In Ex Parte Boucher, the majority reversal of the Examiner’s rejection under Section 101, authored by Joseph L. Dixon and joined by Larry J. Hume, was brief. It held that the Examiner had provided insufficient factual findings and analysis on patent eligibility. The Examiner’s asserted abstract idea “manipulating data for the purpose of fault detection” oversimplified the claimed invention, according to the majority.

The majority further agreed with the appellant’s arguments that the claims are directed to new and useful improvements for detecting or diagnosing faults of items or of functions implemented by the items of an aircraft. Thus, the claims were not solely directed to an abstract idea.

Judge Joyce Craig disagreed with the majority on Section 101. The dissent would have characterized the claim as existing information in a database, analogizing the claims to Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017). The dissent would have characterized a remaining part of the claims as using a mathematical algorithm to manipulate existing information to generate additional information, citing to Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Thus, the dissent would have concluded that the claims are directed to an abstract idea under the Step 1 analysis of Mayo/Alice.

Under step 2, the dissent looked at the claim elements taken individually and saw nothing more than “routine computer functions and amount to no more than the performance of well-understood, routine, and conventional activities in known to the industry.” Thus, the dissent would have agreed with the Examiner and sustained the rejection.

The Federal Circuit and district courts are not the only judicial bodies that are at odds with each other with regard to applying a consistent and cohesive framework for assessing the two-step analysis of patent-eligibility. It can thus be useful to have additional knowledge at to guide your chances for appeal.

With Anticipat Research, you can see which judges are deciding cases in your tech center to give you a better sense of what your chances on appeal are. For example, if you are appealing a Section 101 rejection, will you get a Judge Craig type of panel that tends to agree with the Examiner’s analysis, or will you get a Judge Dixon type of panel that sides with the appellant’s analysis. See below interface.

filters  Try Anticipat Research today to see which judges are on the reversed panel decisions, specific to a tech center of interest. Then you can search for how often these judges appear both in panels and as authoring judges in your tech center.

Another “good” bioinformatics claim found patent-eligible by the Board — insufficient evidence of routine and conventional claim

In a previous post, we defined what a good bioinformatics claim looks like. Such a claim does not suffer from divided infringement issues and it does not recite steps to be performed by hospitals or doctors (e.g., medical procedures, administration of therapies) for maximum damages. We also reported that the US Patent Office resists granting such claims, alleging a lack of statutory subject matter. Here, we report on the PTAB continuing a trend of reversing such rejections of these types of claims.

In Ex parte Shioyama, Appeal No. 2016-001637 (PTAB October 20, 2017), claims recited a cell analyzer for determining a malignancy grade of cancer. While the representative claim is an apparatus claim (i.e., cell analyzer), the claim set also included a method claim. See representative claim below.

The Board reversed the abstract idea under step 1. In its reasoning, the Board held that the Examiner failed to provide evidence to support a prima facie case of lack of patentable subject matter. Drawing support from Enfish, the Board looked to the specification to analyze the claimed invention. It agreed with the appellant that “there is something more than a mere abstract idea”.

In its holding, the Board’s overturned the Examiner’s rejection (including that the abstract idea is routine and conventional) for not being supported by sufficient objective evidence. The Board recharacterized the alleged abstract idea. Instead of “determining the malignancy of a sample by analyzing a histogram”, as asserted by the Examiner, the Board found that the claim was directed to the abstract idea of “configuring a conventional processor to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.” The Board then found that in light of these elements missing from the Examiner’s asserted abstract idea, the abstract idea claim step was not routine and conventional.

The Board made it very clear that the burden to provide evidence that an alleged abstract idea is routine and conventional is squarely on the Examiner’s shoulders.

Another interesting note about this representative claim relates to the word count. The Anticipat team has been informally observing claims where the Board has reversed abstract idea rejections to see if any patterns jump out. But with the various technical fields from which these claims arise, the relatively small sample size of these claims, and diverse claim drafting styles for these claims, the most telling pattern we found for predicting a patent-eligible claim was word count. That is, the longer the claim, the more likely the Board will overturn an Examiner’s Section 101 rejection. Here, however, this claim certainly bucks this theory that a hefty word count is needed for a patent-eligible claim, the representative claim having only 85 words. See below. It turns out brevity and patent-eligibility can go hand in hand.

And while we’re on the topic of predicting patent-eligibility, yes we checked “Ask Alice” for this claim, and it outputs a 55% patent-eligible score.

Representative Claim:

1. A cell analyzer comprising:

a cytometric device which measures cells that are nuclear stained;

a display which displays a histogram of a fluorescence intensity by using a result of the measurement by the cytometric device; and

a computer comprising at least one processor configured to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.

Section 101 Rejection Overturned. What’s Next: A Notice of Allowance or a Revised Office Action?

It has seemed like the PTAB has been on a recent roll in reversing abstract idea rejections. In the past four weeks, 13 decisions have reversed abstract idea rejections. But in that same time period, there have been over 60 abstract idea appeals that have been affirmed. See Anticipat Research Database. So the recent trend has actually been consistent with historical reversal rates of about 20%, which is far below other grounds of rejection reversal rates.

On this note, two related business method applications came out on October 3, 2017: Ex Parte Webber et al., Appeal No. 2015-003647, and Ex Parte Webber et al., Appeal No. 2015-003796. In the decisions, the Board reversed the Examiner’s abstract idea rejections under 35 U.S.C. 101 for the same reasons. The Examiner had failed to set forth any analysis that the claim is directed to an abstract idea, and that the claims do not provide “significantly more” than any abstract idea. The Examiner in the Examiner’s Answer provided an incomplete analysis and only applied the machine-or-transformation test. And as the Bilski Supreme Court made clear, the machine-or-transformation is a useful tool, but not the sole test.

The Board only sought to decide the rejection at hand and not to evaluate the patent-eligibility of the claims on its own. Now that the decision was rendered, the logical question is what happens next? To understand this, we navigate through a somewhat complex area of rules.

The first scenario is for a “reversed” decision. When a decision is wholly reversed (each and every ground of rejection is reversed), the general outcome is a Notice of Allowance. There is an exception to this. The director can authorize reopening prosecution under 37 CFR 1.198 for the purpose of entering a new rejection. See MPEP 1002.02(c) and MPEP 1214.04. Thus, in Ex Parte Chapman, Appeal No. 2014-007861 (PTAB Nov. 21, 2016), all grounds of rejection (Sections 101 and 103 rejections) were reversed by the Board, but rather than issuing a Notice of Allowance, a subsequent Office Action issued with both rejections reappearing as new.

The second scenario is for an “affirmed” decision. If a Section 101 rejection is reversed, but other grounds of rejection were affirmed for all claims, this designates the decision as affirmed and the applicant must file an RCE to reopen prosecution. In response, the Examiner can issue an Office Action without a Section 101 rejection (especially when the Board reversed a well-articulated Section 101 rejection). See Ex Parte FISK, Appeal No. 2015-005360 (PTAB Sept. 21, 2016).

The Examiner can also issue an Office Action with a Section 101 rejection even though the Board reversed the previous 101 rejection (especially when the original 101 rejection was underdeveloped). in this manner, the Examiner can correct a deficiency in the analysis, as is often the case. See Ex Parte Dogin et al, Appeal No. 2015-005000 (PTAB Feb. 27, 2017) and Ex Parte Kelly et al, Appeal No. 2015-001219 (PTAB Dec. 19, 2016).

Returning back to these two decisions, it seems likely that the Examiner will likely issue another Office Action with an improved Section 101 rejection. In both of these decisions, while the Section 101 and Section 103 rejections were reversed, a Section 112 Written Description rejection was sustained. Thus, the applicant may choose to file amendments with the RCE, after which the Examiner may get a second opportunity to reject the claims as abstract using the proper analysis of Alice/Mayo. And with one of the applications having the title “SYSTEM AND METHOD FOR DONATING TO CHARITABLE ORGANIZATIONS”, it seems like it could be an uphill battle for the applicant.

The PTAB Shows It Is Possible to Get “Good” Bioinformatics Claims Patent-Eligible

The bioinformatics market continues to show signs of impressive market growth. But patent eligibility laws in the US have not helped the cause of such a promising industry. But a recent PTAB decision, Ex parte Donnett, Appeal No. 2017-003694 (PTAB September 29, 2017), reversing the examiner’s abstract idea rejection may indicate a turning of the tide.

Before delving into the case, the subject matter eligibility issues associated with bioinformatics is not that it isn’t possible to get allowed claims. It is. The problem lies in getting good allowed claims. As a software invention, the novel feature (and often incredibly groundbreaking technological improvements) typically takes place before performing a medical procedure. For example, pioneering heart modeling software that is able to simulate where is a personalized optimal ablation target is inventive for the software piece–not for performing an ablation procedure based on the software.

Since Alice and Mayo, however, the USPTO has pushed for these “post-invention” medical procedures especially for inventions having clinical application because these medical procedure steps tie in the real world. This is despite real-world limitations not being required for other technologies. See McRO and Enfish. And in a recent CLE hosted by Fenwick & West, former SPE of art unit 1631 Marjorie Moran continued to talk about the need to tie in real-world steps in these claims.

The only problem is that reciting these additional steps creates a divided infringement nightmare for patentees, especially for bioinformatics inventions that have clinical applications. Since a doctor would be performing the medical procedure and since presumably another party could perform the software piece that precedes the medical procedure, patentees would have to pursue a difficult infringement argument. Plus, even proving infringement, Section 287 deprives a patentee the ability to collect damages against a doctor or healthcare entity.

So it appears that, while Europe, China and other countries have made strides in clarifying a reasonable patent-eligibility framework, the US has taken steps backward in the aftermath of Alice v. CLS Bank and Mayo. Bioinformatics technology are at the cross-roads of two Supreme Court decisions unfavorable to patent-eligibility: one from the software side and one from the life sciences side. And because of the relatively few patent applications for bioinformatics inventions, there is a dearth of guidance from Federal Circuit decisions directly on point. This is why the following PTAB decision ex parte Donnett is so interesting.

The claim at issue in ex parte Donnette is directed to predicting seizures. Claim 1 recites an apparatus configured to predict an upcoming neurologically abnormal state by comparing the indication of the set of correlations obtained during a sampling time period to each of Normal and Non-Normal templates.

In its analysis, the Board first found that the Examiner’s step 1 analysis was erroneous. Just because the claim recites correlations, this does not mean that the Examiner had sufficiently shown that the claim is directed to an abstract idea ‘of itself’. The Board instead quoted the appellant’s argument that the claims are directed to seizure prediction, with an innovation in digital EEG signal processing. The Board quoted the appellant’s argument that “the innovation reflects both an improvement in the functioning of the signal processor and an improvement in another technology, seizure prediction.”

At the conclusion of its decision, the Board seemed a bit non-committal. That is, the Board did not expressly conclude that the claimed invention was not directed to an abstract idea because of the technological improvements articulated by the appellant. It merely quoted the appellant’s arguments. Instead, the Board concluded that the Examiner did not sufficiently show that the conclusory statement met the minimum threshold for establishing that the claims are directed to an abstract idea. Even with such non-commitment, it is a big win for the appellant. These claims do not appear to suffer from the divided infringement issues noted above and will likely receive a Notice of Allowance shortly.

Is this the first of a tide of bioinformatics claims that are both good and patent-eligible? Perhaps. But too early to tell.

How to overcome an abstract idea rejection? Emphasize narrowing claim amendments and lack of prior art rejections

Recently decided ex parte Blaho, Appeal No. 2016-007954, (PTAB September 28, 2017) reversed an Examiner’s abstract idea rejection. In doing so, the Board first dismissed the Examiner’s characterization of the claims. Then, the Board found that the long prosecution history with significant amendments to overcome prior art rejections was evidence that the claim elements were not routine or conventional. It is a case worth studying for practice tips.

In ex parte Blaho, the panel found that the claimed invention was more than the asserted abstract idea. Whereas Planet Bingo merely retrieved numbers and then merely performed processing of the retrieved numbers, the Board found that the claims at issue recited specific interaction among multiple devices. Thus, the claims are not merely management of human activity.

Then more interestingly, the panel rejected the Examiner’s assertion that the claim elements are routine or conventional, pointing to the long prosecution of this case (going back all the way to an abandoned parent application). Here, the Board found that the Examiner not providing a good prior art rejection was evidence that the elements are not routine or conventional. The Board lifted this argument straight from the Reply Brief, as shown below.

Your correspondent had never seen this exact argument successfully used to overcome abstract ideas. But it is a variation of a similar classic argument against abstract ideas: that the Examiner cannot reject the claims under prior art grounds is evidence that the claims are not abstract.

This prior art/preemption argument will not always win the day because of the Ariosa v. Sequenom Federal Circuit line of reasoning: “the absence of complete preemption does not demonstrate patent eligibility.” Slip op. at 14. But this prior art/preemption argument is still in line with Supreme Court and Federal Circuit precedent. The Supreme Court in Alice stressed the balancing act that should exist in the patent-eligibility analysis of judicial exceptions. The Federal Circuit in McRO further articulated this by framing the discussion on preemption: a claim is directed to an abstract idea when it improperly preempts. A big part of preemption is the specific implementation recited in the claims or whether the claim invention recites mere conventional or generic routines.

Ex parte Blaho is an interesting way of articulating this argument as it relates to prior art rejections. It reframes the debate on preemption. That is, it is a way to push back against Examiner arguments asserting that the claims recite an abstract idea with only generic or routine claim elements. If it doesn’t just recite an abstract idea with generic or routine claim elements, no improper preemption.

This case highlights three important practice tips. First, where appropriate, it is important to push against the Examiner’s characterization of the claims in Step 1.

Second, if there is no prior art rejection, or if there are a large number of references cobbled together, this may be used to further bolster the case that the claims are not really directed to an abstract idea because the claims do not improperly preempt. If they did, a good prior art rejection would be found.

Third, use cogent and persuasive advocacy in your briefs. You may find the Board using your exact arguments in its decision.

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Business methods patent-eligible? PTAB: Yes

Business method art units have been a scary place for patent applications. In Alice v. CLS Bank, a vocal minority of the Supreme Court would have categorically excluded business method patents from eligibility. So it comes as no surprise that many Examiners have raised the bar of patent-eligibility of business method inventions to unprecedented levels. So much so that applicants now try and avoid any claim language that hints at business methods. But business method patents are not per se doomed, as shown in the recently decided Ex parte Breiter, dated September 29, 2017.

In Ex parte Breiter, there was no hiding the fact that the claims recited a business method because it was integral to the invention. The claim recites “a processor configured to initiate executable operations of a business process using a standard business process engine.” Indeed, that was the technological problem that the applicant sought to overcome, improving business process modelling (BPM) from a software engineering perspective.
In its decision, the Board acknowledged that the claims were directed to an abstract idea under step 1 of the Alice/Mayo framework. But in its analysis of step 2, the Board found Enfish analogous in holding that the claims are directed to an improvement of computer functionality. Citing Enfish, the Board found that in the claim, the computer implemented method is focused on “the specific asserted improvement in computer capabilities” and not “merely used as a tool.” Specifically, the claims at issue recited injecting operations that advantageously allow interchanging data with a predefined data structure instance without having the specified corresponding tasks in the business process definition in advance.

Subject matter eligibility of business method inventions is difficult, but not impossible–especially when the claims recite specific technological improvements in computer capabilities. ​

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Board Reverses Abstract Idea Rejection for Improper Oversimplification; Board Should Evaluate Examiner Rejections, Not Conduct Own Examination

In continuing to monitor high interest areas at the PTAB, today’s Anticipat Recap email included a recently issued decision that reversed the Examiner’s abstract idea rejection. We go over why the Board reversed and discuss an interesting point raised related to the scope of Board activism. 

In Ex Parte Grokop et al., Appeal No. 2016-003047, the Board disagreed with the Examiner’s conclusion of step 1 that the claims were directed to an abstract idea. The Board cited Enfish and McRO to establish two important points that touch on judicial exception rejections: the claims cannot be oversimplified and specific requirements of the claims must be considered.

According to the Board, the Examiner’s characterization of the claim as directed to “generic audio analysis” oversimplified the claims and failed to account for the specific requirements of the claim. This included claim features of capturing only a single frame from each block, analyzing the collection of captured frames, and determining a characteristic of an ambient environment based on that analysis.

Interestingly, at the end of this analysis, the Board made a point to establish that the Board need not examine the claims. Instead, the Board’s job is to evaluate whether the Examiner’s rejection was proper. To support this, the Board cited to the MPEP (“The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims.” MPEP § 1213.02). It also cited to the statutory code (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.” 35 U.S.C. § 134(a); and “The Patent Trial and Appeal Board shall. . . review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” 35 U.S.C. § 6(b)).

This last point is important because often times rejections (including abstract idea rejections) get affirmed under a new theory or analysis, requiring that the rejection be designated as new. Or claims that were previously unrejected under Section 101 are found to be patent-ineligible by the Board as an entirely new ground of rejection. It seems like this panel would focus entirely on whether the Examiner’s pending rejections are proper and not examine the claims by itself. 

There may be advantages and disadvantages to Appellants under this approach. Advantageously, the appellant need not fear an unfriendly Board panel that seemingly arbitrarily introduces a new 101 rejection. Additionally, the appellant need not fear a bad Examiner rejection getting strengthened by the Board as an affirmed as new outcome. But the downside is that if the Board purely evaluates the Examiner rejections, the Examiner could simply turn around a more well-articulated rejection once the application makes it back. So on the flip side, under the approach where the Board more actively evaluates the claims, if the appellant survives such an approach without a new rejection, the Examiner may be less likely to simply flip around a more well-articulated rejection.