Challenging A Patent At The PTAB – It’s All Or Nothing, Baby

On April 26th, the USPTO released a memo stating that, in light of the United States Supreme Court decision in SAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018), when the PTAB initiates a trial, it will do so on all challenges raised in the petition.

The former approach taken by the PTAB allowed for the panel to initiate trial on a subset of all of the challenges submitted by a petitioner.

The memo went on to state that for those trials currently in process, where only a subset of the challenges are being reviewed, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”  Noting that these changes may create additional hurdles, the memo provides that these panels may “take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.”

This memo is quick on the heels of the ruling in SAS, which came just two days earlier.

This ruling goes hand in hand along with the Supreme Court’s ruling in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which held that inter partes review of patents are valid and do not violate Article III of the US Constitution or the 7th Amendment.  It is also interesting to note that both were decided on the same day (April 24, 2018).

On one hand, we have resolution and clarity on the validity of the inter partes review process, and that petitions will be heard in their entirety or not at all.  On the other hand, what we do not know is how this will alter the decisions made by the PTAB.

For instance, previously, when the PTAB had the ability to select which challenges in a petition it would hear, the PTAB would offer quite comprehensive explanations for the decisions it makes.  It is unclear as to whether the PTAB will be able to keep to the same time schedule that it has with these trials, and still offer the same comprehensive explanations it currently does, now that the panel must hear all challenges raised in the petition.  The flip side to this is it may also result in the PTAB accepting fewer challenges, since it simply does not have the capacity to provide detailed findings for the broader challenges it now must hear.  Alternatively, the PTAB may simply start offering more limited explanations for its findings.

Further, there is a question as to how this will impact patent infringement litigation matters in courts where certain judges refuse to stay trials where an ongoing inter partes review is being conducted on less than the entirety of the granted claims.  Since now  that inter partes review approved by the PTAB will be taking the all or nothing approach, it is possible judges may take this into consideration when reviewing a possible stay in these litigation matters.

While we look forward to what comes next, the one thing we do know is that inter partes reviews are here to stay.  For parties being threatened by patents they feel are invalid, this is good news.  Inter partes review provides these parties the option to challenge bad patents in a forum that is much more efficient and cost effective than the US court system.

USPTO Memo May Be Boon To Patent Applicants

On Thursday, April 19, 2018, the United States Patent and Trademark Office (USPTO) issued a memo addressing changes in subject matter eligibility reviews under 35 U.S.C. § 101 in light of the recent federal appeals court (CAFC) ruling in Berkheimer v. HP, Inc.  

This is the latest in what appears to be a steady series of updates from the USPTO on guidance for both examiners and practitioners alike.

The Ruling

Without focusing too much on the findings of the court in Berkheimer v. HP, Inc., 881 f.3d1360 (Fed Cir. 2018), there were several important takeaways from that ruling that are important to note with respect to the present memo from the USPTO and for applicants preparing or having patent applications prepared for them.

First, as part of the ruling, the CAFC found that actual evidence must be provided when attempting to establish that an element of a claim or claimed combination is nothing more than something that is “well-understood, routine and conventional  to a skilled artisan.”    Further, the CAFC doubled down on this by noting, “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

Second, the CAFC noted that the specification of the patent in question expressly supports the improvements and functionality the claimed invention provides over the prior art.  These improvements were called into question by HP, and the lower court agreed with HP.  However, the CAFC noted that “there is at least a genuine issue of material fact in light of the specification,” and that summary judgment is inappropriate with respect to the claims in question.

The Memo

The USPTO memo acknowledges that the ruling in Berkheimer v. HP, Inc. is specifically applicable and relevant to current patent examination practices and procedures, specifically related to subject matter rejections under 35 U.S.C. § 101, in light of previous findings in Alice Corp. v. CLS Bank International and Mayo Collaborative Servs. v. Prometheus Labs., Inc. (which have been so thoroughly discussed that we will assume for the purpose of this post that most are aware of the outcome and impact of those rulings).

Most importantly, the memo addresses exactly how examination procedure will change in light of the ruling in Berkheimer v. HP, inc.  Specifically, examiners now are now expressly encouraged to provide specific examples when claiming that a specific element of a claim is well-understood, routine and conventional in the art.  The avenues for them to do this are: i) point to the specification of the present application where the applicant makes express statements about the element being well-understood, routine and conventional (note: silence is not to be construed as having made any such statement); ii) point to previous court rulings that address specific claim elements in the present application; iii) provide reference(s) that show that the claim element is well-understood, routine and conventional in the art; or (iv) take official notice.

The memo and the CAFC note that when providing one or more specific references to show that the claim is well-understood, routine and conventional in the art, that “merely finding the additional elements in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine and conventional in the art.”

Further, the memo notes that when an examiner chooses to take official notice,  that the examiner be “certain, based on upon his or her personal knowledge, that additional element(s) represent well-understood, routine, or conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).”  However, the memo then states that if challenged on this by the applicant, the examiner must provide items under (i)-(ii) above.

The Analysis

What the USPTO Memo indicates is that for a rejection under 35 U.S.C. § 101 to be applicable to an element of a claim that an examiner believes is well-understood, routine and conventional in the art, there must be more than a mere statement by the examiner.  The memo does a great job of putting examiners to task with respect to overly broad and under supported 35 U.S.C. § 101 rejections.   One of the best aspects of this is requiring an examiner to go back to the drawing board and either withdraw or issue a new 35 U.S.C. § 101 rejection if they rely solely on the “official notice” prong of the analysis.

Further, with the memo expressly making reference to the fact that simply because an examiner can find a single reference of an element in piece of prior art, does not by itself make that element well-understood, routine and conventional in the art, the USPTO is helping to push the distinction between subject matter rejections under 35 U.S.C. § 101 and rejections based on prior art under 35 U.S.C. §§ 102-103.

While the memo is less than a few weeks old at the time of this publication, it does appear that the memo is intended to put examiners to task with respect to conclusory statements made for rejections under 35 U.S.C. § 101.  In practice, we will see if this is the case as the next set of office actions roll out.

One last thing to consider, for both applicants and practitioners, is the note by the CAFC that the factual analysis of whether an element of a claim is well-understood, routine and conventional in the art will turn to the specification of the patent itself.  In the decision, it was noted that since the specification stated that the claimed elements were improvements over the prior art, it became a factual dispute as to whether the element was actually well-understood, routine and conventional in the art.  The CAFC and the memo noted this works both ways, that not only do statements of how the art is improved are read from the specification, but also statements about what is well-understood, routine and conventional in the art.  So as both a cautionary and advisory tale, remember to watch what you say in your patent specifications, as they can and will be used against you in a court of law!

Last Words

Additional guidance from the USPTO on subject matter eligibility analysis under 35 U.S.C. § 101 is always welcome.   Even better, the memo hints at further changes to come.  As subject matter eligibility has always been a moving target, any clarity is always a boon to applicants and practitioners alike.    It is also good to see that the USPTO is implementing safeguards that provide express pathways for applicants to challenge lazy or under developed rejections from examiners.  All-in-all, this is good news for those seeking patents in the technological fields, such as software and biotech.