The Real Alice Problem? PTO Patentability Plague
Its been a few years since I’ve blogged, mostly because (as I’m sure it is for others) work has been overwhelming.
Recently I’ve been able to take a bit of a reprieve and wanted to put down some thoughts on the veritable mess developing in the § 101 patent jurisprudence in this country. A few high level observations I propose after considering the developments of the past 3 years since the Alice decision:
- The SCOTUS has made no effort to clarify or improve its explanation of the abominable “abstract idea” logic it applied in the Alice opinion;
- District Courts, emboldened by the vague and unbounded “no evidence no logic” required rationale of Alice proceeded to butcher as many patent cases as they could to shamelessly clear out their dockets of proceedings and litigants (particularly NPEs) they didn’t like;
- The bulk (but not all) of the CAFC judges, cowed by another SCOTUS’ scolding, abdicated their historic role as the authority on IP matters and now readily rubber stamp these intellectual charades from lazy D Ct Judges; a few not-so-secret “rebels” who remember their original mission occasionally throw a bone to the pro-patent crowd with opinions of limited utility because they are narrowly drawn, designated non-precedential, and are gerrymandered into irrelevance by later panels;
While I have plenty to say about these points, there are a number of outstanding commentators out there – Dennis Crouch at PatentlyO, Gene Quinn and crew at IP Watchdog, and Robert Sachs at Bilski Blog who cover these areas fairly well. In a good week, we get 3-4 meaningful decisions that we parse through the § 101 “Enigma” machine to see if we can finally glean what secret code the Courts are using to process these cases, only to realize that the result is almost always completely arbitrary.
But there is a far more serious problem going on though that is not being highlighted in the IP news: namely, the recent (more on “when” later) growing decimation of inventor applications under § 101 at the Patent&Trademark Trial Appeals Board (PTAB) based on some of the shoddiest “results oriented” jurisprudence regurgitated in decades. I believe this PTO development is far more threatening to inventor rights, because it is rotting patent rights from the ground up, and the sheer numbers of cases is much larger. Unbelievably this massacre is going almost entirely unrecognized because the PTAB’s decisions are not well publicized or compiled for review or scrutiny. This PTAB mess is also not widely discussed because most practitioners fear being singled out for PTO retaliation, or worse, jeopardizing their client’s interests.
From first hand observation and experience over the past few years it is apparent to me that the PTO has chosen to interpret the Alice decision in the most perverse Kafkaesque way possible, not to “improve” patents, but, rather, to cut down on its backlog of cases in the most convenient fashion possible. The “guidelines” are heavily skewed with examples and logic that favor 101 rejections, and barely acknowledge eligible areas. When a claim is shown to be within the guidelines, Examiners routinely argue that such strictures can be ignored.
Hence, what have now is an Examiner review system where inventions are not considered for their merits, but rather on the basis of whether they can somehow be imaginatively given an “abstract idea” label, and disposed of summarily that way. And the PTAB, as final arbiters in this new rigged system, have fully embraced this directive and feel empowered to write ridiculous opinions they know (because of the high cost of appeals) will likely never see the light of day at the CAFC, and even if they do, will most likely be met with a collective yawn by some of the current cast of usurpers. That’s why the most recent viral plague is PTO personnel inventing §101 rejections based on nothing more than random musing and speculation – no facts, evidence or logic required!
Recent PTAB decisions reveal just how transparent the new regime is in effectuating their agenda: in appeals, Examiners are routinely reversed on all the “hard” issues involving real proof, analysis of claims/references, etc. (like §102, §103, §112), which tells you everything about the quality of the thought that went into these rejections. But never fear these same Examiners are rewarded with affirmations on any new rejections they can dredge up under §101, irrespective of how lacking, inadequate or incorrect the reasoning may be. And if its not there, don’t worry Mr./Ms Examiner, the PTAB will make it up for you!
As a typical example, I offer Ex parte Baran et al., Appeal 2016-007695 Application 13/585,383; RPI is Disney (no, they are not a client) where the claims dealt with 3-D modeling in which one or more processors divide up a 3-D object until it fits within a particular volume. The PTAB reversed the Examiner on all material points (including a rejection on prior art based on §103) but then felt compelled to add its own “new” gratuitous rejection under §101.
Anticipating that the Applicants would (rightfully) point out that 3-D modeling is mostly a computer related endeavor to fall within the CAFC approved DDR safe harbor, the PTAB wistfully remarked:
Here, we cannot say that either the problem or the solution is rooted in computers. For example, the same problem of how to divide a 3D object would be faced by a human chef deciding how to cut leftover brisket or ham to fit into smaller storage containers. Likewise, the solution to keep cutting until all pieces are small enough to fit applies equally to the human chef. Thus, whether in the kitchen or a 3D printer, how to divide a large object to fit into smaller volumes is not specific to computers…
Yes folks, that’s what we are facing today: if the PTAB can envision some hypothetical human analog that’s remotely close to what you are doing in the realm of computers, they can “abstract” you into §101 oblivion. And trust me when I tell you, this is not the worst of the bunch to be published recently, there are other more transparent result oriented decisions with even more far fetched analogies. As a few more examples I offer you Ex parte Flockhart et al. (Avaya), Ex parte Hafer et al. (Western Union) and Ex parte Qi, all of which have very ugly endings for seekers of patent rights.
One could wonder why the PTO, the main institution for securing rights for inventors, has become so biased? There are two simple answers, one of which is to simply realize that the PTO has long been under the direction and control of ex-employees of large anti-IP companies like Google, entities who have already achieved monopolies in their fields, and don’t want competition. The other is an antiquated understanding of IP “quality” at the PTO that rewards case disposition counts irrespective of the merits of a rejection, and favors reducing backlog and latency over all other factors.
This is why torturing the Alice logic is such an attractive option for Examiners to reduce their short term backlog. What did they not count on, but which is certainly now just coming into plain view, is the significant reduction in patent filings by high tech companies no longer interested in being subjected to random, costly, time consuming prosecution. Congratulations PTO management, in your zealousness to reduce backlog using Alice as “patent application DDT” you succeeded beyond your wildest dreams and won’t even have to worry about that factor at all in a few years!
In later posts I will further quantify and explain the recent PTAB patent rights destruction to give a better sense of who is doing it, and how. Also, I will trace back the jurisprudence and discuss “case 0” (from 2016) and show how it is mutated and spread like wildfire through the PTAB judge’s ranks and infected dozens of opinions since then. Since the CAFC has not had a chance to review any of these atrocities, I predict the arbitrary rulings will continue unabated.
I am sounding the alarm now, because anyone writing an appeal brief needs to understand the ways in which they are rigging the game.