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« Science Application International Corp. v. United States (Fed. Cl. 2018) | Main | Keystone Symposium on Tech Transfer for Medical Advances »

February 08, 2018


" If nothing else, it is now apparent that facts matter in the § 101 analysis. This may make it more difficult to invalidate patents on the pleadings, as well as at the summary judgment stage."

It would also seem that if an examiner, in making a 101 rejection, conclusorily asserts that something was routine and well-known, an affidavit from an expert stating the contrary should be enough to rebut such an assertion.

Define "generic computer"
Define "significantly more"

Define Void for Vagueness

ps, Atari Man, such an affidavit should not be required - the Office has the burden of presenting a prima facie case, and conclusory assertions do not meet that burden. A mere challenge and request for the examiner to PROPERLY meet the burden of providing a prima facie case of ineligibility - including as required under the AIA and under the Office's own requirements for dealing with assertions of fact (this is called Taking Official Notice, by the way, whether or not those words are used) - is sufficient to "rebut."

It would only be after the Office provides that prima facie case would the need arise to rebut with an affidavit.

Facts always matter, and the benefit of this decision is firstly to act as a reminder and secondly to encourage the attorneys for the patentees in these cases to explain the disputed factual issues clearly and straightforwardly to the judges, not all of whom will have had lengthy experience in patent law or with technology.

This tracks with the December 2016 Office Guidance, such as Example 35, where the Office set forth that the test for "something more" included an inquiry as to whether the whole claim, as a single inventive concept, solved a problem in an atypical or uncommon manner. This case should serve as the requisite legal support to run that argument on appeal, provided that the Examiner has failed to show evidence of typicality.

Long time listener, first time caller. For what it's worth, I wrote about just this in a 2013 short essay for the Yale Law Journal Online. It's here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2296033.

Not sure I agree with Atari Man that a single affidavit would be enough to rebut the assertion--and how routine is it to get an affidavit in opposition to an application during prosecution? Even if that's the case, I imagine applicants have a lot of leeway to present documentation that the method employed in the application is novel or at the least unpredictable.

"Well-understood, routine, and conventional" are more, in my estimation, questions of day-to-day practice, different from whether they merely exist in the prior art. That's a tough call--at least a tougher call than, "Is there a TSM or reason to combine elements in the prior art?"

If this goes en banc, we'll see if I'm right. If yes, it'll be a tough road for the PTO to hoe. If no, then it's likely back to business as usual of unsupported attorney characterizations of techniques as "routine" or "conventional"--simply because there's documentation that someone did it somewhere once and published it.

Mr. Sherkow,

Thank you for the link.

How do you feel about the notion that your paragraph (below) merely adds fuel to the fire that the Supreme Court has violated the separation of powers and absconded with the Constitutional power (provided ONLY to the legislative branch) of writing patent law, when it attempts to RE-write that law and insert a "how" when it is MORE THAN CLEAR that Congress in the Act of 1952 not only stripped the Supreme Court of the power of common law evolution (vis a vis "invention") but also went a different path by choosing to branch from the former same paragraph from which 101 comes from and INSTEAD create "obviousness" in 103 and EXPRESSLY stated (in the current version):

Patentability shall not be negated by the manner in which the invention was made.

So.... not only do we have the Court violating Separation of Powers, they are doing so and EXPRESSLY violating the direct words of Congress.

by the way, your passage (emphasis in CAPS added):

"The Mayo Court’s novel test for patent eligibility — whether or not an invention
involves “well-understood, routine, conventional activity, previously engaged in by
researchers in the field” — focuses on HOW AN INVENTION IS ACCOMPLISHED rather than
what an invention is"


(1) Great foresight on the administrative law issue. Interestingly, many patent applicants now frequently find themselves in the situation where they would love for the PTO to provide evidence that a recited limitation or step was even known, much less conventional.

Your point re the distinction between known and conventional is well taken, and as you probably noticed the Fed. Cir. indeed noted this as well in this decision, indicating that “[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art” as “[t]he mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer v. HP Inc., appeal no. 2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018).

The PTO itself had already acknowledged this, noting in the MPEP that “[a]n additional element (or combination of additional elements) that is known in the art can still be unconventional or non-routine”. MPEP 2106.05(d)(I)(1). The MPEP even notes that it’s possible where “features were taught by a single prior art reference (thus anticipating the claims) … [that] the features were not conventional and thus were considered to reflect an improvement to existing technology”. Id.

(2) Interesting argument re discriminating against the manner of invention. Do you think the prohibition with respect to "[p]atentability" should be construed to constrain the Supreme Court's ability to articulate a patent eligibility exception?

I also wanted to note that your paper suggests that "[t]he third justification, however, concerns the method by which the invention is implemented, whether a 'conventional activity' or a unique method", which makes sense, but then characterizes this as a "new focus on how an invention is conceived", which seems to be a different characterization. Sherkow, 122 Yale Law J. Online 351, 352 (2013)

The change in context from how an invention is "implemented" to how an invention is "conceived" doesn't seem directly supported, and indeed the Court's indications regarding conventional activity seem to relate to implementation and not conception (e.g. the conventionality of claim limitations or steps of a claimed invention, rather than the conventionality of steps involved in conception of an invention). (There may be some nuance in the pharma arts that I'm not appreciating.) Regardless, I think there may well still be an interesting argument there, but it may need a bit more development.



I recommend that your development efforts look (first) backward to the genesis in the Act of 1952 for the break-out of what was once a single paragraph into the structure of law that is now the separate sections of 101, 102, AND 103.

What you see now with the Court is nothing more than their attempting to recreate patent law prior to that Act of 1952, in which they still had common law authority to shape "invention."

Congress had reacted against an anti-patent Court of the '30's and '40's (from which time the SELF-describing quote of "the only valid patent is one that has not yet appeared before us" came into being), and had not only stripped the Court of that common law authority to shape the meaning of the word "invention," but had also - and deliberately - chosen a DIFFERENT PATH, going the route of "obviousness."

In your research, make sure that your read the 1962 (IIRC) article by Judge Rich on why Congress instituted the path of obviousness. THAT Jurist knows best because in fact he helped to write FOR Congress those very words.

My post last evening would have been better had I read more than just the abstract of the Sherkow piece.

Having now read the item all the way through, I see that several threads LONG on the various patent blogs (including "overlap" and "ignoring prohibitions on 'how' that Congress had set forth in 1952) are alluded to in the article.

Not as direct or forceful as I may have hoped for (in view of the Separation of Powers doctrine and the fact that authority for writing patent law was Constitutionally allocated to only branch - and that one branch was not the judicial branch), but the piece DOES appear to question the legitimacy of the Supreme Court acting as they have done.

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