Ex parte Bolivar (PTAB 2018)

PTAB Affirms Patent Eligibility of Claims for Using Dwell Time to Rank Search Results

By James Korenchan --

In a decision issued last month, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office reversed the final rejection of all pending claims in U.S. Application No. 12/814,020, for which the real party in interest is eBay.

The claims at issue are directed to methods and systems for managing how search results are ranked and presented to a user of a trading or e-commerce application.  The application aims to balance the desires of buyers, sellers, and intermediaries, to best present "items" (i.e., products and services) that are being offered for sale, to increase the chances that a "transaction" (e.g., a sale) involving such items will occur.  To accomplish this, the claimed invention involves ranking listings based at least in part on "dwell time" -- that is, the amount of time that the user spends interacting with or viewing a webpage containing information about a listing of an item for sale.  More particularly, dwell time refers to the time that elapses between when the user navigates to such a page from a display of search results and when the user navigates away from the page.

The claims had been rejected under 35 U.S.C. § 101 as being directed to an abstract idea.  Representative claim 18 is shown below.  The other independent claims (a system and CRM) recite similar limitations.

18.  A method comprising:
    identifying a plurality of listings stored in a listing database as search results;
    determining, using a processor, a respective dwell time associated with each of the plurality of listings, the dwell time based on an elapsed amount of time one or more users view a page describing the listing, and the dwell time associated with a likelihood o f a transaction occurring with respect to the listing; and
    ranking the listings composing the identified plurality of listings based at least in part on the respective dwell time associated with each of the plurality of listings.

The bulk of the Examiner's position analogized the claims to advertising, at one point calling the claims a "business model for advertising on the web."  More particularly, the Examiner cited the Federal Circuit's decisions in Cyberfone and Digitech, arguing that the claims are directed to the abstract idea of "organizing search listings, a type of advertising, ranked by the time that a user views the advertisement" or, put simply, "sales and marketing actions or behaviors."  The Examiner also argued that claims recite generic computer functionality and do not recite any limitations that would add significantly more than the alleged abstract idea.

In the briefing, the Appellants attempted to argue that the Examiner did not establish a prima facie case of patent-ineligibility, but the Board disagreed.  The Appellants also argued that the claims are directed not to advertising, but rather to a "specific way in which relevant search result can be identified and ranked" (i.e., using dwell time), and thus provide an improvement to computer technology similar to patent-eligible claims in cases such as DDR Holdings.  The Board agreed with this argument, particularly noting the recited use of dwell time and how the invention, similar to that in DDR Holdings, addresses an "Internet-centric challenge":

We determine claim 1 is directed not only to the "business idea" of organizing (ranking) search results, but claim 1 also is directed to the use of dwell time, which is an Internet-centric challenge.  . . .  Thus, just as in DDR Holdings, here Appellants' claim 1 is not directed to an abstract idea because it does "not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet."  Claim 1 is not directed to an abstract idea because it "is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks."

(citations omitted)

The Board thus reversed the Examiner's rejections.

While welcome, this decision is further evidence of the Board's inconsistent patent-eligibility determinations.  One could imagine a different panel reaching the opposite decision.  Still, the bar for patent-eligible improvements to computer technology is often set too high, and this decision is a refreshing entry that lowered the bar.

Another thing worth noting:  the Examiner's rejection here appeared to lack a great deal of substance, yet the Board did not agree as much.  For example, the Appellants repeatedly pointed out in their briefings and responses that the Examiner did not attempt to articulate why the claims are similar to Cyberfone and Digitech.  Less substantive § 101 rejections weren't all that uncommon years ago (and occur a bit too often even today), but it is still a bit surprising that the Board dismissed the Appellants' arguments to this point despite so matter-of-factly reaching a conclusion of patent-eligibility in this short decision.

Ex parte Bolivar (PTAB 2018)
Panel:  Administrative Patent Judges Strauss, Barry, and Bennett
Decision on Appeal by Administrative Patent Judge Barry

Comments

[Nancy Linck]

As noted in my IP 360 article, it's time for a legislative fix. The PTO's and courts' inconsistent application of section 101 will continue as long as the Supreme Court's present interpretation lasts.

[EG]

"[I]t's time for a legislative fix. The PTO's and courts' inconsistent application of section 101 will continue as long as the Supreme Court's present interpretation lasts."

Hey Nancy,

Agree completely, but we may need more than just a legislative fix to section 101. Congress really needs legislatively "scream" at SCOTUS to stay out of Congress' domain to articulate what patent policy should be and to reaffirm that the Federal Circuit should be the primary arbiter of patent law jurisprudence. Indeed, if SCOTUS refuses to "take the hint" on this, Congress may need to consider the "nuclear option," namely stripping SCOTUS of any appellate review of patent law matters. For those who think that is beyond Congress' power to do, I would suggest checking Section 2 of Article III of the Constitution which clearly says that Congress regulates appellate jurisdiction other than that expressly given to SCOTUS. Please note that when the CCPA, the predecessor of the Federal Circuit, was created, there was no provision for appeal to SCOTUS; the right to appeal was added later by Congress

That being said, the current make up of the Federal Circuit and the current Chief Judge gives me and likely others great pause for concern as to how even those legislative fixes will be applied as the current make up of the Federal Circuit is the most hostile I've seen in terms of how they treat patent rights. In other words, the make up of the Federal Circuit needs to change as well, especially adding more judges with technical/science backgrounds and whose view of patent law is far less hostile and biased against patent rights.

[Skeptical]

"Please note that when the CCPA, the predecessor of the Federal Circuit, was created, there was no provision for appeal to SCOTUS; the right to appeal was added later by Congress"

A million times - YES !

[Paul Cole]

@ EG

Have you thought that if subject matter falls as a matter of substance and not mere outward appearance within one of the four eligible categories of Section 101, it cannot at the same time fall into one of the judicial exceptions without inadmissible judicial amendment of the statute or issues of separation of powers? The late Justice Scalia was well aware of the point and there is a section on it in the Scalia and Garner book on the interpretation of legal texts.

It follows that a congressional fix is NOT needed - merely care on the part of patent professionals to ensure that the claims that are put forward DO fall POSITIVELY into one of the four eligible categories accompanied by proper explanation of relevant precedential decisions and the technical facts of the case in question.

[Greg DeLassus]

"Indeed, if SCOTUS refuses to 'take the hint' on this, Congress may need to consider the 'nuclear option,' namely stripping SCOTUS of any appellate review of patent law matters."

Why is this a "nuclear" option? This is not an *extreme* proposal. I think that this jurisdiction stripping should be a part of any legislative fix. Leave the CAFC as the last word on patents.

[Skeptical]

Mr. Cole,

Sorry, but what you state is not so, as even claims within the Alice case were NOT AT ISSUE before the Court (both sides having stipulated that the "statutory category" portion was positively met.

I do not enjoy saying this, but it appears to be needed to be said: I told you so.

[EG]

Hey Greg,

The reason I characterize jurisdiction stripping of SCOTUS as the "nuclear option" is that it is drastic, even if it is a necessary legislation fix. Even suggesting such an option will garner "howls" from the anti-patent crowd. Also, with the current make up of the Federal Circuit which tends towards the anti-patent, including its currently weak Chief Judge, additional Federal Circuit judges that are more like Newman will need to be added to rectify this current anti-patent imbalance.

[Skeptical]

Careful there EG, as Greg is noted to be of a group that does not believe that the label of "anti-patent" carries any discernible meaning.

And you are further correct in that the CAFC has been far too brow beaten by the Supreme Court to act as a decent type of "last word" on patent law matters and (thus) further action from Congress may well be necessary in order to create a meaningful Article III body of review.

[Greg DeLassus]

"[J]urisdiction stripping of SCOTUS... is drastic..."

Hm, I think that you are letting yourself be fooled by the propaganda. As you have already noted, the CAFC's predecessor court had no route of appeal to the SCotUS. In other words, to take the CAFC out of the SCotUS' appellate jurisdiction would not be any sort of major development. It would merely be a return to the status quo ante. We should not pre-emptively concede the ill-informed talking points of those on the other side of the legislative reform debate. Jurisdiction stripping is a sane but minor reform. Neither drastic nor "nuclear."

[Paul Cole]

@ Anon

A quick re-scan of the Alice opinion does not seem to deal with eligible categories. As you probably know the case better than me, can you quote the relevant passages?

[Skeptical]

Mr. Cole,

One would need to look at the case proceedings to see what each side had stipulated to (that the statutory category portion of 101 was NOT at issue, having been agreed to by both sides).

Also: See page 1: "merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention." - which admits that certain claims REQUIRED computer implementation.

See page 3: "All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well."

See as well pages 3 and4 for a general discussion of the highly fractured CAFC version of Alice.

See page 11: "The introduction of a computer into the claims does not alter the analysis at Mayo step two."

Read that carefully: a computer, admitted to be REQUIRED as part of the claim as a whole, and which would satisfy your view of "does the claim fall squarely into a statutory category" is excised by the Court as "not counting." (and then step back to paragraph one on that page:

"A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”

See also page 13:
"Given the ubiquity of computers, see 717 F. 3d, at 1286(Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”

YOUR view here (squarely meet a statutory category) is dismissed as "drafting effort," as if a claim -- properly drafted to meet the actual words of Congress -- may still be "tricky" enough to violate the feelings of the Supreme Court.

Note then the own "scrivining" of the Court in how they turned the 101 question into some "150 years" view, and thus "drafted out" what actually happened in 1952 when Congress removed the power of common law setting from the judiciary, removed "inventive concept" (also known as gist of the invention) and REPLACED that view of the law with 35 USC 103 (carved out of the former single paragraph).

See also page 12:
"In holding that the process was patent ineligible, we rejected the argument that “implement[ing] a principle in some specific fashion” will “automatically fal[l] within the patentable subject matter of §101.”

End of 13 and beginning of 14 flatly reject your view. "Depending on the draftsman's art" is a death knell for your view.

Not sure how you missed all of this in your quick re-scan...

[Skeptical]

Where does the Court get the authority to require "more than a drafting effort," if -- in fact -- that type of "drafting effort" is what Congress set out as being needed under the law?

There is NO sense of "interpretation" that suffices to realize exactly what the Supreme Court is doing here: the Supreme Court is re-writing the law to have "something more" than what is written by Congress.

NOT ONLY is this re-writing itself Void for Vagueness (take your pick of a number of undefined terms); NOT ONLY is this re-writing itself a violation of separation of powers; BUT ALSO this re-writing is based on a purely conjectural "MAY" and "might" that shows a lack of PRESENT case or controversy at the very heart of what the Court pins its supposed authority upon.

Maybe Mr. Cole should up his game. His penchant for wanting to merely apply "care" to the writings of the Supreme Court severely miss just how bad those writings - in and of themselves - really are in view of the Rule of Law.

(and please, let's not here the excuse that Mr. Cole is not a US citizen - his advocacy already places himself beyond that "excuse")

This "three strikes" seems impervious to any academic analysis. So why has one not been forthcoming? It's not like these types of Constitutional infirmities will simply go away with time.