Patent Riffs and Links – Alice/Eligibility Blog Posts

Latest Tool in the Fight against Alice: USPTO Publishes a New Eligibility Quick Reference Sheet | GLOBALIPMATTERS
USPTO SHEET – “The Eligibility Quick Reference Sheet lists court decisions related to subject matter eligibility in a short three pages, organizing court decisions to fit into the Mayo framework. These court decisions are categorized by concepts that the courts have identified as abstract ideas. The USPTO previously explained in its July 2015 Subject Matter Eligibility Update that “these associations [of Supreme Court and Federal Circuit eligibility decisions with judicial descriptors] define the judicial descriptors in a manner that stays within the confines of the judicial precedent.” The categorized concepts identified by the courts and identified in the Eligibility Quick Reference Sheet include fundamental economic practices, certain methods of organizing human activity, an idea of itself, and mathematical formulas.

How Difficult is it to Judge Patentable Subject Matter? | WRITTENDESCRIPTION.BLOGSPOT
Prof. Risch: “An interesting takeaway from this study was that prosecutors were more accurate (sometimes much more so) than patent litigators. My initial thought was that perhaps litigators were being obtuse, but it occurs to me that two other things may be going on. First, prosecutors are in the business of getting patents (a point the paper makes) and thus have a completely different perspective on validity. In other words, they may have validity bias (that was where the primary differences were) whereas litigators (mostly defense, as the paper notes) might think everything is invalid. (OK, maybe they were being obtuse). Second, prosecutors and litigators typically use different interpretation standards. Interestingly, this cuts the other way, because the broadest reasonable construction, in my view, lends itself to more invalidity findings.”

Is § 101 Impossible To Understand? Survey Says: No | PATENTPROGRESS
Joshua Landau: “As it turns out, and contrary to critics, lawyers are pretty good at understanding whether claims are patent-eligible. Prosecutors were right about eligibility around 67% of the time; litigators fared a little more poorly, getting it right 60% of the time. That’s not too bad, right? Now consider that survey respondents didn’t have the specification of the patent. Or the priority date. Or any other context for the patent. And that they spent, on average, around a minute per claim. A minute per claim and you get eligibility right two thirds of the time. That’s hardly incomprehensible, impossible to understand, or impossible to apply consistently. ‘Attorneys might be more worried about Alice’s scope than they should be’ That’s a direct quote from the article, and one I agree with.”

Insights: Publications Nearly All Post-Alice Eligibility Rejections are Affirmed in Whole by the PTAB | KILPATRICKTOWNSEND
A study of the PTAB: “The rejection type with the highest affirmance rate was the subject matter eligibility rejection. Appeals of eligibility rejections were very unlikely to be successful, with 84% of eligibility rejections being affirmed (or new). (See Fig 2) Most of the eligibility appeals were received from business method art units where 89% of eligibility appeals were affirmed.[3] For the more recent appeals (the 214 additional decisions with appeal briefs filed between July 2016 and January 2017) 93% of the eligibility appeals from business-method art units were affirmed. Thus, the affirmance rate remains high despite the availability of more case law.”

Electronic Medical Records: Not Eligible | PATENTLYO
Expect an appeal to the CAFC? “The examiner finally rejected all 14 claims for on eligibility grounds (withdrawing the obviousness rejection) — concluding that the claims are directed to the abstract idea of ‘providing healthcare by generating and processing medical records…On appeal, the PTAB sided with the examiner – holding that – at a high level of abstraction, the claims ‘can be characterized as collecting, storing, and organizing … and transmitting information. Although the examiner acknowledges that the claims are novel and non-obvious, the PTAB still found no inventive concept.”

Judge Andrews invalidates patent under 101 | DELAWAREIPLAW
“The Court thus viewed the asserted claim as ‘directed to the abstract idea of choosing to play back media with or without playback preferences. Further, it ‘provides no inventive concept, and at most merely automate[s] the abstract idea through the use of a generic, conventional technology. Id. at 12.”