Polling the Bar: An Unscientific Survey of Our Colleagues on Alice

Earlier this month, attorneys and patent practitioners from all over the nation, and far corners of the globe, descended upon Bethesda, Maryland for the 31st Annual Intellectual Property Law Conference of the American Bar Association (ABA). A panel of three distinguished practitioners, Tim Bedard of Visa, Eric Sutton of Oracle, and Gene Quinn, debated The Post-Alice Landscape. The presentation included practical questions about dealing with Alice rejections in patent prosecution. But questions were not just leveled at the panel. The audience was polled on the same questions asked of the panelists, and audience members were able to vote through their cell phones. Results were charted in real time on a projected presentation as panel members spoke.

Although by no means scientific, the polling was a perfect opportunity to see how our patent practitioner colleagues from all over the country (and a few from abroad) think about such things. At the conference as a whole there were attorneys and patent agents, local and well-traveled. They represented solo, small, medium, and large law firms, as well as district courts and the U.S. Patent and Trademark Office (USPTO). Other government agencies attended, such as the Department of Defense, and company in-house legal teams were also present. While most attendees were from the East Coast of the United States, there were attendees from the U.S. West Coast, Brazil, Canada, China, Denmark, Japan, and Pakistan, so say the materials we received at the conference.

Given this selection of ABA conference attendees, what was there to vote about during the Alice panel discussion, and how did they vote?

Who Is Affected?

It has been almost two years since the U.S. Supreme Court set out its opinion in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Since then, over thirty Federal Circuit decisions and over 200 District Court cases have fleshed out the Supreme Court’s decision. Additionally, the USPTO published guidelines and examples, and hundreds of commentators have had their say.

The panel’s first question was “How are you mostly affected by Alice?” Out of 63 audience votes on this first question, 18 answered Litigation, evenly split between patentee (9) and defendant (9). Licensing and “Other” were 6 and 8 votes each, respectively. Unsurprisingly, almost half of those voting (29) were mostly affected in Patent Prosecution. Only two members of the audience said that they were unaffected by Alice. It must be nice.

Out of the 63 initial votes, about 40 audience members continued to vote throughout the rest of the hour-and-a-half session. The particular polling method was to show a question on a slide with four-to-six possible responses. Each response had a distinct code. Texting the code to a common telephone number was all that was needed to vote. Duplicate votes were not prohibited, so there may be a few here and there. I know of at least one because a panel member admitted to it—on stage. It was, after all, free to vote. And that’s right, even panel members had out their cell phones and voted while they were talking.

The Two-Part Test

Delving into how patent prosecution is really done, the next question posed to the panel, and the audience, was “Have you found the Alice-Mayo Two-Part test helpful in overcoming Alice 101 rejections during patent prosecution?” Now, is that a three-part test, or is part two divided into parts ‘a’ and ‘b’? Thank goodness the number of parts of the test matters to very few people. Focusing on the call of the question, six audience members said that they had overcome §101 rejections using the Two-Part test (and nothing else), while two voted that it “seemed” helpful. The overwhelming majority were negative, blasting the Supreme Court’s Two-Part framework as not very helpful (25) or “Completely worthless” (15). Without even gazing up at the real-time polling chart, the panel argued with each other over how pointless the Two-Part test was.

The USPTO’s Guidance and Examples

Things spun a bit more positive for the next question. When asked “Have you found the USPTO’s July 30, 2015 Updated Guidance and Examples helpful in patent prosecution?”, six people said that they relied on them to overcome §101 rejections. The number of people deeming the Guidance “helpful” or “not very helpful” was split twelve to twelve. Seven people said that it was “Completely worthless.” In sum, practitioners appear to be evenly split on whether the USPTO’s Guidance is good or bad.

The Business Method Art Units

And then the discussion turned to the fairness of the USPTO’s art units. When asked “How are you fairing in Business Method Art Units 36xx?”, four people asserted that they are getting cases allowed there. Seven claimed that being in or outside of the business art units made no difference to them. The majority (13) said that they normally try one or two responses in those art units then appeal, while the next largest group (10) said they simply abandoned if they found their applications there. In case you have not been keeping track, a stark two-to-one (23 to 11) majority of practitioners in the audience did not trust the USPTO 36xx business art units with a fair examination. They would rather appeal or abandon.

Do Not Pass Go

When asked “Have you not filed a patent application because of Alice?” the results were more evenly split. While six people said that the aftermath of Alice made no bearing on whether they filed an application, there were almost twice as many (11) that forego filing all of the time or have foregone filing in one or two isolated cases (11). Still others endeavor to modify the claims or disclosure before filing (12) if they see Alice’s take on patent eligible subject matter as a barrier for what they are trying to protect. Undoubtedly, Alice and its aftermath has depressed the number of would-be-filed patent applications. And it would be safe to say that re-formulations and re-work needed for many applications on the margin have increased their cost.

Ariosa v. Sequenom and the Future

Finally, the panel and audience were asked about the invalidated claims in Ariosa v. Sequenom (Fed. Cir. 2015) (en banc denied), for which Sequenom recently petitioned the Supreme Court for certiorari. Asked “Should Sequenom’s claim [1 in U.S. Pat. No. 6,258,540] be considered patent-eligible subject matter?”, an overwhelming 27 attendees out of 40 voted “Absolutely yes” versus two that voted No. Another eleven people said that the subject matter would be eligible if the claims were drafted better. Interesting, not one single person selected the response that the claims were not patent eligible “for non-§101 reasons.”

Perhaps the overwhelming votes for Sequenom’s invalidated claim 1 uncover an undeniable bias in the polling sample. After all, it is more likely than not that those whose livelihoods flourish on broader patent protections likely selected themselves to travel to and attend the ABA Intellectual Property Law Conference. I cannot deny that it is true for myself. Or perhaps the overwhelming votes herald a restoring force to the pendulum of patent rights. The Supreme Court is a political institution.

Conclusion

About forty audience members at the ABA Alice presentation voted through to the end. What are some interesting takeaways? There seems to be an even split on whether the USPTO should be doing more in its Guidance and Examples. That’s not a bad place to poll during an election year. But what is more interesting is that practitioners agree two-to-one that there is a visible failure in the USPTO’s 36xx art units. This is not just anecdotal. Fortunately, the solution may lie in the waves of appeal briefs flowing through the Patent Trial and Appeal Board (PTAB). Either Examiners will be reversed by the PTAB, or the market will adjust so that fewer patent applications are filed.