PTAB Grants Additional Briefing to Consider the Impact of USPTO’s Revised 101 Guidance

By Gene Quinn & Steve Brachmann
January 12, 2019

The PTAB not only assented to Mirror Imaging’s suggestion that a five-page brief be entered in advance of the hearing addressing the impact of the Revised 101 Guidance but added that parties may submit one brief for each of the four CBM review proceedings which were petitioned by Fidelity.

PTAB Grants Briefing to Consider PTO's Revised 101 Guidance. Andrei Iancu. August 2018. Copyright Gene Quinn 2018.

Director Iancu has said for months that he wants the USPTO to “speak with one voice.” With the PTAB accepting briefing on the importance of the Revised 101 Guidance, he may be getting his wish.

On January 10th, the Patent Trial and Appeal Board (PTAB) entered an Order granting additional briefing in a series of covered business method (CBM) review proceedings challenging patents owned by Mirror Imaging, LLC. The order follows a teleconference between the PTAB, Mirror Imaging, and petitioner Fidelity Information Services to discuss the effects of the 2019 Revised Patent Subject Matter Eligibility Guidance published a few days prior in the Federal Register. This is potentially big news and could be a signal the Director Iancu’s initiatives to have the Office “speak with one voice” are succeeding.

“It has always seemed illogical and unfortunate to me to suggest that the PTO should have differing Section 101 standards depending on whether you are on the Patent Office side or the PTAB,” explained Todd Dickinson, former Director of the USPTO and senior partner at Polsinelli when reached for comment on this development. “The Agency should speak with one voice, to avoid confusion at a minimum, and that would be the new Guidelines.”

Chain of Events

Without diving into the merits of the CBM review, this series of events began with a teleconference. During that teleconference the patent owner Mirror Imaging suggested that each party file a brief addressing the revised guidance on subject matter eligibility and its impact on the pending CBM proceedings, with briefing not to exceed five pages. Not surprisingly, the petitioner Fidelity argued that additional briefing was unnecessary.

After that teleconference, the Order issued by the PTAB granted Mirror Imaging’s request that a five-page brief be entered in advance of the hearing, but also added that parties may submit one brief for each of the four CBM review proceedings which were petitioned by Fidelity. The PTAB’s Order further granted an extra 15 minutes of argument time to address issues raised by the additional briefings in the case. The parties’ presentations must be limited to those arguments and evidence raised in the briefs submitted.

[[Advertisement]]

The Revised 101 Guidance

The revised guidelines, first announced by USPTO Director Andrei Iancu last year and recently published in the Federal Register, relate to the procedures used by the Office, including those employed by the PTAB, to determine whether a patent claim is directed to judicial exceptions, such as laws of nature, natural phenomena or abstract ideas. There are two major aspects to this revision. First, abstract ideas may now be grouped into categories such as mathematical concepts, methods of organizing human activity or mental processes. Second, a patent claim reciting a judicial exception isn’t found to be directed to that exception if that exception is integrated into a practical application. These revised guidelines impact the first step of an examiner’s or administrative patent judge’s (APJ’s) application of the two-step Alice/Mayo framework for determining subject matter eligibility of patent claims under Section 101 of U.S. patent law.

“The guidelines are generally considered more favorable to inventors and should result in more patent grants. A welcome change,” said Russ Slifer, former Deputy Director of the USPTO and current principal with at Schwegman Lundberg & Woessner. “The panel decision to extend briefing may provide the Federal Circuit an opportunity to address the guidelines before too many patents are issued in reliance on them.”

Bob Stoll, former Commissioner for Patents and current Co-Chair of the Drinker Biddle IP Department echoed Slifer’s comments, applauding the new guidance and saying it is a step in the right direction, but saying it is unclear how courts will interpret the guidance once given a chance. “An early decision on these matters will add needed certainty to the patent system,” Stoll told IPWatchdog. “And all parts of the Office should be bound by guidance from the Director of the Office!

Conclusion

In an email sent to IPWatchdog.com, Schulze added: “I have a feeling that this is groundbreaking as far as the PTAB is concerned. I hope this is the beginning of a more USPTO team-oriented, proactive, and forward-looking PTAB under the guidance of Director Iancu.”

It does seem as if this could be a pivotal moment in the history of the PTAB specifically, and the USPTO more generally. If Director Iancu can achieve the goal of having the Patent Office speak with one voice, with patent examiners and the PTAB all following the same law and guidance, he will have achieved a united Patent Office that has been elusive, but desperately needed.

 

Image Source: Gene Quinn © 2018.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. Anon January 12, 2019 2:27 pm

    Would it be inappropriate to note that outside of the USPTO, these guidelines do not have the force of law, such that even (or especially) IF the guidelines have the noted (desired?) effect, we will STILL have disparate “voices” speaking on 101?

    There are a couple of necessary conclusions that follow that question. I have indicated a few already in the blogosphere – let’s see if others can pick them up.

  2. concerned January 13, 2019 5:41 am

    It would be nice if my appeal is sustained and I am granted a patent, since the process does have a practical application of solving a 62 year problem beyond the reach of professionals and experts.

    Let the patent infringer prove in courts beyond the USPTO jurisdiction that my process is routine, convention and well understood based on their evidence that does not exist. Why did I have the only burden of proof, which I met with an undisputed truckload of evidence that left the examiner with no comment (other than 3 times on a conference call he said I do have patentability)?

  3. Mike January 13, 2019 10:38 am

    @concerned

    Record and transcribe your conference calls and put those in the record. Make that factual as well.

  4. Paul Morgan January 13, 2019 12:39 pm

    Thanks for this article. Please post the actual CBM decisions when they come out, so that we can see what these PTAB APJ’s actually do with these 101 guidelines based briefs.
    The comments posted here from Todd Dickinson and others seem to indirectly confirm the Patently-O comment that the PTAB has not previously felt bound by PTO guidance in the MPEP or guidance letters in contested cases and that the express application of these guidelines to issued patents as well as applications is unusual?

  5. Anon January 13, 2019 3:04 pm

    To Mr. Morgan’s point above, I would point out the simple fact that the PTAB is NOT acting as an Article III court for a fully empowered grant of a patent with ALL of the sticks in the bundle of property rights extant.

    At the institution decision point, and thus at the point of bringing the item back within the purview of the PTAB (and thus at the point to which the Director’s protocol inures fully to the PTAB), there are sticks in the bundle of property rights that are taken.

    Proceedings in the patent office (and that includes the PTAB) have also long known and recognized to be capable of generating decisions that would be different than those generated in an actual Article III court. While one of these drivers was recently changed (the application of BRI), nonetheless, the distinctiveness between an actual Article III court and the PTAB should not be forgotten.

    Not directly related to the point at hand, another example (problematic in its own right) is the distinction of standing.

    There is a bottom line sense of difficulty that was perhaps not appreciated by the Congress that passed the AIA in the “rush” (some may say “bought” or “captured”) of passing the AIA and introducing the post grant mechanisms.

    At the very least, the AIA was very poorly written in several key spots.

    Perhaps a lesson learned then, in comparing the AIA with the prior most massive legislative change: the Act of 1952 (to which, expertise in the patent field was brought to bear).

  6. Anon January 15, 2019 10:53 am

    Is anyone else concerned that this guidance is completely made up and spits in the face of numerous Federal Circuit decisions? If I got a patent based on this I would be terrified to enforce it. This is at best loosely grounded in cherry picked findings with countless examples of findings that would pass the made up “practical application” test but still found ineligible by the courts. I’m sure a large company that dislikes patents like Google is going to challenge this and in a few years we will be right back to where we are now. This is at best false hope.

  7. Anon January 15, 2019 5:09 pm

    Sister Anon @ 6,

    Most times the use of a same moniker (even one that uses a pseudonym related to the term anonymous) is discouraged.

    This is especially the case in which the position chosen is at odds with the known positions of the already (often) used pseudonym.

    Here, we may NOT be at odds with a very real effect of the guidance (that being, the guidance will NOT control what may later happen in an Article III court).

    However, the tone of your post reflects a view that “the courts must be right” EVEN though what the courts have done – as explicitly noted by Director Iancu – cannot be right. Note that this “cannot be right” is because the courts have rendered conflicting and contradictory “new law.”

    You may be (as opposed to ‘absolutely are’) correct in that a court MAY find something inelibigle that has passed these new guidelines.

    Critically though, you may ALSO be incorrect in that a court MAY find something ineligible that has passed these new guidelines – and the item under consideration would be the exact same item.

    Whether this executive branch change is a false hope or not remains to be seen. But let’s not pretend that the judicial branch current view is some clear and unambiguous or non-contradictory thing. Your “tone” with the phrase “at best loosely grounded in cherry picked findings” is NOT an accurate representation – either of the action of the executive branch, nor of the judicial branch from which those “pickings” are taken from.

    I invite you to use a different moniker so that regulars will not be confused.

    Thanks in advance.

  8. Mark Nowotarsk January 15, 2019 5:32 pm

    For those with 101 ex parte appeals pending, I wonder if the TC directors would grant applicants an interview with the examiners to see if it might not be possible to now get the claims in condition for allowance under the new guidance.