Posts Tagged: "Administrative Procedures Act"

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision issued today, affirmed a Patent Trial and Appeal Board (PTAB) finding that claims to a computer system for identifying eligibility for Social Security Disability Insurance (SSDI) benefits are invalid as patent ineligible. The opinion was authored by Judge Chen. The case originates from an examiner’s rejection of Jeffrey Killian’s claims of U.S. Patent Application No. 14/450,042 under Section 101 as being directed to “the abstract idea of ‘determining eligibility for social security disability insurance . . . benefits’” and lacking anything “significantly more” to satisfy Step 2 of the Alice-Mayo two-part test.

In Part I, I introduced the USPTO’s unpublished guidance document for signatures on powers of attorney, and the incompatibility of that guidance with state law, regulation, and the USPTO’s published guidance. Multiple laws should have caught the problems and led to a corrected document. Today, we’ll look at the USPTO’s pattern of ignoring those laws in multiple rounds of review under the Paperwork Reduction Act.

On July 6, the U.S. Court of Appeals for the Fifth Circuit heard oral arguments in US Inventor v. Hirshfeld, an appeal from a lawsuit first filed in February 2021 to challenge the U.S. Patent and Trademark Office’s (USPTO’s) development of the Fintiv framework for discretionary denials of petitions for Patent Trial and Appeal Board (PTAB) proceedings. Although the appeal comes to the Fifth Circuit following the district court’s dismissal due to the plaintiffs’ lack of Article III standing, much of the oral arguments focused on whether the Fifth Circuit or the U.S. Court of Appeals for the Federal Circuit had proper jurisdiction to hear the appeal.

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S. Supreme Court asking the Justices to weigh in on his challenge of a policy he alleges the USPTO implemented in the 1990s to categorically deny him issuance of any additional patents. Hyatt has been embroiled in litigation with the USPTO for decades and won a previous Supreme Court appeal in 2012.  

In the last few weeks of 2021, patent owner New Vision Gaming & Development filed a motion for reconsideration  of a remand order issued by the U.S. Court of Appeals for the Federal Circuit. That ruling, entered in early December, remanded New Vision Gaming’s appeal of covered business method (CBM) review proceedings back to the Patent Trial and Appeal Board (PTAB) “for the limited purpose” of requesting Director review of the CBM review decisions under the U.S. Supreme Court’s Arthrex standard. New Vision Gaming’s recent motion for reconsideration raises several issues regarding the U.S. Patent and Trademark Office’s (USPTO’s) implementation of Director reviews under Arthrex, making this particular case an important one to follow through at least early 2022.

On September 2, the U.S. District Court for the Eastern District of Virginia issued a decision granting a Motion for Summary Judgment for the United States Patent and Trademark Office (USPTO) and upholding the Office’s view that AI algorithms cannot be listed as inventors on U.S. patents. The court pointed to the Administrative Procedures Act’s (APA’s) strong deference to final agency decisions, barring any egregious errors. DABUS generated outputs corresponding to (1) a fractal design for food container surfaces that may help prevent stacked containers from sticking together and (2) a technique for controlling the timing of flashing warning lights to help attract attention. Dr. Stephen Thaler (DABUS’s creator and owner) filed patent applications on these inventions that were filed around the world, listing Thaler as the applicant and listing only DABUS as the inventor.

On August 20, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s dismissal of an appeal from the United States Patent and Trademark Office’s (USPTO) Patent Trial Background Appeal Board (PTAB) in Security People, Inc. v. Iancu. In particular, the CAFC held that the district court’s dismissal of the suit was correct because Congress “foreclosed the possibility of collateral APA [Administrative Procedure Act] review of inter partes review decisions by district courts, and because Security People [could not] bring an APA challenge when the statutory scheme separately establishe[d] an adequate remedy in a court for its constitutional challenge.”

On May 22, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Odyssey Logistics and Technology Corporation v. Iancu in which the appellate court affirmed the Eastern District of Virginia’s dismissal of claims filed against the U.S. Patent and Trademark Office under the Administrative Procedures Act (APA). The Federal Circuit agreed with the lower court that Odyssey’s challenges to the USPTO’s rules and procedures governing ex parte appeals at the Patent Trial and Appeal Board (PTAB) should be dismissed for lack of subject matter jurisdiction or were barred by the six-year statute of limitations for actions against the U.S. governed by 28 U.S.C. § 2401.