On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility.  The USPTO published a list of eighteen questions in anticipation of the event, dealing with various issues in eligibility theory, legislative changes and so forth, and requesting comments in response.  Here are the answers I will be submitting to the Office.

Impact of Judicial Interpretation of Section 101

1. How has the Supreme Court’s interpretation of 35 U.S.C. 101 in the past several years affected the enforcement of patents and the development of subject-matter- eligibility law?

The Supreme Court’s current definition of a law of nature is scientifically incorrect.  The analysis of this issue is quite complex, but I will attempt to summarize the issue.  The Court’s definition in the Mayo case came down to: “the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.”


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In June, the Government Accounting Office (GAO) issued a performance audit of the U.S. Patent and Trademark Office (USPTO), “Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity.” [1] The report was prepared at the request of the House Judiciary Committee, which asked the GAO to examine trends in patent litigation and identify opportunities to improve patent quality. To address the latter, the GAO attempted to identify the factors that contributed to “low quality patents.” The GAO’s analysis of these factors was based primarily on a lengthy survey of USPTO patent examiners on various factors that affected the quality of the applications they examined. The GAO report identified Requests for Continued Examination (RCEs) as a key issue impacting patent quality:

Requests for continued examination: Applicants are currently allowed to file an unlimited number of requests for continued examination, which is a request by an applicant to reopen examination of the patent application after the prosecution of the application has been closed. Applicants request continued examination most often after final rejection of an application, according to USPTO officials. Such requests provide applicants with virtually unlimited attempts to secure a patent, which is problematic for patent quality, according to some stakeholders. Some stakeholders also told us that such unlimited requests can wear down examiners, making them more likely to eventually grant the patent. While USPTO has reached out to patent applicants to learn why they were using such continued examinations, the number of requests for continued examination continues to pose a burden for the agency’s examiners. [2]

In its introductory paragraph the GAO report expressly linked “low quality patents” to “an increase in patent infringement suits,” and in the above quotation it links RCEs to “low quality patents,” stating “Such requests provide applicants with virtually unlimited attempts to secure a patent, which is problematic for patent quality, according to some stakeholders.” Other than the “stakeholders” the GAO offers no evidence for this assertion.
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The Federal Circuit’s recent decision in McRO has been interpreted by many in the patent community as a further signal that the so-called “pendulum” is swinging back to a more favorable position for patentees.  There is some superficial evidence of this possibility.  Let’s look at the numbers. September 2016 was the first time since Alice that the number of federal court decisions finding eligible subject matter (16) exceeded those finding ineligible subject matter (13).  Those sixteen decisions also mark the highest number of eligibility decisions in a single month.  The most significant contribution to the switchover is that only two motions to dismiss under § 101 were granted in September, compared to nine that were denied, the largest gap since March 2016 (6 granted, 10 denied).
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Given the volume of district court decisions regarding Section 101, I typically don’t find ones that stand out enough to warrant discussion. But last week’s decision by Judge Stark in MAZ Encryption Technologies LLC v. Blackberry Corporation is an exception. The opinion demonstrates a rigorous application of the requirements of a Rule 12(c) motion for judgment on the pleadings, as well as an integrated approach to the Mayo test. The opinion is noteworthy as well because Judge Stark is no pushover on Section 101: Before MAZ he granted six of nine Section 101 motions (including two 12(b) motions) invalidating over a dozen patents. Judge Stark also wrote the opinion invalidating the patents in the Federal Circuit’s Mortgage Grader case.
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My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the courts and the USPTO handle the Mayo test. First, the mathematical nature of the invention was not fatal; it was vital. One of the favorite buzz-saw arguments for finding ineligibility is that claims for computer-implemented inventions recite—either directly or indirectly—mathematical operations. This is about as insightful as stating that patent claims in U.S. patents are written in the English language. The invocation of the dreaded mathematical algorithm Jabberwocky and talismans of Benson and Flook often convince jurists that the claims are abstract.  The McRo court did not run scared here. Quite the contrary, the McRo court relied on the underlying mathematical nature of the rules to demonstrate non-preemption: “Defendants concede an animator’s process was driven by subjective determinations rather than specific, limited mathematical rules. . . . It is the incorporation of the claimed [mathematical] rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks.” This holding should be heeded by the courts and the USPTO to not treat all mathematically implemented inventions as necessarily abstract.
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In Part I, I explained some general criteria for laws of nature, considering the prototypes of Newton’s laws and Einstein’s E=mc2. Now I’ll turn to whether there are laws of nature in biology. Biological generalizations, such as those identified by the courts (and similarly found in many rejected patent applications), do not meet the various criteria used to identify laws of nature. Most significantly, they are not universal—they apply only to specific characteristics of human biology. And while in some cases they allow for predictions, they are not reductionist: They do not explain more specific phenomena in more general terms. In many cases, the generalizations are not objective and independent of human concerns but entirely dependent on them—for example the alleged law relating specific genes to elite athletic performance. Mother Nature does not concern herself with Usain Bolt’s sprinting prowess. The reason that biological generalizations are not universal is that they are the result of evolution—they are contingent outcomes, they could have been otherwise. Indeed it is possible that they could not have arisen at all. This thesis is known as the Evolutionary Contingency Thesis.
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The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D computer animation, specifically how to synchronize positioning of the lips and facial expression of a 3D character to correspond to the character’s dialogue, thus providing a realistic impression of the character speaking. Here is the claim:

A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

The court held that this claim is not directed to an abstract idea, but reached this result in a new way, using preemption. Here’s how they did it.


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I believe that the opinions of the Federal Circuit do not reflect a deep understanding of science and technology. In this blog I’ll focus specifically on the issue of laws of nature. It appears that the Federal Circuit has uncritically accepted the Supreme Court’s statement in Mayo that a law of nature is any natural relationship that exists “in principle apart from any human action.” In Genetic Technologies v. Merial*, the panel (Dyk, Prost, Taranto) held that the “linkage disequilibrium between the non-coding and coding regions,” the condition in which certain alleles at two linked loci are non-randomly associated with each other, “is indisputably a universal, inherent feature of human DNA” and thus a law of nature. The panel in Ariosa (Reyna, Linn, Wallach) held that Sequenom’s claims to identifying parental cell-free DNA “begins and ends with a natural phenomenon. Thus, the claims are directed to matter that is naturally occurring.” Judge Dyk in his concurrence with the denial of en banc review in Ariosa clearly accepted the Supreme Court’s definition, saying, “Mayo contributed only routine application to a law of nature that was already well known.” In Rapid Litigation Management v. CellzDirect, the panel (Prost, Moore, Stoll) skipped the question of whether the ability of liver cells to survive multiple freeze-thaw cycles was a law of nature: “The district court identified in these claims what it called a “natural law”—the cells’ capability of surviving multiple freeze-thaw cycles. We need not decide in this case whether the court’s labeling is correct.” Instead, the court engaged in the convoluted exercise of whether the claims were “directed to” this ability. While the result of this decision was correct—the claims were patent eligible—a more direct path to that outcome would have been a finding that there was no law of nature being claimed at all.
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Over the past two months, the trends I’ve discussed in my previous blogs on AliceStorm have continued and become more entrenched. In particular, the Federal Circuit has been quite active, issuing nine decisions since late June. These decisions lay out a theory of patent eligibility that in my view is divorced from both scientific reality and how innovation actually occurs. I’ll discuss those points below, but first let’s do the numbers. June, July and August showed an uptick in the number Section 101 decisions from April and May, the majority of these being motions to dismiss and judgments on the pleadings. The rates of invalidity holdings continue to be steady: 70% overall, and 66.3% in the district courts. Success on motions on the pleadings is up to 68.1%.
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The White House recently announced the Cancer Moonshot Task Force, an effort to “focus on making the most of Federal investments, targeted incentives, private sector efforts from industry and philanthropy, patient engagement initiatives, and other mechanisms to support cancer research and enable progress in treatment and care.”  Yesterday, in support of this project, the White House and the USPTO launched “Patents 4 Patients,” an initiative to “free fast-track review for cancer treatment-related patents.”  More specifically, the objective of the program “is to complete the examination of an application containing a claim(s) to a method of treating a cancer using immunotherapy within twelve months of special status being granted.” 

In theory this sounds like a great idea. In practice, there’s a significant problem:  Section 101 and the scientifically incoherent definition of a ‘law of nature’ imposed by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  In Mayo the Court essentially ruled that any natural relationship or correlation that “exists in principle apart from any human action” sets forth a law of nature, and thus is not patent eligible without the addition of "significantly more."  


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