Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101.  Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional guidance to Patent Office examiners, and various analyses of invalidation rates in the federal courts. (We touched on invalidation rates ourselves in our Bilski Blog update in August, at which time the Federal Circuit’s cumulative invalidation rate since July 2014 was hovering north of 88 percent.)

One topic has received little attention, however: The rulings of the Patent Trial and Appeal Board on pre-grant § 101 examiner rejections appealed by applicants.  In my opinion, this constitutes the proverbial elephant in the room for patent prosecutors.

Continue Reading Still No Path Out of the 101 Swamp?

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that the primary concern was to avoid preemption of "fundamental building blocks" of human ingenuity.  The Court specifically avoided any suggestion that software or business methods were presumptively invalid.  But those concerns seem to have gone unheeded.  The Court's attempt to sidestep the tricky problem of defining the boundary of an exception to patent eligibility—"we need not labor to delimit the precise contours of the "abstract ideas category in this case""—has turned into the very mechanism that is quickly "swallow[ing] all of patent law.” The federal courts, the Patent Trial and Appeal Board, and the USPTO are using the very lack of a definition to liberally expand the contours of abstract ideas to cover everything from computer animation to database architecture to digital photograph management and even to safety systems for automobiles.

Let's look at the numbers to present an accurate picture of the implications of the Supreme Court’s decision. My analysis is a data-driven attempt to assess the implications of Alice one year out. It is with an understanding of how the Supreme Court’s decision is actually playing out in the theater of innovation that we can better project and position ourselves for what the future holds.

Alice at Court

Table 0 Fed Courts

As of June 19, 2015 there have been 106 Federal Circuit and district court decisions on § 101 grounds, with 76 decisions invalidating the patents at issue in whole or in part.  In terms of patents and claims, 65% of challenged patents have been found invalid, along with 76.2% of the challenged claims. 

Continue Reading The One Year Anniversary: The Aftermath of #AliceStorm

It's been six weeks since my last AliceStorm update, and we've had plenty of action: twelve §101 decisions, and fourteen patents invalidated in just that period. That said, the success rate of motions on the pleadings is dropping, now down to a mere 69.6%. At PTAB, ten new institution decisions, all of which were granted on ineligibility grounds. And PTAB continues with its 100% kill rate, with seven (!) final decisions invalidating patents.

Here's the data.

Total

Total Invalid

% Invalid

+/-

Fed. Cir and 
Dist. Ct. Decisions

90

63

70.0%

-3.9%

Patents

215

131

60.9%

-10.4%

Claims

4,497

3,282

73.0%

-7.3%

Motions on Pleading

46

32

69.6%

-7.6%

PTAB CBM Institution Decisions on 101

51

44

88.5%

1.52%

PTAB CBM Final
Decisions on 101

27

27

100%

 0%

Continue Reading Tracking #AliceStorm: Spring Showers Continue to Rain Patent Destruction

Today Fenwick & West launched a new website on which users can easily browse the Post-Alice decisions of the PTAB, the Federal Circuit, and the district courts to see how the law on patent eligibility is evolving. The purpose of this site is to allow those who want to learn more about the subject to easily browse cases and locate decisions that may be of interest to them, as well as to compare decisions involving different types of inventions and coming from different tribunals. We welcome comments from users on how we can grow this site to be of greatest use to the community.  

This is the second such website Fenwick has produced, the first being devoted to decoding PTAB decisions. Patent law continues to change week-by-week, and we want to make it as easy as possible for people impacted by those changes to best understand them. 

Check back on these sites frequently, as our team updates the contents regularly.

Fenwick & West has launched an interactive PTAB Database that details proceedings filed with the USPTO’s Patent Trial and Appeal Board – providing quick and easy access to information about PTAB decisions.

With the creation of PTAB by the U.S. Patent and Trademark Office, core aspects of resolving validity disputes are now governed by newly designed post-grant opposition proceedings. Fenwick’s database offers a searchable tool to follow the latest developments in the post-grant space and to examine key takeaways from recent PTAB decisions.

PTAB Database Proceedings
The PTAB database is designed to help users draw insights into post-grant proceedings trends as they begin to emerge. Currently, the bulk of cases deal with prior art issues, but in both Covered Business Method (CBM) proceedings and in Post-Grant Review proceedings issues of patent eligibility under Section 101 arise. Information about new cases will be added to the database regularly.

The dots on the graph represent recent PTAB decisions. The dots are sorted chronologically by decision date and color coded by issue category. Users choose categories by checking the corresponding box and scrolling over each dot to view details about that proceeding, including the decision date, case name and key takeaways.

PTAB Database Categories
To access the PTAB database, click here: PTAB Database