Obviousness Can be Based Upon a Single Prior Art Reference, but…

Linda Chan, Paralegal

Recent decisions by the Federal Circuit have ruled that obviousness under 35 USC 103 can be based upon a single prior art reference. While anticipation rejections under 35 USC 102 have always been able to rely a single prior art reference that, within its four corners, discloses all of the elements recited in a patent claim, historically obviousness rejections usually required more than one reference. In fact, obviousness rejections were traditionally used when a single reference did not disclose all of the claim elements, and two or more prior art references must be combined to provide all of the elements, obviousness is the normal route to establishing unpatentability.

In some cases, obviousness has been found where only a single prior art reference, which didn’t disclose all of the claim elements, was cited, and “common sense” was cited to provide the missing element(s). In such cases, the Federal Circuit has ruled that the application of common sense requires explicit and objective support. In its decision in Arendi v. Apple, 832 F.3d 1355, 1363, 119 USPQ2d 1822, 1827 (Fed. Cir. 2016), the Federal Circuit stated: “[W]e conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention.”

In In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) the court stated that: “Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.” In that case, the Patent Trial and Appeal Board failed to explain their reasoning for applying a single prior art reference how a person of ordinary skill in the art, applying common sense, could extend the teachings of that single reference to arrive at the claimed subject matter. According to the Federal Circuit in Stepan, “Under Title 35, examiners must explain obvious rejections with findings that includes facts as to how a person of ordinary skill would have understood prior art teachings.”

To sum up, obviousness of a patent claim can be established with only a single prior art reference being cited, but if common sense is cited to extend the teachings of that single reference, there must be an explanation, supported by explicit and objective evidence, provided. The burden of establishing obviousness, when a single reference is cited along with “common sense”, is on the one asserting that the patent claims are unpatentable for obviousness, and not on the applicant or patentee.

USPTO’s Berkheimer Memo Provides Important Insights for Countering Subject Matter Ineligibility

The Federal Circuit’s Berkheimer v. HP decision has brought the patent eligibility statute, 35 U.S.C. § 101, back into the headlines. In October 2016, Ryan Truesdale wrote on this  blog that “the statute addresses the basic question of ‘is this invention the type that is patentable.’” The Federal Circuit’s decision in the Berkheimer case finally provides some degree of clarity and the USPTO, after several false starts, has finally set out clear directions for the examiners and the PTAB.

The USPTO’s Berkheimer memo states that a rejection under 35 U.S.C. § 101 requires an examiner to provide written support that the claimed subject matter is “well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). One benefit of the ruling in the Berkheimer case is that facts will always matter. Examiners must use facts from citations to declare an application ineligible. Citations can be used from court decisions, publications, and/or an official notice statement(s). The memo describes “an appropriate” publication as a “book, manual, review article, or other source that describes the state of the art discusses what is well-known and common use in the relevant industry.” As a gift to applicants, the memo states that when an applicant responds to an ineligibility determination, the examiner must provide explicit support, citing books, manuals, review articles, or case decisions, thereby effectively negating ineligibility rejections based solely upon official notice.

The Berkheimer memo drew from the Federal Circuit Court’s decision in that case as to “whether the purported improvements were more than well-understood, routine, conventional activity previously known in the industry.” Id., at 1370-71. "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." Id., at 1369. Applicants following the directives in the Berkheimer memo will be more successful in overcoming ineligibility determinations than in the USPTO’s previous directives under the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). There, the Supreme Court invalidated patent claims because abstract ideas were declared unpatentable by the court without “something more”.

In sum, the USPTO’s Berkheimer memo provides avenues for overcoming abstract idea ineligibility determinations. Examiners will need to provide evidence to support their contentions. Finally, the USPTO has provided safeguards against arbitrary, anecdotally-based decision making by examiners and the PTAB.

Welcome Jenna Mazzoni

Corridor Law Group is delighted to welcome its new Patent Agent, Jenna Mazzoni. Originally from Chicago, Illinois, Jenna holds a Bachelor of Science in Molecular and Cellular Biology from University of Illinois at Urbana-Champaign and a Ph.D. in Developmental and Cellular Biology from University of California, Irvine. She also completed a Postdoctoral fellowship at Columbia University where she published her work in the journal Neuron. Jenna brings specialized knowledge in a variety of technical fields including molecular and cellular biology, neurovascular biology and animal models. She is passionate about delivering high quality services to our clients to assist them in protecting their valuable inventive concepts.

No, Judge Mayer Did Not Just Put an End to Software Patents

No, Judge Mayer Did Not Just Put an End to Software Patents

The last post on this blog ended optimistically, reading “[i]t’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software”. It appears that the first half of that sentence is correct; the Federal Circuit, the court with exclusive jurisdiction over appeals from trial court judgments in patent cases, has gotten much more involved in conducting § 101 analyses. However, the hope that these cases would shed light on what is required to patent business methods and software appears to have been a longshot. For the past few months, the Federal Circuit’s opinion in Intellectual Ventures I LLC, v. Symantec Corp. has been making its way around the internet (even Reddit appears to have gotten a slice of this action), and at a glance it doesn’t look good for software patents.

Three decisions were mentioned in our last blog post, Enfish, Bascom, and McRO. Enfish was heard by Judges Moore, Taranto and Hughes; Bascom by Judges Newman, O’Malley and Chen; and McRO by Judges Reyna Taranto, and Stoll. Some of you may already see a problem forming here in that these three cases, which we’ve previously identified as being important recent cases for elaborating on the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, were all heard by different three-judge panels, the only overlap being Judge Taranto’s involvement in McRO and Enfish. A split among judges on a panel can create confusing, and often contradictory, rulings issued by the Federal Circuit in matters of nuance such as patentable subject matter.

So what’s got the internet so flustered? A concurring opinion written by Senior Federal Circuit Judge Mayer in Intellectual Ventures I took the position that Alice was the death of software patents and that it’s time to recognize it as such. Judge Mayer made “two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent”. A number of blogs and legal news websites have posted excerpts from Judge Mayer’s concurring opinion to highlight its finer points. But what is often not mentioned explicitly in the commentaries is that Judge Mayer’s concurring opinion is not binding precedent. The binding precedent in Intellectual Ventures I is the majority opinion written by Judge Dyk, which concluded that all three patents-in-suit were invalid under § 101 as claiming patent-ineligible subject matter. The third judge on the case, Judge Stoll, who also heard and joined the majority opinion in Enfish, issued a partial dissent arguing that one of the three patents-in-suit claimed patent-eligible subject matter under § 101. In the majority opinion in Intellectual Ventures I, The opinions of Judge Dyk and Judge Stoll relied on precedent from Bascom, although they reached remarkably different conclusions when it came to one of the patents. Only Judge Mayer’s opinion, which again is not binding precedent, contained this broad assertion that software patents in generally are patent-ineligible.

Why has this opinion in Intellectual Ventures I gained so much attention then, if no court actually has to follow it? The plainest reason is that software patents are a hot topic in IP law, and no judge on the Federal Circuit has expressed such a strong opinion against their patent eligibility. Judge Mayer has a long history on the Federal Circuit, and was even the court’s chief judge from 1997-2004. Coincidentally, this period is when the Federal Circuit first began to tackle software patents, and those patents were given broad support by the Federal Circuit. Judge Mayer’s opinion was also noteworthy because of its assertion that the First Amendment precludes the right to patent anything “constricting the essential channels of online communication”. This First Amendment assertion presents an entirely new aspect of the § 101 analysis.

Although Judge Mayer’s concurring opinion in Intellectual Ventures I is interesting on an academic level, it perhaps unintentionally highlights the problem with the Federal Circuit’s interpretation of the Alice decision to date, namely, the judges do not, and maybe cannot, agree on how Alice should be applied or even how to apply their own precedent to questions involving patent eligibility. So depending on which three-judge panel hear a case, the outcome is based more upon the judge’s individual inclinations regarding patent-eligibility under § 101 rather than the reliable application of the court’s precedents. This leaves the lower courts with two options: (1) struggle to follow the Federal Circuit’s inconsistent precedent and apply a loosely defined framework of the two-step Alice analysis, or (2) encourage the Supreme Court to explicitly define what constitutes an “abstract idea” and what constitutes the “something more” to establish patent eligibility, so that in future cases the Federal Circuit can actually do its job. We can only hope that the Supreme Court will agree to hear a § 101 case again soon and clarify how software and business method patents should be analyzed for patent-eligibility. For now, Judge Mayer’s opinion in Intellectual Ventures I should be considered a catalyst for resolving the confusion and inconsistencies brought about by the Supreme Court’s ruling in Alice.

Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

35 U.S.C. §101 is the statute that addresses the basic question of “is this invention the type that is patentable.” Lately the USPTO and the courts have had trouble answering this question consistently. We’ve discussed the decision in Alice repeatedly, and why its lack of clarity on what constitutes an “abstract idea” has made the prosecution of patents for software, business methods and other less tangible inventions a challenge. However, a series of recent court decisions have shed some much needed light on Alice’s two-prong test and how to avoid and fight §101 rejections.

The first case, Enfish, LLC. v Microsoft Corp., dealt with the first prong of the Alice test: namely whether the claims are directed towards an abstract idea. In Enfish, the Federal Circuit reversed a district court ruling that the claims in a patent about data organization were “invalid as ineligible under §101”. Enfish had sued Microsoft for infringement of two U.S. patents, 6,151,604 and 6,163,775. These patents cover a “self-referential” data table model for storing information. In its reversal the court pointed to two features that made the invention distinct from traditional data systems. In particular, the court pointed out that the model in question “can store all entity types in a single table, and . . . can define the table’s columns using rows in that same table.” These features provide a number of advantages over traditional data structures from a technical standpoint and the net result is that data can be accessed and modified more quickly by a computer when it is organized this way. The Federal Circuit applied a test for patent eligible subject matter that asked “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” The Enfish patents were found to be “directed to a specific improvement to the way computers operate”, and thus were patent eligible. The improvements over the prior art made the computer operate more efficiently, improving the ability of the computer to perform a task, rather than the invention simply being improving the performance of a task by using a computer.

Another recent case, Bascom Global Internet Service, Inc. v. AT&T Mobility LLC, dealt with the second prong of the Alice analysis: if the invention involves an abstract idea, does it deal with “something more”.  In Bascom, the patent holder claimed infringement of Patent 5,987,606, which is directed to a means for filtering internet traffic. The district court had found the claims ineligible under §101. The Federal Circuit reversed, holding that while the invention involved an arrangement of known elements in internet filtering, the elements were arranged in a non-conventional way. The filtering tool was installed at a specific, upstream location for internet traffic. Although filtering “content on the Internet” is an abstract idea, the ‘606 patent recited more than simply implementing this idea on a generic computer with a predictable result.

In a third case, McRo, Inc. v. Bandai Namco Games America Inc., McRo sued for infringement of U.S. Patents 6,307,576 and 6,611,278 which are directed to a method for synchronizing animated lips and facial expressions. While facial expressions, audio, and animated lips have been synchronized by software for some time, animators often had to manually insert specialty frames into video sequences in order to make the final product more realistic. Again, the Federal Circuit overruled the district court’s conclusion that the claims of the patent were ineligible under §101, holding that the claimed method did not simply replace the manual process with an automated digital one. Instead, the method improved upon the prior art by proposing rules for altering animated frames in areas where only animators had previously been able to operate.

These rulings, while not a complete clarification of the Alice standards, are a promising start. They provide paths for overcoming §101 rejections, and give further clarification to the Alice analysis. Using this information, patents can be drafted with a better chance of avoiding, or least overcoming §101 rejections. It’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software.