Rabicoff Law has filed an Amicus Brief in support of Patent Owners, Practitioners, and a Northwestern Professor of Engineering.
An excerpt is provided below, along with a link to the filed brief.
The first is a procedural issue dividing district courts: whether a court may decide the subject matter eligibility of multiple claims (and multiple patents) on the basis of one or more “representative claims,” and if so, under what circumstances. This issue has spawned several approaches among district courts, which “have interpreted” this Court’s decision in Content Extraction—which seems to permit the “representative claim” approach under some circumstances—in “numerous ways.” According to one summary of the increasingly heterogeneous approaches to this issue, “[o]ne line of authority” (1) “allows courts to use representative claims only if the parties have agreed on them in advance,” while another (2) approach “place[s] the burden on the patentee to point out flaws in proposed representative claims.” Still another (3) approach “place[s] the burden on the movant, declining to designate representative claims where the movant has not discussed any non-designated claims in detail,” while a contrasting reading of Content Extraction interprets it to (4) allow courts “to designate representative claims, even absent the parties’ agreement and in the face of the patentee’s specific objections.”
This brief will argue that the statutory presumption of validity in 35 U.S.C. § 282, read together with 35 U.S.C. § 253 as well as Alice itself, forecloses the use of representative claims to decide eligibility, at least where the patentee objects and points to specific non-representative claims. Patent-eligible subject matter “must be analyzed on a claim-by-claim basis…like other grounds of invalidity.” MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264 (Fed. Cir. 2013) (citing Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 942 (Fed. Cir. 1992) (concluding that all grounds of invalidity must be evaluated against individual claims, as required by the plain language of 35 U.S.C. § 282)). To do otherwise—particularly here where, unlike Content Extraction, the patentee specifically objected to the use of a “representative claim” and pointed to specific, non-representative claims—not only “flies in the face of the presumption of validity” but risks invalidating otherwise patent-eligible claims through a cavalier, once-size-fits-all analysis. Shelcore, Inc v. Durham Industries, Inc., 745 F.2d 621, 624 (Fed. Cir. 1984). Such a practice also raises serious due process concerns, as argued infra. Neither Content Extraction nor this Court’s recent decision in The Cleveland Clinic Foundation v. True Health Diagnostics LLC, 2017 WL 2603137, at *5 (Fed. Cir. Jun. 16, 2017) permit the use of representative claims to analyze eligibility where the patentee identifies specific non-representative claims. To the extent that Content Extraction and Cleveland Clinic can be read to permit such an approach, they may be in conflict with Shelcore, which is the earlier and controlling precedent—and with § 282, which is at the foundation of Shelcore and this Court’s repeated admonitions that validity is to be decided on a claim-by-claim basis.
Second, this case presents this Court with the opportunity to clarify the role of facts in determining whether claims recite an “inventive concept” or merely “conventional” activity at Step Two of Alice. While Mayo “recognize[d] that “the § 101 patent-eligibility inquiry and” the “§ 102 novelty inquiry might sometimes overlap,” there is significant confusion among district courts as to when evidence supporting novelty “might” be relevant to the eligibility analysis. For example, district courts are divided on the relevance of post-grant fact-findings to eligibility. Compare Sophos Inc. v. RPost Holdings, Inc., 2016 WL 3149649, at *12 n. 6 (D. Mass. Jun. 3, 2016) (holding that the PTAB’s finding that patents were “technological inventions” and its denial of CBM review “tends to support [the] conclusion” that the patents were eligible under Step Two of Alice), with Papst, 2016 WL 3196657, at *20 n. 11 (refusing to give weight to a PTAB decision declining to institute IPR because “[n]either a Section 101 challenge generally nor the more specific question articulated by the U.S. Supreme Court [at] the second step of the Alice framework was before the PTAB”); Virginia Innovation Sciences Inc. v. Amazon.com, Inc., 2017 WL 64147, at *11 (E.D. Va. Jan. 5, 2017) (“Although there is some caselaw to suggest that obviousness, novelty, and eligibility inquiries overlap, the most recent persuasive opinions conduct the eligibility inquiry in isolation.”). And here, contrary to Mayo’s recognition of “overlap,” the district court held that “the question of novelty . . . stands in direct contrast to . . . the question presented before this Court concerning patent eligibility.” Appx10. Moreover, it confused whether Appellant’s evidence was submitted in support of eligibility at Step One, when Appellant in fact submitted this evidence with reference to Step Two and raised sufficient factual questions precluding resolution at the Rule 12 stage. Compare Appx11 (rejecting relevance of evidence to the “question of abstractness” at Step One), with Appx1276-77 (argument by Appellant that evidence from the PTAB and prosecution history was relevant to “conventionality” at Step Two of Mayo/Alice, not Step One).
This brief will argue that eligibility is best characterized as a question of law based on underlying determinations of fact and, as such, cannot be resolved based on conclusory findings regarding what is or is not “conventional.” District courts may not substitute their opinion for the perspective of the skilled artisan or decide “conventionality” without evidence of the state of the art at the time of filing. To ignore that “the concern of hindsight bias has as much relevance to a § 101 challenge as it does a § 103 challenge…would provide a ‘blank check to all those who challenge patents without sufficient legal or evidentiary basis.” Evidence of novelty during prosecution or post-grant determinations by the PTAB may well support a finding of inventiveness or non-conventionality at Mayo/Alice Step Two, as this Court has recognized. See Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (evidence of novelty over the prior art during prosecution supported eligibility at Mayo/Alice Step Two).
To a great extent, both these issues were settled by this Court’s opinion in Ultramercial, which was later vacated by the Supreme Court for further consideration in light of Alice. See Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, (Fed. Cir. 2013), vacated by WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014). The opinion in Ultramercial made clear that eligibility “must be determined on a claim by claim basis,” that “the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues,” and that “[a]lmost by definition, analyzing whether something was ‘conventional’ or routine’ involves analyzing facts.” Id. at 1339. None of these things were contradicted by Alice. Thus, while this Court read the Supreme Court’s vacatur in Ultramercial to cast doubt on the result in that case, it should not be read to cast doubt on the requirement for claim-by-claim analysis or for the proposition that the “inventive concept” inquiry at Step Two has factual underpinnings. Indeed, this Court has relied on the “relevant and detailed analysis” of its prior opinions where they were vacated “without explanation,” and their reasoning “has been neither supplanted nor questioned.” It should do so with Ultramercial here.
Thus, this Court can restore certainty on the issues raised in this case by reiterating the principles stated in Ultramercial, which are fully compatible with the test set forth in Alice.
Download the as-filed Federal Circuit Amicus Brief below.