Patent Case Summaries August 31, 2022

Patent Case Summaries | Week Ending August 26, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

In re Killian, No. 2021-2113 (Fed. Cir. (PTAB) Aug. 23, 2022). Opinion by Chen, joined by Taranto and Clevenger.

Killian filed a patent application directed to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” The examiner rejected the claims under 35 U.S.C. § 101, and Killian appealed to the Patent Trial and Appeal Board. The Board agreed with the examiner that the claims are not patent eligible under § 101 because they are directed to the abstract idea of “a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving.” The Board also found that the claims did not integrate the processes into a practical application and did not recite an inventive concept. Killian appealed.

The Federal Circuit affirmed. First, under step one of the Alice framework the court agreed with the Board that the claims “are directed to the patent-ineligible abstract mental process of a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving.” The court elaborated that, as the Board found, the steps “can be performed by a human using observation, evaluation, judgment, and opinion, because they involve making determinations and identifications, which are mental tasks humans routinely do.” Performing these steps on a generic computer “does not save the claims from being directed to an abstract idea.”

Second, under Alice step two the court agreed with the Board that the claims do not provide an inventive concept. “A claim does not pass muster at step two by stating an abstract idea while adding the words ‘apply it with a computer.’” Here, the additional steps in the claims “do no more than instruct the practitioner to perform the abstract steps of gathering information, determining if a person is receiving benefits or is eligible for benefits under the law, and displaying the results of that analysis, all on a generic computer.”

The Federal Circuit also considered and rejected a host of additional challenges by Killian concerning the court’s § 101 jurisprudence, including challenges based on indefiniteness of the Alice/Mayo standard, arbitrary and capricious decisions under the Administrative Procedure Act, and denial of due process under the Fifth Amendment.

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Best Medical International, Inc. v. Elekta Inc., Nos. 2021-2099, -2100 (Fed. Cir. (PTAB) Aug. 26, 2022; modified Aug. 29, 2022). Opinion by Stoll, joined by Hughes and Linn.

Best Medical International (BMI) owns a patent directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. Elekta filed two IPRs challenging several claims. While the IPRs were underway, a parallel ex parte reexamination was ongoing, during which BMI canceled claim 1 “without prejudice or disclaimer.”

Meanwhile, the Patent Trial and Appeal Board issued final written decisions in the IPRs. In the first IPR, the Board found that Elekta had proven that claim 1 was unpatentable as obvious. In the second IPR, the Board found that additional claims were unpatentable as obvious. In reaching its conclusions, the Board found that a person having ordinary skill in the art would have had formal computer programming experience. Elekta’s expert had that experience but BMI’s expert did not, causing the Board to discount BMI’s expert testimony. BMI appealed.

The Federal Circuit first addressed the question of jurisdiction in view of BMI’s cancelation of claim 1 in the reexamination. The Federal Circuit ruled that “BMI lacks standing to appeal the Board’s unpatentability determination” as to claim 1. At the time when the Board issued its final written decision, claim 1 had not been finally canceled. Thus, the Federal Circuit determined that “the Board reasonably concluded that it was required to address patentability of claim 1 absent any final cancelation.” BMI, however, finally canceled claim 1 prior to filing its notice of appeal. “As a result,” the Federal Circuit explained, “there was no case or controversy regarding claim 1’s patentability at that time,” and so BMI lacked standing to appeal the issue.

The Federal Circuit then turned to the merits of the Board’s determination of unpatentability for the remaining claims. Addressing the question of the required level of skill, the Federal Circuit ruled that the Board “was not unreasonable in concluding that a skilled artisan would have had formal computer programming experience.” The parties gave the issue “limited and conclusory treatment,” and so the Board endeavored to discern whether computer programming experience was required. On the limited record available, the Federal Circuit determined that the Board’s finding was not “unreasonable or unsupported by substantial evidence.”

The Federal Circuit also upheld the Board’s claim constructions and consideration of the prior art, and thus affirmed the decision of unpatentability as to the claims for which the court had jurisdiction.

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Code200, UAB, et al. v. Bright Data Ltd., Nos. IPR2022-00861, -00862 (PTAB Aug. 23, 2022). Opinion by Vidal.

The Patent Trial and Appeal Board denied institution of two IPRs, and denied joinder with three other IPRs, under 35 U.S.C. § 314(a), exercising its discretion to deny institution as set forth in General Plastic. In the Board’s analysis of factor 1 of General Plastic (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”), the Board observed that the petitioner had raised similar patentability challenges in prior petitions, but those petitions “were not evaluated on the merits, and instead the denials were based on discretionary grounds.” The Board explained, however, that the petitioner did not offer a stipulation not to raise the grounds asserted in the IPRs in related district court litigation. The Board found that this “weighed strongly in favor of exercising discretion to deny institution.”

The Director sua sponte initiated review in order “to clarify the application of General Plastic.” In particular, the Director disagreed with the Board’s finding that the petitioner’s failure to submit a stipulation weighed strongly in favor of exercising discretion to deny institution. The Director explained that “allowing a petitioner the opportunity to pursue a decision on the merits in a second-filed petition, when the first-filed petition was not evaluated on the merits, best balances the desire to improve patent quality and patent-system efficiency against the potential for abuse of the review process by repeated attacks on patents.”

The Director next explained that “factor 1 must be read in conjunction with factors 2 and 3.” She stated that, “where the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Here, the Board found no evidence of road-mapping, and so factors 2 and 3 did not support discretionary denial.

The Director also disagreed with the Board’s determination under factor 6 that it is inefficient to expend Board resources on the proceeding. She explained that “the Board’s mission to improve patent quality and restore confidence in the presumption of validity that comes with issued patents outweighs the impact on Board resources needed to evaluate the merits of a petition.”

Therefore, because the Board never substantively reached the merits of the prior petition, and after considering each of the other General Plastic factors, the Director vacated the discretionary denials and remanded to the panel to consider the Patent Owner’s remaining arguments, including discretionary denial under Fintiv and the merits of the petitioner’s patentability challenges.

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