On December 11, 2019, the Patent Trial and Appeal Board (PTAB) designated three decisions as informative, adding to a significant number of decisions designated as either precedential or informative this year. One of these decisions gives additional insight into the United States Patent and Trademark Office’s (USPTO) 2019 Revised Eligibility Guidance (2019 Guidance) for 35 U.S.C. § 101, and the other two concern the sufficiency of obviousness rationales under 35 U.S.C. § 103.
Ex Parte Linden, No. APPEAL 2018-003323 (P.T.A.B. Mar. 28, 2019) (informative)
In Ex Parte Linden, the PTAB provided insight into how the PTAB will apply the 2019 Guidance. Here, the Examiner found that a set of claims directed to “systems and methods for improving the transcription of speech into text” were unpatentable under § 101. At step 2A of the analysis, the Examiner found that the claims were directed to the mathematical-formula abstract idea because they used predicted character probabilities “to decode a transcription of the input audio into words or text data.” The Examiner “determine[d] that the Specification shows that the predicted character probabilities is an algorithm and, as such, the claimed invention is directed to a mathematical formula.” The Examiner also summarized the invention into three steps, characterized as “manipulating data,” “generating information sets based on prior information sets,” and “decoding” and additionally found that these steps were directed to the abstract idea of methods of organizing human activity. At step 2B, the Examiner concluded that the claims did not amount to significantly more than the abstract idea because they were “just decoding a transcription using a mathematical formula relationship” to convert or translate “audio data into another form of data (text data).”
The PTAB disagreed with the Examiner. The PTAB found that, while the specification may recite an algorithm, it was not recited in the claims. Thus, the claims were not directed to a mathematical formula. Also, the PTAB found that the claims recite neither a “method of organizing human activity” nor “a mental process”:
[w]hile transcription generally can be performed by a human, the claims here are directed to a specific implementation including the steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network and decoding a transcription of the input audio using the predicted character probability outputs. These are not steps that can practically be performed mentally. Nor do we see how the claimed invention recites organizing human activity.
Consequently, the PTAB concluded the claims were not directed to an abstract idea and were patent-eligible per the 2019 Guidance.
Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-00582, Paper 34 (P.T.A.B. Aug. 5, 2019) (informative)
The invention related to “processing real-time events in applications such as telecommunications and computer networks.” In one ground challenging the claims, the petitioner combined three prior art references and contended that it “would have been a good idea” to use the main memory database of one reference in a second reference’s telephone call monitoring system because these systems required “tight timing requirements” and “it was known that main memory databases are particularly suitable for these types of systems.” The patent owner argued these rationales were insufficient and the PTAB agreed.
The PTAB explained that the prior art references and the petitioner’s expert showed these timing requirements were “not significant,” and conventional databases were sufficiently fast to meet the prior art’s requirements, so there would have been no reason to seek a faster solution, like a main memory database. Also, the PTAB noted that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention” (emphasis in original). The PTAB held that some of the proferred rationales petitioner provided were directed only to whether a skilled artisan could have made the combination and did not address motivation. As a result, the PTAB determined the petitioner’s proferred motivations were insufficient.
In a second ground of the petition, the petitioner again relied on a combination of three references. This time, the petitioner alleged that the combination would have been “trivial and obvious” and that an ordinarily skilled artisan “would have been motivated to make [the asserted combination] based on common teachings in the references.” However, the PTAB again disagreed, noting that the petition’s insufficient obviousness rationale made it “fatally flawed” and petitioner’s later attempt to bolster this argument in its reply was untimely and exceeded the scope of a proper reply. That belated position was considered to be a new rationale, and the PTAB exercised its discretion not to consider it.
Johns Manville Corp. v. Knauf Insulation, Inc., Case IPR2018-00827, Paper 9 (P.T.A.B. Oct. 16, 2018) (informative)
This decision denied inter partes review institution and addressed the rationale for combining references under § 103. The invention related to chemical binders to be used in fiberglass insulation. Here, the petitioner supplied four grounds challenging the claims, all of which the PTAB found to be insufficient.
The petitioner’s rationales to combine the prior art references were predicated on the “compatibility of references,” “predictable use of prior art elements,” and that “‘combining the teachings of the two references would have been well within the skill’ of an ordinarily skilled artisan.” The PTAB concluded that all these rationales fell short.
First, the PTAB held that “mere compatibility of references” alone is insufficient to support obviousness rationales to combine.
Second, the PTAB found that the assumption that all the cited thermoset binders were useful in the claimed product was insufficiently supported. The petitioner did not sufficiently explain or support which prior art elements had a “known function, what that function is, and why that function is predictable.” Notably, the PTAB gave little weight to petitioner’s expert regarding the known functionality, determining the testimony was not supported by adequate facts or data.
Third, the PTAB held that asserting that the combination was “well within the skill” of an ordinarily skilled artisan did not satisfy the petitioner’s burden of showing a motivation to combine the references to reflect the claimed invention. The PTAB then determined that the other three grounds in the challenge were “substantially similar” to those of the first ground, and denied institution.
These decisions round out an active year of designations for the PTAB. Be sure to read our breakdowns of other 2019 PTAB decisions accessible at the following links:
- USPTO Issues Two Precedential Decisions Relating to the PTAB’s Discretion to Deny Institution
- USPTO Designates Three Decisions Relating to Real-Party-in-Interest as Precedential
- Eight America-Invents-Act Trial Decisions Designated either Precedential or Informative in Past Six Weeks
So far, the PTAB has designated 18 decisions as precedential and 13 decisions as informative, providing necessary consistency and guidance. Practitioners should expect 2020 to be just as active.
If you have questions about any of PTAB’s precedential or informative decisions and what they mean for your business, please contact the authors.