Patent eligibility memo seeks to translate rulings into guidance

As our April 18 article "Has Alice Gone Down the Rabbit Hole?" discussed, the U.S. Court of Appeals for the Federal Circuit's recent decisions Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), and Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), raised several questions about how Alice challenges to patent eligibility will be conducted going forward. Since then, U.S. Patent and Trademark Office Director Andrei Iancu testified to the Senate that patent eligibility was a "critical area" for the PTO and that the PTO was "considering ways to increase the certainty and predictability of the eligibility analysis" for examiners and the public. Following its director's lead, the PTO recently issued a memorandum [attached below] to its examiners seeking to translate the recent Federal Circuit decisions into practical guidance for applying the "inventive concept" aspect of the Alice analysis.

Like the court's opinions themselves, the PTO memo reiterates up front that "the Berkheimer decision does not change the basic subject matter eligibility framework as set forth in MPEP § 2106." Nevertheless, the memo acknowledges that whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent must now be regarded as a factual determination. The memo instructs that an examiner "should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry" based on "one or more" of the following factual findings, which should now be cited in rejections under 35 U.S.C. Section 101:

Applicant Admissions: The examiner may cite "an express statement in the specifi-cation or ... a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s)." The memo explains that a specification demonstrates these attributes "when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)." The memo states that "[a] finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element."

Prior Court Decisions: The examiner may also refer to "one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s)." Subsection (d)(II) compiles a long list of previous Federal Circuit cases deeming particular activities conventional under Section 101. Such judicially declared conventional activities include receiving or transmitting data over a network, performing repetitive calculations, electronic recordkeeping, storing and retrieving information in memory, determining the level of a biomarker in blood, detecting DNA or enzymes in a sample, immunizing a patient against a disease, restricting public access to media by requiring a consumer to view an advertisement, and presenting offers and gathering statistics.

Publications: The examiner may also cite "a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)." While an "appropriate publication" could include a book, manual, review article, or other source that describes the state of the art, it does not necessarily include "all items that might otherwise qualify as a 'printed publication' as used in 35 U.S.C. § 102." To elaborate on this distinction, the memo notes that a reference that is obscure but nevertheless sufficient to show prior publication (such as a single copy of a thesis written in German and located in a German university library) might "still fail to establish that something it describes is well-understood, routine, conventional activity." Put differently, whether something is disclosed in a "printed publication" under Section 102 is a distinct inquiry from whether something is well-known, routine, conventional activity. Thus, merely finding the additional element in a single patent, published application, or non-patent reference will not be sufficient to establish that the additional element is well-understood, routine, or conventional unless the reference further demonstrates that the additional element is widely prevalent or in common use in the relevant field.

Official Notice: The examiner may state that he or she "is taking official notice of the well-understood, routine, conventional nature of the additional element(s)." The memo expressly warns, however, that "[t]his option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional element(s) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a)." The memo goes on to explain that if an applicant disagrees and specifically contends that such elements are not well-understood, routine, conventional activity, the examiner must provide one of the other enumerated items or an affidavit or declaration under 37 C.F.R. Section 1.104(d)(2) setting forth specific factual statements to support his or her position.

The PTO's memorandum, which will ultimately be incorporated into the MPEP, sheds important light on how examiners will interpret Berkheimer moving forward. That said, this guidance does not eliminate any of the issues we raised in our previous piece. In fact, these PTO instructions further clarify the drafting strategies that clever prosecutors may use to inoculate their applications against Alice challenges moving forward. Moreover, although the courts are not bound by the PTO's guidance, litigators may also use the memo as a roadmap to prepare Alice challenges. On the other hand, the PTO's framework will not necessarily help accused infringers challenge patent-eligibility as a matter of law early in the case, particularly when the challenge involves publications or other extrinsic evidence of the conventional nature of an element -- courts may conclude that the weight such evidence deserves is a factual issue.