Throwing in Kitchen Sink on 101 Legal Arguments Didn’t Help Save Patent from Alice Ax
| November 21, 2022
In Re Killian
Taranto, Clevenger, Chen (August 23, 2022).
Summary:
Killian’s claim to “determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” was deemed “clearly patent ineligible in view of our precedent.” However, the Federal Circuit also disposes of a host of the appellant’s legal challenges to 101 jurisprudence, including:
(A) all court and Board decisions finding a claim patent ineligible under Alice/Mayo is arbitrary and capricious under the APA;
(B) comparing this case to other cases in which this court and the Supreme Court considered issues of patent eligibility under 101 violates the appellant’s due process rights because Mr. Killian had no opportunity to appear in those other cases;
(C) the search for an “inventive concept” at Alice Step 2 is improper because Congress did away with an “invention” requirement when it enacted the Patent Act of 1952;
(D) “mental steps” ineligibility has no foundation in modern patent law; and
(E) there is no substantial evidence to support the rejections in view of the PTAB’s “evidentiary vacuum” in assessing the factual inquiry into whether the claimed process is well-understood, routine, and conventional.
Procedural History:
The PTAB’s affirmance of the examiner’s final rejection of Killian’s US Patent Application No. 14/450,024 under 35 USC §101 was appealed to the Federal Circuit and was upheld.
Decision:
Representative claim 1 is as follows:
A computerized method for determining eligibility for social security disability insurance (SSDI) benefits through a computer network, comprising the steps of:
(a) providing a computer processing means and a computer readable media;
(b) providing access to a Federal Social Security database through the computer network, wherein the Federal Social Security database provides records containing information relating to a person’s status of SSDI and/or parental and/or marital information relating to SSDI benefit eligibility;
(c) selecting at least one person who is identified as receiving treatment for developmental disabilities and/or mental illness;
(d) creating an electronic data record comprising information relating to at least the identity of the person and social security number, wherein the electronic data record is recorded on the computer readable media;
(e) retrieving the person’s Federal Social Security record containing information relating to the person’s status of SSDI benefits;
(f) determining whether the person is receiving SSDI benefits based on the SSDI status information contained within the Federal Social Security database record through the computer network; and
(g) indicating in the electronic data record whether the person is receiving SSDI benefits or is not receiving SSDI benefits.
The court agreed with the PTAB that the thrust of this claim is “the collection of information from various sources (a Federal database, a State database, and a caseworker) and understanding the meaning of that information (determining whether a person is receiving SSDI benefits and determining whether they are eligible for benefits under the law).” Collecting information and “determining” whether benefits are eligible are mental tasks humans routinely do. That these steps are performed on a generic computer or “through a computer network” does not save these claims from being directed to an abstract idea under Alice step 1. Under Alice step 2, this is merely reciting an abstract idea and adding “apply it with a computer.” The claims do not recite any technological improvement in how a computer goes about “determining” eligibility for benefits. Merely comparing information against eligibility requirements is what humans seeking benefits would do with or without a computer.
The court also addresses appellant’s further challenges (A)-(E) as follows.
- all court and Board decisions finding a claim patent ineligible under Alice/Mayo is arbitrary and capricious under the APA
The standards of review in the APA do not apply to decisions by courts. The APA governs judicial review of “agency action.”
There was also an assertion that there is a Fifth Amendment Due Process Clause violation stemming from the imprecision of the Alice/Mayo standard. However, the court noted that Killian never argued that the Alice/Mayo standard runs afoul of the “void-for-vagueness doctrine” and could not have argued this because this case was not even a close call (vagueness as applied to the particular case is a prerequisite to establishing facial vagueness).
As for Board decisions finding patents ineligible as being arbitrary and capricious under the APA, “we may not announce that the Board acts arbitrarily and capriciously merely by applying binding judicial precedent.” This would be akin to using the APA to attack the Supreme Court’s interpretations of 101. However, “the APA does not empower us to review decisions of ‘the courts of the United States’ because they are not agencies.”
Mr. Killian also requested “a single non-capricious definition or limiting principle” for “abstract idea” and “inventive concept.” However, the court points out that there is “no single, hard-and-fast rule that automatically outputs an answer in all contexts” because there are different types of abstract ideas (mental processes, methods of organizing human activity, claims to results rather than a means of achieving the claimed result). Nevertheless, guidance has been provided (citing several cases).
And even if the Alice/Mayo framework is unclear, “both this court and the Board would still be bound to follow the Supreme Court’s §101 jurisprudence as best we can as we must follow the Supreme Court’s precedent unless and until it is overruled by the Supreme Court.”
- comparing this case to other cases in which this court and the Supreme Court considered issues of patent eligibility under 101 violates the appellant’s due process rights because Mr. Killian had no opportunity to appear in those other cases
Examination of and comparison to earlier caselaw is just classic common law methodology for deciding cases arising under 101. “Nothing stops Mr. Killian from identifying any important distinctions between his claimed invention and claims we have analyzed in prior cases.”
- the search for an “inventive concept” at Alice Step 2 is improper because Congress did away with an “invention” requirement when it enacted the Patent Act of 1952
First, Killian has not established that Alice Step 2’s “inventive concept” is the same thing as the “invention” requirement in the Patent Act of 1952. It is not. For instance, there is no requirement to ascertain the “degree of skill and ingenuity” possessed by one of ordinary skill in the art under Alice Step 2. In any event, the Supreme Court required the “inventive concept” inquiry at Step 2, and so, “search for an inventive concept we must.”
- “mental steps” ineligibility has no foundation in modern patent law
“This argument is plainly incorrect” (citing Benson, Mayo, Diehr, Bilski, etc.). “[W]e are bound by our precedential decisions holding that steps capable of performance in the human mind are, without more, patent-ineligible abstract ideas.”
- there is no substantial evidence to support the rejections in view of the PTAB’s “evidentiary vacuum” in assessing the factual inquiry into whether the claimed process is well-understood, routine, and conventional
Substantial evidence supported the PTAB’s decision regarding Alice Step 2. The additional elements of a computer processor and a computer readable media are generic, as the application itself admits (the PTAB cited to the specification’s description about how the claimed method “may be performed by any suitable computer system”). And, the claimed “creating an electronic data record,” “indicating in the electronic data record whether the person is receiving SSDI adult child benefits,” “providing a caseworker display system,” “generating a data collection input screen,” “indicating in the electronic data record whether the person is eligible for SSDI adult child benefits,” and other data tasks are merely selection and manipulation of information – are not a transformative inventive concept.
Mr. Killian also refers to 55 documents allegedly presented to the examiner and the PTAB. But, because these were not included in the joint appendix and nothing is explained on appeal as to what these 55 documents show, “Mr. Killian forfeited any argument on appeal based on those fifty-five documents by failing to present anything more than a conclusory, skeletal argument.”
Takeaways:
Given the continued dissatisfaction over the court’s eligibility guidance and the frustration over the Supreme Court’s refusal to take on §101 since Alice, this decision offers a rare insight into the court’s position on various §101 legal challenges. For instance, this decision appears to suggest a potential Fifth Amendment Due Process Clause violation stemming from the imprecision of the Alice/Mayo standard, but only for a “close call” case where vagueness can be established for the particular case, in order to challenge the facial vagueness of the Alice/Mayo standard under the “void-for-vagueness doctrine.”
