Petition of the Day: Does the Statute Allow Section 101 Challenges in CBM/PGR proceedings?

Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee, on petition for writ of certiorari 2015.

The question presented here stems directly from the posts that Prof Hricik and I wrote back in 2012 and 2013.

RCAM presents the following question:

The AIA limits the [PTAB’s] jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.

The questions presented arise from the Federal Circuit affirming, without comment, the Board’s holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board’s application of § 101 to the patent claims at issue.

They are:

1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).

2. Whether the Board errs when it invalidates issued patent claims posing no risk of pre-emption under the abstract idea exception to patent eligibility.

Read the petition: Petition101.

27 thoughts on “Petition of the Day: Does the Statute Allow Section 101 Challenges in CBM/PGR proceedings?

  1. Read the CBM statute clearly, as it is limited to one subsection of 282, not the whole thing.

    Cert? I have no idea. Hopefully Ariosa v. Sequenom will get it if this does not…

    1. Prof. Hrick,

      Why should the intent of Congress matter (at all)…?

      So what about the aim to one subsection of 282?

      After all, it “appears” that soooo many people are perfectly fine with letting the Court (or judicial branch) re-mash (any and all) statutory patent law into whatever patent common law the Court so deigns to “create.”

      /off sardonic bemusement

  2. 282I think it is unambiguous that 101 is not included as a listed defense within the statute. Thus when the CBMs statute specifically say that the grounds shall be as specified in the statute, 101 is not included.

    That is not mean that 101 it cannot be a defense to validity because section 282 does not say that its list of defenses are the only defense is to validity, it only says that they shall be defenses and that they be pleaded.

    As we all know, there used to be a legal writ scire facias, abolished by the Federal Rules of Civil Procedure, whereby one could challenge an issued patent on any grounds. Also, the Supreme Court’s recognized that one could also proceed to challenge validity of patent in equity. I presume, therefore, that when a patent has been issued ultra viries, not in accordance with 101, that is validity can still be challenged in court regardless of 101 not being listed within §282.

    As to likelihood of cert grant? Not much as CBM’s are only temporary.

  3. I think if the holding of Alice is properly understood, then Alice can be raised in any proceeding of the PTO where the validity of the claims is at stake. The holding of Alice is that the grant of the claims was unconstitutional based on the finding of fact that the claims tend not to promote. (Like it or not, that is the real holding of Alice and the SCOTUS should have to own up to it.)

    So, I think (I haven’t found the case yet) you can raise a Constitutional challenge in any administration proceeding where the validity of the claims is at stake.

  4. 2. Whether the Board errs when it invalidates issued patent claims posing no risk of pre-emption under the abstract idea exception to patent eligibility.

    This question seems like it could have been worded much better.

    If an ineligible abstraction is protected by a patent claim, that’s all the “pre-emption” that you need to find the claim ineligible.

    Was there an ineligible abstraction protected by the patent claim at issue here? Just looking at the names of the parties suggests that it’s highly likely that the answer to that question is “of course.”

    1. How does one “protect” an abstraction of any kind?

      If, for arguments sake, an abstraction is something only (and totally) in the mind, what does it even mean “to protect” under a patent right?

      On the other hand, if one is extending the meaning of “abstraction” beyond something just in the mind, then is that very thing outside of the mind really an abstraction in the patent sense?

      1. “anon” How does one “protect” an abstraction of any kind?

        If, for arguments sake, an abstraction is something only (and totally) in the mind, what does it even mean “to protect” under a patent right?

        It means that you have a claim that describes that mental activity and therefore you have the right to sue people who you reasonably believe are engaged in that mental activity. Those people have the option of paying you off or spending hundreds and hundreds of thousands of dollars battling with you in court over infringement and damages.

        if one is extending the meaning of “abstraction” beyond something just in the mind

        Nobody’s doing that. If you can’t understand the 101 and how it is applied in practice, please stop practicing law. You’re a fraud.

        Note that this exactly what Prometheus was trying to do with its claims, which every patent attorney should know by now. If you’re an attorney who’s been practicing for more than five years and you don’t know that, then you really don’t have any business discussing contemporary subject matter eligibility jurisprudence or much else related to patent law.

        1. You two are complete and absolute M 0 R 0 N S.

          Read again – this time S L O W L Y. Note the part that I state – for argument’s sake.

          Criminy!

            1. No, Malcolm – you did not.

              You EVADED my question directly, and sought to move the goalposts and not answer directly.

              I was asking NEITHER about your “pet argument” nor about any type of collateral coverage for an invention claimed.

              While collateral coverage may indeed suffice – that is just NOT what the question was.

              Try again – or rather, for the first time.

              1. (note that the goal-post moving is quite typical of Malcolm and his pst “discussions” on this topic whenever the Vast Middle Ground was actually being discussed, he attempted to move the discussion into something TOTALLY in the mind).

                The question here expressly separates and removes that DIFFERENT question.

              2. Again: your question was answered directly. If you are trying to make a point, perhaps provide (1) a hypothetical claim and (2) declarative sentences describing your reasoned and reality-based beliefs about how that claim will be used by patentees who are desperate to monetize it.

                If you can’t manage this, then crawl under a rock.

                1. Again, your desire to speak to other items is NOT answering the question that I asked.

                  The only “point” here is that for some reason you AGAIN cannot seem to get out of your own way.

                  Read 4.1 again – S L O W L Y.

                  Have a child help you if need be.

                  But please, try to understand that your short script just is NOT what the question is about.

  5. Although the number of CBM’s actually instituted is very much smaller than for IPRs, and only a portion of those are being decided on 101 issues, that number [and the type of such patents] is commercially significant enough that it is unfortunate this issue was not raised much earlier by an APA suit? Given that commercially disruptive impact, plus the upcoming automatic “sunset” of all CBMs, plus the strong support of 101 [and ambiguity] rejections in recent Sup. Ct. cases, would it not take a really clear gross error in AIA CBM scope statutory interpretation by the PTO for a CBM proceeding loser to get cert here? Also, was not their some discussion about using 101 in CBMs before they were enacted?

  6. Question 2 is odd.

    If we look at the question in two parts (sound familiar?)

    part 1) preemption: ALL claims preempt something. That is what they do.
    part 2) abstract idea exception: an undefined item (undefinable…? itself being an abstract idea…?). Being purposefully undefined, I would posit that this “law” as scrivened by the Supreme Court is itself fundamentally flawed and void for vagueness.

    1. If something is not eligible subject matter, does it matter how broadly the claim to that subject matter is?

      Example, BCD-binary algorithm (Call it “BCD”). Assume that math is non statutory. Does it make any difference if I claim

      1. BCD.
      2. BCD calculated wih GP digital computers?
      3. BCD calculated with hand held calculators?
      4. BCD calculated with punch card machines?
      5. BCD calculated with pencil and paper?

      Where does one draw the line and why?

      In contrast, if something is statutory, such as an improved computer, does it make any different if I claim that improved computer a

      1. Improved computer.
      2. For calculating BCD?
      3. For use with hand held calculators?
      4. For use with punch card machines?
      5. For use with doing the calculations in a pencil and paper method of calculating BCD?

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