[It] appears someone at the PTAB made a conscious effort to scrub this decision from its data banks
by: Patrick Anderson | August 22, 2017
On a seemingly daily basis, the Patent Trial and Appeal Board (“PTAB”) wields 35 USC § 101 to foreclose whole swaths of innovation, from virtual reality to online advertising to the source of billions in economic activity, social networking. At the peak of arrogance, the PTAB proclaims that “Abstract ideas can be characterized at different levels of abstraction.” It appears the PTAB has found a nose of wax in § 101.
A PTAB 101 Reversal
But what if I told you that the PTAB had previously held the exact opposite position? Would you believe me if I told you that the PTAB previously reversed a rejection because “the Examiner merely express[ed] an opinion” as to what constituted an abstract idea, rather than demonstrating facts on the record? As a matter of fact, you very likely would not believe me, and if you search for this decision you are not going to find it. So, is this another case of the infamous ‘fake news’? Would I dare fabricate a non-existent PTAB decision in some misguided effort to support inventor’s and their property? Sadly, no; this is all too real.
Where is Appeal No. 2012-011084?
The PTAB panel of Astorino, Medlock, and Murphy presided over Ex Parte Poisson, and mailed their decision on February 27, 2015. After finding that “the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis,” the board reversed the rejection, stating that the “PTO bears the initial burden of establishing a prima facie case of patent-ineligible subject matter under 35 USC § 101.” However, if you search for Appeal No. 2012-011084 in the PTAB Final Decision Database, you will get no results. The same holds true if you search for the inventor’s name or the application number (12/427,040). In fact, you can search for every PTAB decision between February 25-27 (the date of mailing) and when sorted alphabetically, or by case number, the case is nowhere to be seen. In fact, at least certain members of the PTAB appear to be recognizing this as an issue, as a board decision just issued today pointed out that Poisson is available only through PAIR.
In fact, we can only be certain of this decision’s existence because of the Public PAIR record for the ‘040 application. However, this wholly fails at notifying the public, potential examiners, or fellow board members, of their burdens in establishing what constitutes an abstract idea. Each individual decision on patent eligibility carries profound impact to the future of our economy. As Professor, Legal Scholar and Rice-A-Roni fan, Adam Mossoff reported, over 1,700 patent applications have been granted in China and Europe, but denied in the US as being ineligible under § 101! These include “pioneering, life-saving inventions, such as treatments for cancer and diabetes.”
The Existence of Ex Parte Poisson
Thus, despite the fact that Ex Parte Poisson represents a critical building block in the PTAB’s jurisprudence, one already has to know of its existence in order to find it, and it appears someone at the PTAB made a conscious effort to scrub this decision from its data banks in an attempt to force a policy change inconsistent with Poisson’s reasoning. The remaining questions of why and who are likewise interesting and provoke substantial ethical and legal questions. Perhaps now that the fact of Poisson’s removal has been brought to light, the person or persons responsible can be identified to answer these questions.
Some observers suggest that Poisson’s omission from the database is simply the result of a computer glitch, but, if true, that’s an awfully convenient glitch.
Editor’s note: At the time this article was posted, an e-mail to the USPTO’s communications office had not been answered. IPWire will continue tracking this story and bring you updates as they happen.