Their patent, US9633013 Should Never Have Been Issued
by: Ben Brownlow | October 25, 2017
While Google can’t seem to amass patents fast enough, it has waged a parallel crusade against independent inventors, particularly those who would dare accuse Google or one of its subsidiaries of infringement. Google has been an outspoken supporter of using the Alice test to rid the economy of what it refers to as bad patents. In their own words: “Good patents support innovation while bad patents hinder it.”
A recently issued Google patent, U.S. 9,633,013 (‘013), highlights Google’s hypocritical patent reform views given its own intellectual property strategy.
Google filed for the ‘013 patent on March 22, 2016. The ‘013 patent made it through examination with little resistance. The examiner issued two non-final office actions for obviousness type double-patenting without any discussion of patent eligibility under the Alice framework as mandated by the USPTO training guidelines. Chapter 2014 of the November 2015 update to the Manual of Patent Examining Procedures (MPEP) provides that an examiner must not reject a claim set if they believe it is more likely than not that the claimed invention would be considered significantly more than an abstract idea. This places the initial burden on the examiner to establish a prima facie case for a subject matter eligibility rejection. The MPEP guidelines provide numerous examples instructing examiners how to apply the Alice two-part test for subject matter eligibility when encountering a computer-implemented software method: (1) are the claims directed to ineligible subject matter (e.g., abstract idea); if so, then (2) is there an inventive concept amounting to significantly more than the abstract idea itself?
The July 2015 Update to the 2014 Interim Guidance on Subject Matter Eligibility (2015 Interim Guidance) provides case law examples to guide examiners’ subject eligibility analysis. One example is Content Extraction, where the Federal Circuit Court of Appeals (CAFC) affirmed that the “concept of data collection, recognition, and storage is undisputedly well-known and invalidated a patent with similar claims. The CAFC concluded that the claims did not amount to “significantly more” than the “abstract idea of extracting and storing data from hard copy documents using generic scanning and processing data.”
Here is claim 1 of the ‘013 patent:
The ‘013 claims are directed to the previously well-known abstract concept of data collection, recognition, and storage. Claim 1 of ‘013 is analogous to a human being optically receiving information from symbols on a document, determining the sequence of symbols has a meaning corresponding to an action, and then performing the action (e.g., filing in a certain place in an archaic paper file system). Rather than claiming a technological improvement in computer functionality, ‘013 simply claims conventional computer components (e.g., document management system) performing a long-understood and common human process.
Furthermore, the ‘013 patent fails to provide “significantly more” to satisfy step 2 of the Alice inquiry. Following the Content Extraction example, isn’t there at least a question as to the patentability of these claims? The 2015 Interim Guidance states that for “[s]tep 2B, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine and conventional.” They even provide examiners with a list of conventional computer functions found by courts to be nothing more than a commonly known practice performed by generic computers. A few highlights from the list include: “receiving, processing, and storing data,” “electronically scanning or extracting data from a physical document,” “electronic record-keeping,” “automating mental tasks,” and “receiving or transmitting data over a network.” There is no inventive concept in the use of a generic optical reader and computer components to determine that a received sequence of symbols matches an action, finally instructing a generic computer to perform the action.
Let’s not forget the former Director of the USPTO, Michelle Lee, is a former Google in-house attorney. Much like district court judge’s finding an inventive concept, I know a conflict of interest when I see it. Google provided President Obama with enormous support throughout his two campaigns and presidency. As of August 8th, 2016, more than 250 individuals have moved between a Google affiliated entity and the federal government, including Michelle Lee. Anyone other than Google should have serious concerns that a single entity which routinely flirts with Antitrust violations has revolving door access to federal policymakers, gaining influence over the regulatory environment in which Google (and Google’s competitors) do business.
Participants on both sides of the patent policy debate would agree the USPTO would benefit from improving its examination procedures to ensure high quality patents are issuing from its office, and we have no doubt they are trying to accomplish that goal. However, it would be nice to see a more consistent application of subject matter eligibility standards between courts and patent examiners, if only to assure the patent holder that the property rights granted in its patent have value.
I fear that won’t happen until Congress amends § 101 to clarify subject matter eligibility standards for computer-implemented methods. Alas, Congress has a low approval rating for a reason, and I have little hope they will develop an unambiguous test for the subject matter eligibility of computer-implemented methods. Until that day comes, the USPTO may continue to issue dubious patents such as the ‘013.