Today's Response to Intel (the more I read these motions and response to motions, the more I'm convinced they are perfunctory legal maneuvers)
Intel does not address the issue at hand. HDC did not and is not asking this Court to replace a § 101 patent-eligibility inquiry with a § 103 patent-ability inquiry. HDC merely indicated that the Board’s IPR decisions should inform this Court’s determination. Br. at 1, 4 (ECF No. 45).
1. Underlying Facts of IPR Patentability Decisions Inform Inventive Step Analysis
Intel alleges that “none of the Board’s supposed fact finding has any bearing on this Court’s eligibility analysis.” Response at 5 (ECF No. 46). Intel is wrong. The Supreme Court acknowledged that the patent eligibility and patentability inquiries share certain attributes, and the Federal Circuit routinely looks to the prior art when considering the eligibility question. Writing in Mayo v. Prometheus, Justice Breyer recognized that, “in evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap.” 132 S. Ct. 1289, 1298 (2012). Understanding what is and is not wellunderstood, routine, conventional activity is a factual determination, Berkheimer v. HP Inc., 881 F. 3d 1360, 1368 (Fed. Cir. 2018), and facts that are relevant to this inquiry are sometimes, as the Mayo Court presaged, similar, if not identical, to those that inform obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007) (e.g., routine/conventional activity such as combining prior art elements according to known methods to yield predictable results, or using well-understood techniques to improve similar devices, methods, or products).
Similarly, in Alice the Court acknowledged the overlap with aspects of §§102 and 103 when considering the “inventive concept” aspect of §101, this time in step one, by considering the state of the art as reflected in a number of texts, ultimately concluding that claims to a method of intermediated settlement is an abstract idea that is beyond the scope of § 101. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2356 (2014). HDC’s opening brief proposal that the Board’s IPR decisions should inform this Court’s determination is thus consistent with the Supreme Court’s treatment of underlying factual determinations common to the question of patentability under §§102 and 103 and patent eligibility under §101.
The Federal Circuit compared claimed subject matter with the prior art (hallmarks of patentability inquiries) in a number of post-Alice §101 decisions. See Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150-51 (Fed. Cir. 2019) (claims for error checking in data transmissions are patent eligible “because it employs a new way of generating check data that enables the detection of persistent systematic errors in data transmissions that prior art systems were previously not equipped to detect.”); Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316-19 (Fed. Cir. 2019) (claims not patent-ineligible at motion to dismiss stage under Alice Step two where benefits over the prior art were highlighted in amended complaint).
2. Intel’s Abstract Idea Argument Misses the Mark on the Inventive Step Analysis
Intel argues that, “because the abstract idea itself cannot supply the inventive concept, the Board would have had to make findings regarding inventiveness of something other than the SVM-RFE algorithm for HDC’s argument to be remotely viable.” Response at 1-2. This argument perverts Intel’s original position concerning an alleged abstract idea. According to Intel’s original motion, the claims are directed to the abstract idea of using SVM-RFE to analyze and report data, see Mot. at 9 et seq (ECF No. 33), not improving a support vector machine by using optimized weights generated by the SVM to compute ranking criteria. As HDC noted, the Board’s IPR decisions address this latter requirement, as recited in the claims. Intel Corp. v. Health Discovery Corporation, IPR2021-00550, Final Written Decision, Paper 36, slip op. at 36 (PTAB Sep. 6, 2022). This is not an instance of an abstract idea itself supplying an inventive concept, as Intel would have it. Instead, the Board’s IPR decisions directly inform the very inquiry Alice step two, the “inventive concept” step, demands.
In step two, the fact-finder looks with specificity at what the claim elements add in order to determine whether they identify “something more” in or to the otherwise ineligible subject matter to which a claim is directed. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). This requires deciding: (1) whether each of “the steps in the claimed process (apart from the [abstract idea itself]) involve well-understood, routine, conventional
activity previously engaged in by researchers in the field,” Mayo, 132 S. Ct. 1294, and (2) whether all of the steps “as an ordered combination add[ ] nothing to the [abstract idea] that is not already present when the steps are considered separately.” Id. at 1297. HDC explained precisely how the Board’s decisions answered at least the first, if not both, of these queries.
According to the Board, “we are not persuaded that using the optimized weights generated by an SVM to compute the ranking criteria in Kohavi’s wrapper method would have been a known technique to skilled artisans at the time of the invention for selecting a subset of features.” IPR2021-00550, Paper 36, slip op. at 36. This technique, the Board determined, was not known to skilled artisans at the time of the invention, id., and that determination should inform the question of what was or was not “well-understood, routine, conventional activity already engaged in by the scientific community.” At minimum, the Board’s determination raises issues of fact, making pretrial disposition inappropriate. Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018) (conventionalness “is a question of fact.”); and see Berkheimer, 890 F.3d at 1375 (Lourie, J. concurring) (recognizing this occasionally involves the type of fact-finding underlying §§ 102 and 103).
3. Conclusion
The underlying facts of the Board’s IPR decisions should inform the Court when deciding whether the claims recite an inventive concept under Alice Step 2.
AI
