The Difficulty of Predicting Section 101 Patent-Eligibility

Two recent decisions by the Patent Trial and Appeal Board (PTAB), reported in detail on the “Patent Docs” blog, demonstrate the vagaries and unpredictability now intrinsic to preparing and prosecuting applications for software inventions.  In the wake of Alice Corporation Pty. Ltd. v. CLS Bank International, it has been somewhat of a truism that claims directed solely to processing data in a computer will not survive a patent-eligibility challenge at the USPTO (or, for that matter in U.S. District Court).  The claims of the two patent applications at issue in these recent PTAB decisions certainly fall into the category of “data-processing” claims.  I must confess that, had I been asked to read these claims and then predict the outcome of the PTAB’s patent-eligibility determination, I would have predicted that rejections under 35 U.S.C. § 101 would have been sustained in both instances.  Nonetheless, the PTAB reversed examiners’ Section 101 rejections.

The linked-to blog post, which is well worth a thorough read, discusses some possible reasons for, and commonalities in, the PTAB’s decisions.  These points are well-taken.  But I think the larger point is from the school of Legal Realism.  Different arbiters (USPTO examiners, PTAB judges, federal court judges) may render different decisions when evaluating the same claims for patent-eligibility.  All patent applicants, and patent owners, can do at the moment is to weigh probabilities — with much less certainty than attaches to, say, a question of prior art anticipation or obviousness — that a claim will or will not be deemed patent-ineligible under Section 101.