Fishing for Eligibility in Murky Waters
Last week, the Federal Circuit decided that claims related to a method of fishing that involved evaluating the water to be fished were not patent-eligible under 35 U.S.C. § 101. It is a bit of a head scratcher as to why this opinion is deemed precedential — the eligibility analysis employed here under the Alice/Mayo framework certainly did not involve wading into unchartered waters. In any event, In re: Christopher John Rudy is a good reminder as to what the Federal Circuit considers as patent eligible (or not) under the U.S. Supreme Court’s Alice decision. In addition, the opinion makes clear that, when analyzing subject matter eligibility, Federal Circuit caselaw and Supreme Court precedent controls even if USPTO guidance suggests otherwise.
Rudy applied for claims relating to a method for fishing that involved evaluating the water to be fished and selecting the color of fishhook based on a table in the claim. The Examiner rejected the claims of his patent application as patent ineligible under § 101. After the Patent Trial and Appeal Board (PTAB) agreed with the Examiner, Rudy appealed the PTAB’s decision. Among other complaints, Rudy accused the PTAB of improperly relying on the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Office Guidance) “as if it were prevailing law” even though, according to Rudy, the Office Guidance is “a shortcut to ease Mayo / Alice test application, with no force or effect of law and ignoring the law.” The court agreed with Rudy that the Office Guidance “is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis.” The opinion confirmed that the two-step framework set forth by the Supreme Court in Alice is the governing rule of law concerning the judicial exceptions to 35 U.S.C. § 101 and “[t]o the extent the Office Guidance contradicts or does not fully accord with [Federal Circuit] caselaw, it is [Federal Circuit] caselaw, and the Supreme Court precedent it is based upon that must control.”
Unfortunately for Rudy, the court concluded that “[a]lthough a portion of the Board’s analysis is framed as a recitation of the Office Guidance, in this particular case the Board’s reasoning and conclusion are nevertheless fully in accord with the relevant caselaw.” In this vein, the court reasoned that at Step 1 of the Alice/Mayo test, i.e., whether the claim at issue is directed to a patent-ineligible concept, the PTAB correctly found that the illustrative claim 34 is directed to the abstract idea “of selecting a fishing hook based on observed water conditions.” The court seized on Rudy’s concessions that “all that is required of the angler is observation, measuring, and comparison with a predetermined chart” and that “even a fish can distinguish and select colors . . . the fisherman can do this too” to conclude that the claim merely relates to the mental process of hook color selection. In fact, dismissing Rudy’s argument that a person fishing might use some instrument to measure the light transmittance of the water, the court explained that, because the claim itself does not include such a limitation, the claim is still abstract.
The court also could not find an inventive concept sufficient to confer patent eligibility under Step 2 of the Alice/Mayo test. In particular, each of the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the hook color) is abstract. Considered together, they merely repeat the core idea of selecting a fishing hook based on observed water conditions. As to Rudy’s complaint that the PTAB should have evaluated all of the rejected claims rather than only considering one independent claim as illustrative, the court explained that there was nothing distinctive in the other rejected claims that would have required independent analysis. Indeed, the court opined that the different hook color chart in the other independent claim would not have led to a different conclusion with regard to eligibility.
It never seems fair to have the benefit of 20/20 hindsight when evaluating these decisions. But it is difficult not to make some observations here. First, this application was filed decades earlier on October 21, 1989. In fact, the PTAB’s affirmation of the Examiner’s rejection of the claims at issue in the appeal came in just shy of the 30-year anniversary of the application filing (and four years after they were finally rejected by the Examiner). Setting aside the almost mind-blowing aspect that a patent application filed over 30 years ago is even still pending, it raises the obvious question as to why Rudy decided to dig in and fight about the eligibility of the rejected claims when there was nothing unexpected in the court’s decision here. Second, this appeal reminds me of a few quotes from David Lynch’s book entitled Catching the Big Fish: Meditation, Consciousness, and Creativity:
When you’re fishing, you have to have patience. You bait your hook, and then you wait.
If you want to catch little fish, you can stay in the shallow water. But if you want to catch the big fish, you’ve got to go deeper.
Rudy certainly had patience (decades-worth). He definitely went deeper with four PTAB appeals and, including the current one, two appeals to the Federal Circuit — even when there were allowed claims in the application. But, this might just be one of those situations where it was time to cut bait instead of pursuing the bigger fish.