Tuesday, September 07, 2021

Robbins lost at the CAFC in No. 13/675,440 via a Rule 36 affirmance

In the case titled In re Robbins, one notes the following:

JAMES R. KLAIBER, Hughes Hubbard & Reed LLP, New York, NY, argued for appellants Richard Allen Robbins, Justin Mark Brockie, James Michael Kelly, Asif Ali, Mojahedul Hoque Abul Hasanat, Omar Faruq, Sazzad Rafique, Tahseen Mohammad, Ummy Habiba, Suraiya Parveen, Jeremy Ian Schulman Robbins. Also represented by JAMES W. DABNEY, LYNN M. RUSSO, JUSTIN TAYLOR.

One recalls the KSR case

Oral arguments were heard by the Supreme Court on November 28, 2006. The petitioner KSR was represented by James W. Dabney. Deputy solicitor general Thomas G. Hungar represented the government, which sided with the petitioner. Thomas C. Goldstein argued on behalf of the respondent Teleflex. EFF filed an amicus brief supporting KSR. On April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit. The Court held that the disputed claim 4 of the patent was obvious and that in "rejecting the District Court’s rulings the Court of Appeals analyzed the issue in a narrow rigid manner inconsistent with §103 and our precedents." The Supreme Court disapproved the Federal Circuit's strict application of its "teaching-suggestion-motivation" (TSM) test, and therefore made it easier to invalidate patents as obvious.

KSR is cited only to illustrate one of many of Mr. Dabney's contributions to patent law. The Robbins case is a 101 case, and itself is rather interesting (link: https://casetext.com/admin-law/richard-allen-robbins-et-al-1 )

We have the issue of the conclusory statement that everything was covered:

First, Appellant does not quote the full text of our statement. In fact, our statement also states, “We find that our analysis above substantially covers the substance of all the arguments, which have been made.” Decision 13. Thus, we did notify Appellant that by our analysis, the substance of all arguments was covered, and, as is shown below, this did occur.

Berkheimer arises:

Concerning Appellant’s citations (Req. Reh’g 8–9) to “[r]ecent decisions of the Board,” we are not bound by a non-precedential decision of another panel of the Board.Citing inter aliato Berkheimer, Appellant again argues error because whether subject matter is “well-understood, routine, and conventional” is a question of fact, and the Examiner’s purported finding is entirely conclusory, is completely unsupported by evidence, and fails to address whether the claims, as a whole, include “well-understood, routine, and conventional” subject matter to a skilled artisan in the relevant field, i.e., in the ‘electronic healthcare record’ industry.Req. Reh’g 10 (emphasis omitted). We disagree with Appellant. According to Appellant’s reading of Berkheimer, evidentiary support would always be required for all Alice step two determinations. This simply is not what the Federal Circuit stated in Berkheimer. There, the Federal Circuit made clear that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer, 881 F.3d at 1368. In fact, the Federal Circuit in Berkheimerdid not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370


Against this finding, Appellant in its Request cites to paragraphs 5–9 of the Declaration and asserts that its declaration “includes numerous details supporting Mr. Robbins’s cited statement.” Req. Reh’g 11. But, the only specific argument advanced by Appellant is that, the declaration explains why “there was ‘no practical way to review or analyze large amount[s] of video healthcare information containing the personal information of many individuals.’” Id.(emphasis omitted). But, this explanation does not tell us how the known use of blurring faces is not a well-understood, routine, conventional activity.Appellant’s other arguments, including those directed to now-superseded USPTO guidance, have been considered but are not persuasive of error. (See2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”)).)



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