Federal Circuit Sinks Another Attempt to Use PTO Guidance

By on May 7, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit found claims directed to methods of fishing to be patent ineligible, affirming a Patent Trial and Appeal Board (PTAB) decision that the claims were directed to the abstract idea of selecting a fishing hook based on observed water conditions. In re: Christopher John Rudy, Case No. 19-2301 (Fed. Cir. Apr. 24, 2020) (Prost, CJ).

The patent family in suit underwent lengthy prosecution beginning with a 1989 application titled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” After years of amendments, PTAB appeals and a previous visit to the Federal Circuit, Rudy’s return to the Federal Circuit provided the Court with an opportunity to both deny him patent coverage and reject US Patent and Trademark Office (PTO) guidance regarding subject matter eligibility.

The PTAB analyzed the illustrative claim of application under both the Alice/Mayo two-step framework (IP Update, Vol. 17, No. 7) and the 2019 Revised Patent Subject Matter Eligibility Guidance (see McDermott’s March 2019 “Intellectual Property Law Year in Review”). The PTAB concluded that the claim was directed to the abstract idea of “select[ing] a colored or colorless quality of a fishing hook based on observed and measured water conditions, which is a concept performed in the human mind.”

Rudy pro se appealed the PTAB’s reliance on PTO guidance and its final conclusion. Despite ultimately finding Rudy’s application patent ineligible, the Federal Circuit opened its decision with a discussion as to why the Court agreed with Rudy’s arguments on the non-binding nature of PTO guidance. In blunt terms, the Court reiterated its holding in Cleveland Clinic (IP Update, Vol. 20, No. 8, and 2019 IP Law Year in Review – “The Life Sciences”):

[W]e apply our law and the relevant Supreme Court precedent, not the Office Guidance, when analyzing subject matter eligibility. . . . To the extent the Office Guidance contradicts or does not fully accord with our caselaw, it is our caselaw, and the Supreme Court precedent it is based upon, that must control.

Having made clear the foundations of its appellate review, the Federal Circuit went on to affirm the PTAB’s ruling, finding the case analysis consistent with relevant case law despite being framed as “a recitation of Office Guidance.” The Court concluded that “[the representative claim] requires nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions.”

Paul Devinsky
Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.