Mario Villena, et al. v. Andrei Iancu, Director, United States Patent and Trademark Office

The present case is directed to a rejection under Title 35 U.S.C. § 101 from the United States Patent and Trademark Office (USPTO) under the Alice/Mayo test. In conducting this § 101 rejection, the present record shows that USPTO failed to address each and every limitation of the claims separately and as a whole, ordered combination as is required by the Alice/Mayo test. The present record also shows that, during appeal before the Patent Trial and Appeal Board (PTAB), the PTAB cited new “evidence” on rehearing and then denied Petitioners an opportunity to address the ersatz nature of such “evidence.” Petitioners were unquestionably prejudiced. The present record further shows that the USPTO failed to provide substantial evidence to support the proposition that a single claim limitation is well-understood, routine and conventional. In fact, it was the express holding of the PTAB that five separate claim limitations were not found or remotely suggested in any reference of record. In view of the above issues, Petitioners ask the following questions: Is the Administrative Procedure Act (APA) (Title 5 U.S.C. § 706) somehow nonrelevant under Alice/Mayo, or does the Federal Circuit’s refusal to address unlawful abuses by the USPTO when reviewing claim rejections under Alice/Mayo an abuse of discretion?