PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious – Patent

Artificial Intelligence (AI) typically involves certain general aspects. This includes, for example, training data, AI training algorithm(s) that use the training data to train an AI model, and predictions and/or classifications as output from the trained AI model. Would it be obvious to a person of ordinary skill in the art (eg, a computer scientist) to combine these general aspects to arrive at any given AI-based invention? The Patent Trial and Appeal Board recently answered “no” in its final written decision in Intel Corporation v. Health Discovery Corporation, IPR2021-00552Paper no. 38 (September 12, 2022).

Patent-on-issuance

The subject patent, US Patent 7,542,959 (the “‘959 patent”), describes an AI-related and medical device-related invention that uses Support Vector Machines (SVM) and Recursive Feature Elimination (RFE) for selecting genes that are able to accurately distinguish between medical conditions. Both SVM and RFE are well-known AI algorithms. An SVM algorithm that finds a “hyperplane” (ie, a boundary) that distinctly classifies mapped training data. An RFE algorithm selects features (columns) in a training data set that have an impact on an output prediction or classification.

The ‘959 patent describes the identification of a defining subset of features within a large set of features. Such identification is performed by training the SVM to rank the features according to classifier weights and where features are removed to determine how their removal affects the value of the classifier weights. Id. “The features with the smallest weight values ​​are removed, and a new support vector machine is trained with the remaining weights.” ‘959 Patent, Abstract. “The process is repeated until a relatively small subset of features remain that are able to accurately separate the data into different patterns or classes.”
Id.

PTAB’s decision and finding of no motivation to combine

Intel requested the PTAB to strike down the patent’s claims as obvious over print prior art publications. Even though these publications taught all prescribed elements of the claims, the PTAB found that Intel failed to show that a skilled artisan would have combined the publication teachings in the manner set forth in the ‘959 patent’s claims .

The PTAB based its decision on Personal Web Technologies., LLC v. Apple Inc.848 F.3d 987, 993 (Fed. Cir. 2017), where the Federal Circuit held that even if a skilled tradesman
may understood that a set of prior art references may be combined in a specific alleged manner, it is not enough; instead, a skilled craftsman must be shown would have known to pick out the set of prior art references and combine them to arrive at the claimed invention. IPR2021-00552Final Written Decision on 31.

The PTAB agreed with Intel that the prior art references
could be combined. But the PTAB found that Intel nonetheless failed to provide sufficient evidence showing that a skilled artisan would haveare motivated to do so:

[W]e is not convinced by [Intel’s] evidence and allegation that a skilled artisan would have had a motivation to modify [the
prior art] method to rank the SVM features according to their corresponding weight values ​​as [recited by the challenged
claims].

Id. at 26-27. In particular, the PTAB found that Intel’s evidence and reasoning “demonstrated nothing more than a skilled artisan, once presented with the separate pieces of information highlighted in [the cited references]might have understood that they could be combined in the way claimed.”
Id. on 27.

Regarding the specific AI technical features, the PTAB found no motivation in the evidence to change Kohavi’s wrapping method by change the ranking used in the feature subset selection algorithm ofan estimate of the performance of an induction algorithm to properly classify data to a variable – feature weight – used in the algorithm of an SVM to classify data.” Id.

Dissenting opinion

The PTAB’s decision was not unanimous, but instead split 2-to-1. The dissenting administrative patent judge stated that “Applicant, with the support of his expert…explained that his proposed addition of Hocking’s vector weight ranking criteria was “a well-known technique (Hocking’s variable selection) on a well-known device (Kohavi’s RFE method which uses Boser’s SVM) apply ) which is ready for improvement to produce predictable results.’ ” Id. at 41-42 (cit
KSR Int’l Co. f. Teleflex Inc., 550 US 398, 417 (2007)). Accordingly, this judge agreed that the claimed invention was nothing more than an obvious combination of known techniques applied to a known device, producing only predictable results and thus obvious under KSR’s framework. Id. at 42.

The PTAB’s decision is the subject of Intel’s pending “Request for Rehearing by the Director,” filed on October 12, 2022. In its request, Intel complains, among other things, that the PTAB’s decision violates the Administrative Procedure Act because the patent owner never had argued that a person skilled in the art would not have been motivated to combine the prior art in the manner the PTAB did. The director’s decision can be expected any day, and the case could be the subject of an appeal to the Federal Circuit. A decision by the Federal Circuit may be important for the application of
Personal Web Technologies to AI-related inventions.

A more detailed version of this article can be found at Marshall Gerstein’s blog at PatentNext: PTAB Finds Artificial Intelligence (AI) Medical Device Patent Not So Clear.

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