Employing a Trademark Test to Determine When a Patent is ‘Directed To’ a Section 101 Judicial Exception

Under U.S. trademark law and court precedent, determining whether there is a likelihood of confusion involves weighing a number of factors (13 factors to be exact), known as the “Dupont factors,” set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The CCPA (Court of Customs and Patent Appeals) is a predecessor court to the Federal Circuit. As noted by the Federal Circuit, not all the DuPont factors may be relevant or of equal weight in a given case and any one of the factors may control a particular case.

Under 35 U.S.C. §101, patent-eligible inventions include any process, machine, manufacture, composition of matter and any new and useful improvement thereof. There are, in addition, three judicially created exceptions to the broad recitation of Section 101: laws of nature; natural phenomena; and abstract ideas. Natural phenomena is said to include products of nature. This article focuses mainly on the abstract ideas exception, but also touches on laws of nature and mathematical equations.

If the goal of Section 101 is to act as a gatekeeper, rather than a roadblock, the factors approach seems appropriate to employ in a patentability analysis.

The Need is Urgent

A discussion regarding possible different ways to determine whether a claim is directed to a judicial exception is particularly relevant now, in light of the present state of Federal Circuit jurisprudence on judicial exceptions. Of particular interest, pending with the Supreme Court is a Petition for Writ of Certiorari from Am. Axle & Mfg. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) (hereinafter, “American Axle”). American Axle appeals a split decision from the Federal Circuit denying a rehearing en banc. The Petition seeks, in part, clarification from the Supreme Court as to the appropriate standard for determining whether a patent claim is directed to a patent ineligible concept (the judicially created exceptions).

To refresh, the Alice two-part test includes, in step one, the court determining “whether the claims at issue are directed to a patent-ineligible concept. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). If so, we then “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (quoting Mayo, 566 U.S. at 72–73, 78).

I do not envy the Supreme Court, as it would seem difficult, if not impossible, to fashion one standard fitting all situations for determining whether a patent claim is “directed to” one of the judicially created exceptions to §101. However, perhaps we do not need to try to fashion one standard. Instead, this proposal looks to factors, the collective weight of which tips one way or the other, much like the DuPont factors for likelihood of confusion in trademark law. Think “useful indicia” of patentable subject matter. This may well be considered an academic exercise, but the Supreme Court does have the authority to make it happen.

To be sure, the factors to consider would need to be fleshed out, but below are some possibilities to consider, followed by application to American Axle and Yabin Yu v. Apple Inc. (Fed. Cir. 2021) (hereinafter, “Yu v. Apple”). Like the DuPont factors, not all the judicial exception factors will be applicable in a given case, and one or a subset of the factors may be controlling. Further, the factors may evolve or fall out with time and/or technology changes.

Possible Factor One: Traditional Patentability

For example, one factor may be whether a given claim results in a type of invention traditionally patentable, such as a digital camera (Yu v. Apple) or the result of an industrial manufacturing method (American Axle). If so, then this factor would weigh in favor of patentable subject matter being present. Applied to both Yu v. Apple and American Axle, this factor should weigh, perhaps heavily, in favor of finding patentable subject matter, but still subject, of course, to the other statutory requirements.

Possible Factor Two: Physical Components

Another example of a possible factor is whether a plurality of specific physical components, other than a general-purpose computer, are present. If present, this factor would weigh in favor of patentable subject matter. For both Yu v. Apple and American Axle, this factor would also weigh, perhaps heavily, in favor patentability.

Possible Factor Three: Non-Obviousness

Another possible factor is whether the claims have been held to be novel and non-obvious over the prior art. If so, this factor would weigh in favor of patentable subject matter. Applied to both Yu v. Apple and American Axle, this factor would weigh in favor of patentable subject matter. I realize the novel and non-obvious factor may be controversial, but it is an indicia of an improvement or new approach over conventional approaches.

Possible Factor Four: Data

Another possible factor is whether one or more of the following are present in the claim: data gathering; analysis of data; reporting of results of analysis; displaying results or organizing data. If one or more are present, this factor would weigh against patentable subject matter. Applied to either Yu v. Apple or American Axle, this factor would weigh in favor of patentable subject matter.

Possible Factor Five: the ‘How’

Not that I endorse the Federal Circuit (inconsistent) requirement of the presence of a “how” in the claim, but another possible factor is whether there is literally only a desired end result with a complete lack of claim limitations as to how the end result is achieved. If present, then this factor would weigh against patentable subject matter. Applied to American Axle, this factor would weigh, on balance, in favor of patentability. Application to Yu v. Apple is difficult. There is a recitation of a resulting “enhanced” digital image. However, it is completely unspecified in the claim as to what type of enhancement, so it seems insufficient to qualify as an end result. In my view, this would be a Section 112 issue; that is, whether “enhanced” is indefinite, without any effect on the patentable subject matter inquiry.

Possible Factor Six: ‘Well Understood, Routine and Conventional’

A last suggested factor for a process or method of use is whether the claimed steps are well understood, routine and conventional; if so, this factor would weigh against patentable subject matter. As applied to American Axle, this factor would clearly be in favor of patentable subject matter, since the prior art did not teach dampening the two types of vibrations for the same prop shaft liner. However, as applied to Yu v. Apple, there were some aspects of individual claim elements that may weight against patentability, but not in a very strong way. The other factors above weighing heavily in favor of finding patentable subject matter in Yu v. Apple should outweigh this factor.

Sub-Factors

With regard to laws of nature and mathematical equations, if neither is expressly recited, it would weigh in favor of patentable subject matter. In that case, a possible sub-factor could be whether there is clear reliance on the same for patentability. If so, then this factor would weigh against patentable subject matter, depending on the strength of the case for clear reliance. If either a law of nature or a mathematical equation is expressly recited, a possible sub-factor is whether there is an otherwise relatively high level of specificity in the claim. If so, then this factor would weigh in favor of patentable subject matter.

Jumpstarting the Section 101 Dialogue

A patentable subject matter inquiry is currently too difficult and confusing, and often leads to highly questionable results. Hence, it is appropriate to consider other ways, such as a factors-based approach proposed in this article. However, the real purpose of this article is to spark a discussion regarding other viable approaches to determining whether a claim is directed to one of the judicial exceptions to Section 101.

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