Last week, the United States Solicitor General recommended granting review in American Axle & Manufacturing v. Neapco Holdings, a case many in the patent community hope will provide clarity on U.S. patent eligibility law. The Supreme Court asked for the views of the Solicitor General in May of 2021 and the response has been anxiously-awaited for more than a year now, since the SG’s recommendation on whether to grant or deny a petition is often followed by the Court.
The questions presented by the petition are:
- What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
- Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?
The brief explains in no uncertain terms that claim 22 of the patent at issue does not “simply describe or recite” a natural law and ultimately should have been held patent eligible. The SG recommends granting the petition as to the first question presented by American Axle, “as framed in this brief,” but deferring question two, since “[t]he answer to that satellite procedural question depends on the substantive Section 101 standard.”
IPWatchdog asked stakeholders to weigh in on whether the SG took the right approach and what this latest development means for the fate of U.S. patent eligibility. Here is what they had to say.
Scott Hejny, McKool Smith
The SG’s approach is correct, and while I understand why the focus is on Question 1, Question 2 is equally important. Section 101 has plagued patent litigants for years, the Federal Circuit is clearly divided on the issue, and parties need clarity on patent eligibility. American Axle is a good vehicle for a Section 101 analysis because the claim at issue is relatively simple, it relies on the application of a law of nature (Hooke’s law) to a process for manufacturing a tangible, physical element, and it provides the Supreme Court with relatively straightforward case for clarifying patent eligibility. No doubt there will still be challenges applying a single test to all areas (like software and life sciences), but the current status quo is untenable.
But we also need an answer as to whether patent eligibility is a legal, factual, or hybrid question. I think the Supreme Court will grant cert in this case, and I’m hopeful that it will address both questions. It’s unlikely that the Court will take up another Section 101 case for some time, and I feel certain that’s why the SG felt the need to focus on the criticality of Question 1.
Miranda Jones, Porter Hedges
SCOTUS’s call for the views of the Solicitor General in response to the American Axle petition already signaled the Court’s interest in potentially again taking up the issue of patent eligibility under Section 101. Given the opinions at the Federal Circuit and the amici briefing, it would be difficult for the Court to ignore the current confusion around the application of its Alice and Mayo decisions. Given the Solicitor General’s recommendation that the Court grant American Axle’s cert petition as to the first question, we would be surprised if the Court does not do so. Usually, a call for the views of the SG coupled with a grant recommendation from the SG results in a cert grant. Either way, however, uncertainty around patent eligibility will likely persist at least through 2022. If the Court grants cert, there will be uncertainty until briefing is complete, argument occurs, and Court’s decision is issued. And the Court may not be able to provide any substantively useful clarification. But if the Court declines to grant cert, there also will be uncertainty as we continue to muddle along under the current framework.
With respect to whether patent eligibility is a question of law or fact, the SG’s recommendation is reasonable. Depending on the framework adopted, there may exist underlying questions of fact to the overarching question of law.
Jonathan Stroud, Unified Patents
The SG, as expected, had been waiting until the USPTO leadership was sat to move forward with their brief. It made the case for certiorari well by reframing question 1—both expanding and narrowing its focus to something that seemed, at least to me, more manageable for the Court to consider. It was shrewd to pass on the second question entirely; it makes the first more attractive. If the Court doesn’t grant this, it seems unlikely they’ll ever revisit Alice.
Wendy Verlander, Verlander LLP
The Solicitor General is certainly right that a review of patent eligibility law is desperately needed. This case should have been easy. That it wasn’t is plain evidence of the quagmire created by Alice and its progeny. And the SG is also right that the Court needs to clarify the test – not only for patents implicating laws of nature – but, more importantly, for software, where decisions about what is abstract have been notoriously inconsistent. Emphasizing preemption as the overarching concern is also an important aspect of the SG’s position, as that acts to cabin the analysis so that driveshafts and garage door openers are not found ineligible for patenting. At bottom, I would hope that if the Supreme Court accepts the case, it does not take the easy way out by merely addressing the immediate issue concerning laws of nature, but sets forth a clear test for eligibility, and particularly for abstractness, that isn’t so much based on history (as the cases go in every direction) but a principled analysis of the reasons this determination is made in the first place.
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8 comments so far.
BJune 2, 2022 12:15 pm
@ MaxDrei “Can anybody explain to me, looking in on this issue from Europe, what help (if any) the SG gives to the Court to lay down what shall be the “standard” mentioned in Question 1.”
GREAT QUESTION. SERIOUSLY!!!
The answer is zero. The SG’s brief is a meandering monolog devoid of any actual critical analysis.
@ Model 101 “Just trying to understand why facts should not matter. Tell me why.”
The SG is brain dead. Bilski, Alice, and Mayo were all determined based on evidence on the record. It’s as if none of these GS-15 geniuses ever read a single Supreme Court decision. They’re like 15yo kids faking a book report. “Errr, ummm, the Great Gatsby was about this guy named ‘Gatsby’ who was really great . . . ummmm . . . because . . . ummm . . . he did all these great things . . . . “
BJune 2, 2022 12:03 pm
“American Axle is a good vehicle for a Section 101 analysis because the claim at issue is relatively simple, . . . ”
Sorry, but this is 100,000% wrong. The claims in AA suffer maladies under 112, and as we know the SCOTUS can’t count past 101 when analyzing claims.
” Given the opinions at the Federal Circuit and the amici briefing, it would be difficult for the Court to ignore the current confusion around the application of its Alice and Mayo decisions.”
Has this practitioner been paying attention to the SCOTUS for the last 10 years?
“With respect to whether patent eligibility is a question of law or fact, the SG’s recommendation is reasonable.”
The SG is asking what patent eligibility is about so long as we don’t bother with whether it’s an issue of fact or law? I respectfully submit that the SG and DoJ are incompetent boobs.
“If the Court doesn’t grant this, it seems unlikely they’ll ever revisit Alice.”
I’m not saying this is wrong. I’m saying that the questions are all wrong.
“Emphasizing preemption as the overarching concern is also an important aspect of the SG’s position, as that acts to cabin the analysis so that driveshafts and garage door openers are not found ineligible for patenting.”
Most respectfully, I didn’t see any emphasis on preemption in the SG’s brief.
I’m just going to repeat what I’ve already said. The SG’s brief is stupid beyond belief. What makes me angry is that taxpayer dollars were paid to write that meandering piece of dreck
MaxDreiJune 1, 2022 07:13 am
Can anybody explain to me, looking in on this issue from Europe, what help (if any) the SG gives to the Court to lay down what shall be the “standard” mentioned in Question 1. I had thought that one of the highest rules of advocacy is that one helps the court by basically writing already the reasoning of the decision you advocate. Has the SG Brief done that? Or has it ducked out of answering that hard question?
It strikes me that asking this court to define “the standard” without help is as hopeless an ask as asking the court to reconcile relativity with quantum theory; a complete waste of time even to ask. If the SG, in the Brief it took a year to write, couldn’t do it, how feasible is it for the Supreme Court Justices, all by themselves, to define that standard?
Which might explain why so many patent attorneys would prefer SCOTUS to stay well clear of patent eligibility, lest they mess up the law even more than they have messed it up already.
Lost In NorwayJune 1, 2022 05:50 am
Maybe I am no longer an optimist with 101 and I just don’t see SCOTUS revisiting this in a meaningful way, SG or not. They have decided and left it to the lower courts to sort out. If they do take the case up, it will be to reiterate Alice in full and/or provide even worse guidance than previously.
Alice is here to stay until congress gets involved.
“We are from the government and we are here to help.”
concernedMay 31, 2022 06:59 pm
I did mis-speak about facts and evidence not mattering.
Facts and evidence are considered AGAINST the patent holder~ Alice (textbook from 1890s) and Mayo (the specs.)
The whole situation is ridiculous by the simple fact that it takes a Supreme Court case to determine if evidence matters in a legal setting. A common people would just assume evidence and the truth matters.
Pro SayMay 31, 2022 01:30 pm
Thanks. Would be nice to have Gene and some others share their thoughts.
Should SCOTUS disastrously pass on Axle, we’ll likely all be dead — or kneeling before Communist China — before Alice is ever revisited.
Model 101May 31, 2022 12:06 pm
Just trying to understand why facts should not matter.
Tell me why.
concernedMay 31, 2022 08:28 am
Only in the patent world is something a question of law OR fact, not both.
Doctor Richard Kimble would have been toast.
Perry Mason and Matlock probably would have been boring shows without facts and evidence, and certainly their investigators would not have been needed.
Investigators Paul Drake and Tyler could have joined the one arm man at the tea party in the movie “Harvey the Rabbit co-stars in Alice in Wonderland.”
I hear Zav is looking for new material over at Warner Brothers Discovery while not escalating the streaming budget wars. He would not need any creative writers, just grab a couple of patent prosecutions as truth is definitely stranger than fiction in patent world.