Petitioner Distances Eligibility Case from American Axle, Imploring SCOTUS to Weigh in on ‘Quasi-Enablement’ Analysis

“Interactive points to Federal Circuit case law that illustrates a ‘wide disparity’ among various panels in terms of how the court has treated the relationship between Section 101 and Section 112, ‘leading to unpredictable and inconsistent application of the law.’”

https://depositphotos.com/133300380/stock-photo-u-s-supreme-court.htmlInteractive Wearables, the petitioner in yet another patent eligibility case that the U.S. Supreme Court is being asked to review, filed a reply brief on July 11 distancing its petition from that of American Axle & Manufacturing, Inc.’s, which was denied certiorari on June 30, 2022.

The brief characterizes U.S. patent eligibility doctrine as being “perilously fractured” and narrows its arguments to focus on the third question presented in its petition, since the first two were addressed, and have now been rejected by the Court, in the American Axle case.

The case is Interactive Wearables, LLC v. Polar Electro Oy and Polar Electro, Inc. Interactive Wearables petitioned the High Court in March 2022, asking the Justices to answer the following three questions:

  1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
  2. 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?
  3. Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?

A group of patent practitioners told the Supreme Court in April that the case, which involves a patent for a type of content player, would be a better vehicle for unraveling the patent eligibility problem than American Axle.

The district court in Interactive Wearables held that the relevant claims for Interactive’s patent covering “improved devices for playing audio and visual media content, such as cellphones, radios, and wearable devices,” are directed to the abstract idea of “providing information in conjunction with media content, ‘applied to the context’ of content players.”

The court said that the claims “merely apply the abstract idea behind consulting a TV Guide—i.e., ‘to obtain more information’ about a program while viewing it—to a content player, rather than ‘provide[] a technological improvement’ to the content player itself.”

The Federal Circuit summarily affirmed the district court’s decision under Rule 36, without explanation, and denied Interactive’s petition for rehearing or rehearing en banc in December 2021.

In its reply brief this week, Interactive Wearables said the claims at issue in its case “starkly highlight how far the Federal Circuit’s patent eligibility analysis has ventured into the realm of enablement.” This is because the district court looked to the specification to determine that the claims at issue were abstract instead of focusing on the claim language itself. The brief explains:

“There was no reason for the district court to look beyond the face of the claim, where the claim is undisputedly narrowly and concretely recited and not pre-emptive of the district court’s own broadly articulated abstract idea. Moreover, even when the district court did resort to its analysis of the specification, it did not find any admissions of conventionality of the claimed content-player/remote-control combination that might warrant disregarding them from the patent eligibility inquiry. Instead, the district court determined only that, in its estimation, the specification’s level of detail regarding the claimed components was wanting.”

The district court indicated in its decision that the physical components of the invention were not sufficient to justify eligibility because “[n]othing else is described in the specification as the invention” and the “specification fails to provide any technical details for the tangible components,” says the brief.

Despite Polar’s arguments that the question isn’t implicated because “[because] [n]o one—neither Petitioner nor Polar, not the district court or the Federal Circuit—contends that Section 112 considerations should inform the Section 101 inquiry,” Interactive points to Federal Circuit case law that illustrates a “wide disparity” among various panels in terms of how the court has treated the relationship between Section 101 and Section 112, “leading to unpredictable and inconsistent application of the law.”

In Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1261 (Fed. Cir. 2017), for example, the panel explained that “whether the ‘specification teaches an ordinarily skilled artisan how to implement the claimed invention presents an issue under 35 U.S.C. § 112, not an eligibility issue.’” But in the present case and several others cited in Interactive’s petition, panels have looked to the specification to determine what the claims are directed to, rather than centering the analysis on the face of the claims themselves. Polar pointed to ChargePoint Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019)) to support the analysis conducted by the district court in this case, but Interactive distinguished its case, saying that the court in Chargepoint “began its inquiry of what the claims are ‘directed to’ by first “turn[ing] to the claims at issue,” whereas the court here jumped straight to the specification “for statements about the goals of the inventions, to determine what the claim was directed to.”

Ultimately, Interactive’s reply brief argues that this third question is “an important and recurring issue” that warrants review, pointing to at least four petitions to the court in the last year raising the same concerns:

Regardless of the ultimate success of those petitions, the fact remains that they each raised the same issue as in this petition, and the question keeps making its way to this Court…. The question of whether courts can substitute the Section 101 inquiry with a quasi-enablement inquiry, as the district court did here, keeps winding up before this Court because the Federal Circuit keeps misapplying this Court’s jurisprudence on the judicial exceptions to Section 101. Until this Court provides further guidance to the lower courts, the issue seems poised to repeatedly resurface.

The case was yesterday distributed for the conference of September 28, 2022.

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Author: renaschild
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10 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    July 16, 2022 07:36 pm

    >Curious “Moreover, given the current makeup of the Federal Circuit, I wouldn’t be surprised if it gets worse.”

    I agree with your whole post. Plus, I think the new CAFC are abysmal in comparison with what we could have had and needed.

  • [Avatar for Curious]
    Curious
    July 15, 2022 09:30 am

    The CAFC are the ones that have really created this problem. The CAFC could cabin Alice with limiting what is an abstract idea to the text of the Alice decision at the Scotus.
    +100

    The CAFC issuing an en banc decision would go a long way to cleaning up this mess. In American Axle, this is the breakdown of who was for granting the petition for en banc rehearing and who wasn’t:
    Dyk, Wallach, Taranto, Chen, Prost, Hughes denied the petition
    Newman, Moore, O’Malley, Reyna, Stoll, Lourie dissented

    Since then, Cunningham has replaced Wallach and Stark has replaced O’Malley.

    Anyone would likely be an improvement over Wallach, but who knows where Cunningham really lies. As for Stark over O’Malley, that is hardly an improvement. People forget that Stark was the District Court judge for American Axle. He’s the one that found Hooke’s law in the claims — a concept that most physics students in high school would laugh at. Unless he’s had a change of heart (unlikely), I suspect he’ll be as bad as Dyk and Prost when it comes to 101.

    Chief Judge Moore needs 7 judges to clarify 101. At the time of American Axle, there was 6. Now, that number could be as low as 5 — that’s unless Cunningham and Stark surprise us all.

    As I have written a few times before, I may be retired and buried before meaningful reform of 101 happens. Moreover, given the current makeup of the Federal Circuit, I wouldn’t be surprised if it gets worse.

  • [Avatar for Curious]
    Curious
    July 15, 2022 09:12 am

    The Rule 36 consideration, however, is irrelevant.
    Of course it is relevant. The Supreme Court needs something to review, and a District Court memorandum order is highly-unlikely to cut it.

    I suggest you read Oil States. The Supreme Court stated the following:
    While Oil States’ case was pending, the Federal Circuit issued an opinion in a different case, rejecting the same constitutional arguments. MCM Portfolio LLC v. Hewlett-Packard Co., 812 F. 3d 1284, 1288–1293 (2015). The Federal Circuit summarily affirmed the Board’s decision in this case. 639 Fed. Appx. 639 (2016).
    We granted certiorari to determine whether inter partes review violates Article III or the Seventh Amendment. 582 U. S. ___ (2017).

    In other words, there was already a Federal Circuit decision on the books with regard to the same constitutional issue. Additionally, the issue raised is one of first impression and involves whether a particular statute is constitutional — a more pressing issue than determining how to construe a judicially-made exception to a statute — something the Court has done many times in the past.

  • [Avatar for Night Writer]
    Night Writer
    July 14, 2022 02:52 pm

    The CAFC are the ones that have really created this problem. The CAFC could cabin Alice with limiting what is an abstract idea to the text of the Alice decision at the Scotus.

    Done. But the CAFC are judicial activists that have done everything possible to limit the patent right.

  • [Avatar for Pro Say]
    Pro Say
    July 14, 2022 02:47 pm

    All of patent law has indeed been swallowed.

    With American innovation left choking as a result.

    Will this be the Heimlich maneuver case that finally saves the patient?

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 14, 2022 02:37 pm

    There had been plenty of constitutional challenges to IPRs, but Oil States was the case that they chose to take, Rule 36 notwithstanding. Eligibility is hardly unique in being a subject repeatedly petitioned.

    I agree that the Court will not take this case. The Court simply is not interested (alas) in revisiting their Mayo/Alice mess.

    The Rule 36 consideration, however, is irrelevant. The CAFC cannot avoid review of a worthy case by using Rule 36. The reason that these eligibility decisions will avoid review is because the Court does not want to do more §101, not because of Rule 36.

  • [Avatar for Curious]
    Curious
    July 14, 2022 02:26 pm

    Tell that to Oil States.
    Was that an eligibility decision? Oh wait, it wasn’t. How many eligibility decisions has SCOTUS denied cert on? You really think that a R.36 will be the one SCOTUS is finally interested in taking on?

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    July 14, 2022 12:51 pm

    At the barest minimum, appellant needs a decision from the Federal Circuit. There really isn’t anything to appeal in a Rule 36 Judgement.

    Tell that to Oil States.

  • [Avatar for concerned]
    concerned
    July 14, 2022 12:43 pm

    I never understood the legal analysis that the process does not improve the content player itself, or computer (or whatever).

    What foundation is the above analysis located in s101? Or is the foundation based on judges adding their personal opinions via case law.

    A person just invented the cure to a horrible disease, a disease that seems to hit every family. However, the cure is administered via an I.V.

    Sorry no patent because the I.V. was not improved and the cure was just the abstract idea of healing people.

    When all the inventors join John Galt in Colorado (my first patent attorney already moved there) it will be interesting to see what solutions to society’s problems the appointed geniuses develop.

  • [Avatar for Curious]
    Curious
    July 14, 2022 12:36 pm

    Another denied cert. At the barest minimum, appellant needs a decision from the Federal Circuit. There really isn’t anything to appeal in a Rule 36 Judgement.