“The brilliance of the 1952 Patent Act was to separate the bases of invalidity into their own lanes, each with a separate standard of analysis… [Recent] Section 101 cases move us backward, mushing up patent eligibility again.” – Andrei Iancu, Irell & Manella
Last year, there was a great amount of confidence among those in intellectual property circles that the U.S. Supreme Court might finally provide some much-needed clarity to Section 101 subject matter patentability after a petition for writ of certiorari was filed in American Axle v. Neapco Holdings. On the second day of IPWatchdog LIVE 2022, panelists at the breakout session titled “Where Do We Go From Here on Patent Eligibility After American Axle” discussed what opportunities were left for fixing patent eligibility law after the Supreme Court denied cert in that case.
Must Inventors Defy the Laws of Physics to Obtain a Valid Patent?
Benjamin Cappel, Partner at AddyHart P.C. and moderator of this panel, began by asking panelist Andrei Iancu, former Director of the U.S. Patent and Trademark Office (USPTO) and currently Partner at Irell & Manella, whether the Federal Circuit’s majority decision in American Axle requires an inventor to defy the laws of physics in order to obtain a patent valid under Section 101. Though seemingly absurd, many have argued that this would be the result of the Federal Circuit’s reasoning that the use of Hooke’s law in a patented method of manufacture directed the patent claims toward an unpatentable law of nature. Iancu cautioned that the logical conclusion of American Axle swallows all of patent law in just the way that Supreme Court Justice Clarence Thomas warned against in his authored opinion in Alice Corp. v. CLS Bank International (2014). “The real question is, what’s the overall broad-based implication of American Axle?” Iancu asked, adding that the answer to that question won’t become clear until lower courts start applying the Federal Circuit’s decision in other cases.
The panelists at this IPWatchdog LIVE session largely agreed that the Supreme Court’s denial of cert in American Axle suggested that the nation’s highest court was signaling an end to its interest in Section 101 issues, a subject into which the Court has waded numerous times over the past 15 years. Panelist Brandon Helms, Partner at AddyHart, opined that the Supreme Court is probably not going to be the avenue through which Section 101 will be fixed. As Iancu noted, recent Supreme Court case law is eliding different statutory sections of patentability in a way that drags the United States’ patent system back by about 70 years:
“The brilliance of the 1952 Patent Act was to separate the bases of invalidity into their own lanes, each with a separate standard of analysis. That has done great work to clarify patent law… The Section 101 cases move us backward, mushing up patent eligibility again. If a patent is claimed broadly or vaguely, that’s a Section 112 issue and people know how to do a Section 112 analysis. Let’s keep the statutes in their own lanes, then we could have a better way to perform these analyses.”
Mixed Reactions on Tillis’ Patent Eligibility Bill From Panelists and Attendees
Wen Xie, another panelist and Partner at Global IP Counselors, pointed out one salient issue with the patent eligibility framework left behind by Alice, specifically Step 2 of the Alice test in which a court looks to whether a patent’s claims are directed to subject matter that is well-understood, routine or conventional. “The problem is that Section 101 is silent as to how to establish that a claimed invention is well-understood, routine or conventional,” she said. As a result, Section 101 invalidity determinations are entirely discretionary and allow for opinion-based decisions that incorporate none of the evidentiary tests required for other statutory patentability requirements.
Some heated discussion from the panel’s attendees began to develop as the panel’s discussion veered in the direction of potential legislative fixes to Section 101, especially the recent patent eligibility bill proposed by Senator Thom Tillis (R-NC). While panelists, especially Iancu, felt that Tillis should be lauded for wading into those difficult waters, Paul Morinville of inventor advocacy group US Inventor told the panel that the current language of Tillis’ bill, which includes patentability exceptions, is drafted in such a way that it likely excludes artificial intelligence and other critical emerging areas of technology from patentability. Xie agreed that the bill’s language was problematic for those technology sectors by creating a test similar to the Federal Circuit’s machine-or-transformation test rejected by the Supreme Court in Bilski v. Kappos (2009). If the test in Tillis’ bill is construed as requiring a machine to execute behaviors to meet Section 101 patentability, then Xie agreed that many AI systems would fail the patentability standard.
Can Strategic Amicus Filing Get the CAFC to Defer to USPTO Guidelines?
One of the panel’s most intriguing ideas came from attendee Susan Braden, former Chief Judge of the U.S. Court of Federal Claims. Although the Federal Circuit has proven itself impervious to USPTO guidelines on subject matter eligibility, especially in Cleveland Clinic, Judge Braden noted that, in other contexts, federal courts have voluntarily subjected themselves to agency guidance in resolving legal disputes. She pointed out that, within the antitrust context, federal courts regularly defer to horizontal merger guidelines promulgated by the U.S. Department of Justice without performing any further analysis beyond those guidelines. While Judge Braden disagreed that more amicus briefing overall might push the Federal Circuit in the proper direction on Section 101 law, she felt as though some strategic amicus briefing on this point could encourage the Federal Circuit toward deference to the USPTO’s patent eligibility guidelines. Judge Braden also encouraged the room to read a recent Wall Street Journal article by former Attorney General Michael Mukasey speaking on the national security implications of the uncertain state of patent eligibility law. “Our argument to Congress should focus on that and what we need to do to straighten out the law for the sake of national security,” she said.
“If I were advising the USPTO, I’d tell them not to try to fix Alice by talking about Alice,” Xie said on the subject of updating the agency’s patent eligibility guidelines. She suggested that the creation of special examination procedures for applications in areas that are particularly susceptible to Section 101 rejections, such as cloud computing. Bob Stoll, another session attendee and Partner at Faegre Drinker, countered that such agency rulemaking likely runs afoul of the Agreement on Trade-Related Aspects of IP Rights (TRIPS), which could put U.S. corporations at risk of international intervention in technology sectors where the nation is trying to achieve global dominance.
Iancu: Other Patent Systems Have Developed a Workable Eligibility Framework
Though there was some dissension from the inventor advocates attending this particular session, especially on the subject of Tillis’ bill, Helms noted that their words were not lost on the panelists and other lawyers in attendance, many of whom work with independent inventors. Inventor and IP owner Doug Pittman urged those in attendance to instead support the Restoring America’s Leadership in Innovation Act introduced last year by Representative Thomas Massie (R-KY).
Perhaps the session’s most encouraging words came from Iancu, who argued that a workable framework on the subject matter eligibility question has already been developed by many countries that have implemented a national patent system. At a high level, these national frameworks include a broad statement on patentability akin to the traditional construction of Section 101 within the U.S. prior to recent patent eligibility case law. Those permissive statutes are then qualified by a series of exceptions for unpatentable subject matter like mathematical formulas or products found in nature. However, Iancu underscored the critical nature of these exceptions as per se exceptions, at which point courts in those foreign jurisdictions look at whether the claimed patent makes a practical use of those per se exceptions. Such a framework would support patent eligibility for critical segments of technology like cryptography, which makes heavy use of mathematical formulas, without running afoul of Federal Circuit case law on Section 101. “We’re the oldest modern patent system in the world, but the last to figure out a working patent subject matter eligibility framework,” Iancu said.
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8 comments so far.
concernedSeptember 14, 2022 05:14 am
SCOTUS starts its new term in three weeks with the lowest public opinion since the inception of polling. Courts engrafting political or personal views unto statutory text is appropriate or inappropriate based on subject matter.
CAFC decisions are all over the place with no “cert” direction from SCOTUS. For every case law rejection given, my attorneys responded with one of two case laws supporting patentability.
How many s101 have been on IPWatchdog in the past month describing the patent system in chaos?
With the above backdrop, it is difficult for me to accept criticism that my patent application was not even close to being approvable, that the claims construction was horrible, that it was not “wow” enough, it was Simple Simon, the professionals in field are brain dead for not discovering the solution sooner, evidence arguments not preserved even though argued from day one of the prosecution, etc.
Go ask Alice: When logic and proportion have fallen sloppy dead
Go ask Mayo: If you go chasing (software) rabbits you know you’re going to fall
BSeptember 13, 2022 07:45 pm
@ concerned “CAFC indicated the evidence argument was not preserved in our brief, which my attorney is responding to that opinion.”
Not all the evidence argument – only a portion of it. Judge Chen complains about a 30-word sentence in the Reply Brief that is fully supported, word-for-word, in the Opening Brief and complies with FRAP 28(a)
I’m beginning to believe that certain judges at the CAFC aren’t interested in clarity
BSeptember 13, 2022 07:41 pm
@ concerned “My attorney uses the word “capricious” in lieu of discretionary and opinion based.”
A total lack of objective standards makes it “capricious.”
A total lack of limiting principles and definitions makes it “capricious.”
The departure of evidence from a fact-based inquiry makes it “capricious.”
Judge Giles Rich said all of this LONG BEFORE I DID
concernedSeptember 13, 2022 10:42 am
Alice indicated new and useful purpose of the abstract idea.
If a process lowers the error rate of professionals from 11.9% to less than 1%, that would seemed to be a new and useful process, especially if backed up with evidence.
CAFC indicated the evidence argument was not preserved in our brief, which my attorney is responding to that opinion.
However, if the evidence is deemed to be preserved after our reply, what would be the CAFC view of evidence? Does it matter or not?
AnonymousSeptember 13, 2022 10:34 am
Alice stated new and useful purpose of the abstract idea.
One logical opinion would be reducing an error rate of professionals and experts
Primary examinerSeptember 13, 2022 10:21 am
“However, Iancu underscored the critical nature of these exceptions as per se exceptions, at which point courts in those foreign jurisdictions look at whether the claimed patent makes a practical use of those per se exceptions”
What is a practical use ( in those foreign jurisdictions ) being defined as?
Financial innovatorSeptember 13, 2022 10:05 am
If only S. 4737 were the law 30 years ago my friend and partner Brian Tarbox would likely be alive today. Melanoma, the cause of his death, is curable if caught early, was not as he lacked health insurance due to his efforts promoting our inventions.
However, absent our inventions e.g., automatic enrollment into target-date funds, retirees would have hundreds of billions less in retirement savings and Wall Street would have lost out on billions of dollars in fees. Professor Thaler may not have received the Nobel Prize based on the fact that much of his presentation at the Nobel ceremony related to Brian’s pilot. Brian did not receive any compensation for his work.
This bill would substantially eliminate innovation which could disrupt Wall Street. Wall Street is in badly need of such disruptive innovation, as evidenced by the above. Why any Senator or Representative would provide Wall Street with privileged status and eliminate important innovations which could improve the services they provide is a mystery.
concernedSeptember 13, 2022 05:04 am
“As a result, Section 101 invalidity determinations are entirely discretionary and allow for opinion-based decisions that incorporate none of the evidentiary tests required for other statutory patentability requirements.”
My attorney uses the word “capricious” in lieu of discretionary and opinion based.
In my case, either the data in question (parents of adult children) is collected or is not collected by professionals or experts in my field.
Open challenge: Can anyone state a field of commence where the data of a parent is collected on an adult child? If not, how can that process be well-understood, routine or conventional?