Latest Section 101 Cert Petition Before SCOTUS Says CAFC Answered Two-Step Test with Single Inquiry

Yesterday, a petition for writ of certiorari was filed at the U.S. Supreme Court taking aim at the federal judiciary’s conflation of subject matter eligibility with other areas of the patent statute, a growing concern in U.S. patent law since the Court decided Alice v. CLS Bank International (2014). Arguing that the U.S. Court of Appeals for the Federal Circuit used a single observation to answer both steps of the Alice/Mayo inquiry, the petitioner urges the Court to correct the Federal Circuit’s replacement of its flexible two-step Section 101 framework with rigid proxies that avoid the evidentiary safeguards of other patentability statutes.

The petitioner LLC takes the name of the patent-at-issue, U.S. Patent No. 7679637, Time-Shifted Web Conferencing, which claims a web conferencing system developed in the 2000s by inventor Jeffrey Kohler allowing multiple video conference participants to asynchronously observe a live meeting or presentation. In April 2023, the LLC holding the ‘637 patent filed a lawsuit in the Western District of Washington against Google alleging that YouTube infringed every web-conferencing system claim of the patent.

After the district court granted Google’s motion to dismiss the case for failure to state a claim, the Federal Circuit affirmed the subject matter ineligibility of the ‘637 patent’s claims in a precedential decision issued this January. Finding the ‘637 patent’s web-conferencing claims to be directed to the abstract idea of allowing asynchronous review of presentations, the Federal Circuit affirmed the district court’s Section 101 invalidation, likening the case to Hawk Technology Systems v. Castle Retail (2023) in which the Federal Circuit affirmed a district court’s invalidation ruling after finding that the patent’s claims failed to recite a specific solution to make the alleged improvement concrete.

Issues With Functional Claiming Led CAFC to Conflate Alice/Mayo Two-Step Test

The ‘637 patent’s cert petition notes that, during oral arguments, the Federal Circuit evidenced problems understanding how to apply the two-step Alice/Mayo test in the context of the functional nature of the asserted claims. While Chief Judge Kimberly Moore pushed back on the apparent overgeneralization of the ‘637 patent’s claims, she also acknowledged a functional claiming problem with claim 2, which recites a storage means for recording a data stream whereby a web conferencing system can allow observing participants to sense current and previously presented parts of the data stream. In affirming, the Federal Circuit held that “[e]ven if we were to narrow the district court’s characterization of the claims,” they would still be directed to the patent-ineligible idea of asynchronous presentation review because the claims do not describe how that goal is achieved.

According to the cert petition, this single observation improperly answered both steps of the Alice/Mayo framework, arguably converting the Supreme Court’s holding into a one-step test. Citing to the Federal Circuit’s ruling in BSG Tech v. BuySeasons (2023), the petition argues that the appellate court never properly subtracted the abstract idea from the analysis of whether the asserted claims included an inventive concept to achieve the claimed results. Although the Federal Circuit’s discussion at step two acknowledged the specification’s statements on the conventional, well-known aspect of certain components, the petition argues that the appellate court never considered the ordered combination recited by the claims as required by the Court’s precedent.

Considered in light of other Federal Circuit Section 101 case law, the petition argues that the appellate court “is divided against itself” on the application of the Court’s subject matter eligibility framework. Contrasted with the present case, where one inquiry satisfied both steps of Alice/Mayo, the Federal Circuit issued a precedential decision in Contour IP Holding v. GoPro (2024) reversing a district court’s invalidation for overgeneralizing the claims-at-issue. Then in Ollnova Technologies v. ecobee Technologies (2026), issued this June, the Federal Circuit reversed a district court for failing to explain the abstract idea sufficiently to permit the factfinder to determine step two of Alice/Mayo. The cert petition also noted that Chief Judge Moore, who authored the decision below, diagnosed the Federal Circuit’s conversion of the Section 101 patentability inquiry into an inquiry as to proper disclosure under 35 U.S.C. § 112 in her dissent to the rehearing denial in American Axle & Manufacturing v. Neapco Holdings (2020).

Even At Pleadings Stage, Section 101 Determinations Require Factual Inquiry Under Berkheimer

Following the proper Section 112 inquiry addresses the functional claiming issue identified by the Federal Circuit while following several safeguards including the clear and convincing evidentiary standard, claim construction and the perspective of a skilled artisan in identifying whether the invention has been properly disclosed. From a Section 112 perspective, the petition argues that patentability has been addressed several times: in describing capture, retrieval and playback logic; in programming language provided by figures attached to the patent; and in source files attached as appendices. “If source code does not describe ‘how,’ nothing could,” the petition states.

Extinguishing the patentee’s claims on the proceedings by resolving factual questions against the patentee violates both Federal Circuit precedent and 35 U.S.C. § 282(a)’s statutory presumption of patent validity, the petition argues. While the Federal Circuit held in Berkheimer v. HP (2018) that patentability determinations at the pleadings stage require factual determinations, the petition before the Court argues that the findings below were not based on a proper evidentiary record. The district court also denied the patent owner leave to amend its complaint by determining that such amendment would be futile in light of the ‘637 patent’s own statements on conventionality, preventing both evidentiary standards and process afforded to other patent owners before the Federal Circuit.

Arguing the importance of the present case, the petition notes that the decision below has already been denied in at least one precedential decision reversing a jury verdict upholding patent eligibility. While the cert petition acknowledged that the Supreme Court has denied every Section 101 appeal presented to it since Alice, it argued that the question presented was limited to whether the patentability framework should be applied as two steps, a smaller question than those presented by other petitions. At a minimum, the petition argues that the Court should call for the views of the U.S. Solicitor General, which has previously recommended the Court to grant cert to decide Section 101 issues.

Kohler, the inventor of the ‘637 patent, said in a statement sent to IPWatchdog that the Court should take the case considering Moore herself has admitted confusion: “At oral argument, the Federal Circuit’s chief judge said she does not always know where the line between the two Alice steps is, and asked for a rubric outlining how 101 eligibility concepts fit together. She’s asking the right question. My petition implores the Supreme Court to answer it.”

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