Posts Tagged: "35 USC 101"

In essence, by narrowly identifying certain subject matter groups as being those that properly qualify for characterization as abstract ideas the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit. It has been frustrating — to say the least — that courts have refused to define the term abstract idea despite that being the critical term in the Supreme Court’s extra-statutory patent eligibility test. Without a definition for the term abstract idea rulings have been nothing short of subjective; some would even say arbitrary and capricious.

The U.S. Supreme Court has muddied the waters about patent eligibility in a way that threatens American innovation.  Capitol Hill is beginning to discuss this as a possible legislative issue for 2019.  Some would say it is as important as the intellectual property disputes in the tariff war with China… Intellectual property legislation traditionally is nonpartisan, which may make it a little easier to find a solution.  All members of Congress will support preserving the patent system’s incentives for innovation if they understand what is at stake for the country.

Federal Circuit issued a Rule 36 summary judgment in Chart Trading Development, LLC v. Interactive Brokers LLC, affirming the invalidation of patent claims owned by Chart Trading in covered business method (CBM) proceedings instituted at the Patent Trial and Appeal Board (PTAB). In issuing the summary affirmance of the PTAB, the Federal Circuit panel of Circuit Judges Pauline Newman, S. Jay Plager and Kimberly Moore declined the opportunity to comment on Chart Trading’s arguments on the PTAB’s alleged due process violations by changing the construction of a key term in its final written decision… If the government can award a franchise and that franchise can be taken away in a manner that violates the APA, what is the point in seeking the government franchise in the first place? If the Court charged with making sure the agency that strips government franchises is following the rules is going to decide cases of such importance with only one word — Affirmed — one has to question whether a government franchise is at all a worthwhile pursuit.

In Berkheimer and Aatrix, the Federal Circuit indicated that although patent eligibility under Section 101 is ultimately a question of law, the determination may have factual underpinnings that, at least in some cases, render it inappropriate for motions to dismiss or for summary judgment… However, following Berkheimer and Aatrix, the Federal Circuit has itself affirmed numerous Section 101 rulings that were made at the dismissal or pleadings stage. This article provides a summary of recent district court decisions granting Rule 12(b)(6) motions to dismiss under Section 101.

On Monday, December 3rd, the U.S. Supreme Court denied a petition for writ of certiorari in Carl M. Burnett v. Panasonic Corporation, declining to take up the case on appeal from the Court of Appeals for the Federal Circuit. This is now the latest case involving questions of patent-eligibility for an invention under 35 U.S.C. § 101 declined by the nation’s highest court. In this case, however, the Supreme Court hasn’t addressed the patentability of the relevant subject matter, namely electronic data and electromagnetic analog and digital signals, since 1853.

Director Iancu’s remarks gave a first look at what his reforms will look like, and by all indications these changes will be extremely innovator friendly… What has made the quartet of patent eligibility cases so devastating is how they have been stretched and pulled, twisted and manipulated to invalidate (and prevent) patent claims on innovations of entirely different magnitudes than those contemplated by the Supreme Court. Director Iancu understands that what the Supreme Court has actually said is quite limited. Director Iancu proposes that the USPTO strictly follow the Supreme Court, and nothing more.

Artificial intelligence technologies are transforming industries and improving human productivity and health. Unfortunately, the stark reality appears to be that artificial intelligence technologies are likely to be more heavily scrutinized under 35 U.S.C. § 101 and less likely to be allowed… The Court in Electric Power Group made note that: “we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”.  The authors propose that this sentence of the decision is of utmost importance in the context of patenting A.I. technology.

This particular Rule 36 patent eligibility loss for the patent owner came in Digital Media Technologies, Inc. v. Netflix, Inc., et al., affirmed the district court’s finding that patent claims asserted by Digital Media against Netflix, Amazon and Hulu were invalid under 35 U.S.C. § 101 because they were directed to an abstract idea… Using Rule 36 in an area of the law as unstable, chaotic and unpredictable as patent eligibility is irresponsible. Whether the decision would be the same or not, the parties and the public have a right to have the Federal Circuit make sense ‘this § 101 conundrum.’

At the beginning of this decade the United States Supreme Court embarked on a path that would ultimately result in a significant re-writing of the law of patent eligibility in America. While this Supreme Court first became intrigued with patent eligibility in Bilski v. Kappos in 2010, it wasn’t until Mayo v. Prometheus (2012), AMP v. Myriad (2013) and Alice v. CLS Bank (2014) that the law became a chaotic mess that no longer resembled the well-established view of patent eligibility that dates back to at least the 1952 Patent Act… Is this Supreme Court really content with the subjective, extra-statutory test they have foisted upon the industry while changing the law? Does the Supreme Court even appreciate the chaos they have created?

REAL argued in its petition that step two of the Alice test used to determine invalidity under Section 101 requires questions of fact that were never asked by the lower court. To invalidate without asking those questions contradicts the Federal Circuit’s recent holdings in Berkheimer v. HP and Aatrix Software v. Green Shades Software. REAL’s appeal to the Federal Circuit was decided by a panel including Circuit Judges Alan Lourie, Evan Wallach and Kara Stoll, a trio where the majority has held that step two of Alice is a pure question of law, which is a misapplication of the Alice standard. REAL further contended that both the district court and the Federal Circuit disregarded the factual record in their Alice analysis; that the patents-in-suit claim patentable improvements to computer user interface technology; and that the district court found that there were material facts in dispute while also finding that the claims were well-understood, routine and conventional.

Director Iancu did not make much, if any, news speaking at PPAC today. He did, however, indicate that at least for now his major initiatives to reform the Patent Trial and Appeal Board (PTAB) have been rolled out, albeit with the last phase still in proposed rule form. Director Iancu indicated that he believes it is necessary now to carefully assess the implementation of these PTAB reforms and consider stakeholder reaction to the changes.

Today the flash of creative genius test has reared its ugly head once more, this time as a consideration under a patent eligibility inquiry and 35 U.S.C. 101 instead of under an obviousness inquiry and 35 U.S.C. 103. Today, thanks to the Supreme Court’s unintelligible Alice/Mayo framework, one must ask whether significantly more has been added to a patent claim such that the claim does not merely claim an abstract idea, law of nature or natural phenomenon. This final step in the Alice/Mayotest is referred to by the Courts as the hunt for the inventive concept. It is difficult not to notice the similarity between this hunt for the inventive concept that takes place when reviewing a claim under 101 and the supposedly defunct flash of creative genius test Congress attempted to write out of patent law in 1952.

To date the United States Court of Appeals for the Federal Circuit has not explicitly required district courts to conduct a formal claim construction prior to determining whether a patent claim is directed to patent eligible subject matter. How one can know whether a patent claim is directed to patent eligible or patent ineligible subject matter without a full-blown claim interpretation is a mystery. It is axiomatic that one cannot know what a claim actually covers unless and until a proper analysis is conducted. Yet, district court judges somehow know with certitude what a claim covers while doing nothing more than a facial review of the claim that would be considered a defective and reversible claim construction if done at a later stage of the proceedings when actually attempting to define the metes an bounds of the claim.

The Boston Patent Law Association (BPLA) has announced its support for a proposal for a legislative fix to 35 U.S.C. § 101, the statute governing basic patentability in U.S. patent law, which was jointly offered earlier this year by the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). The BPLA now becomes the latest patent law organization to support the proposed legislative amendment to Section 101 that is designed to address major uncertainties in patentability stemming from various cases decided in recent years by the U.S. Supreme Court.

Some courts have characterized this final inquiry as “the hunt for the inventive concept.” That would make some logical sense if and only if a claimed invention that is novel and non-obvious would be necessarily found to have satisfied the inventive concept requirement. Alas, that is not the case. Under the ridiculously bastardized law of patent eligibility foisted upon us by the Supreme Court it is actually possible for a claimed invention to be both new and non-obvious and to somehow not exhibit an inventive concept under what is considered a proper patent eligibility analysis. Of course, it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept. If something is new and non-obvious it is by definition inventive. This disconnect merely demonstrates the objective absurdity of the Alice/Mayoframework.