The Supreme Court has never quite grasped the distinction between patent eligibility and patentability. Eligibility involves entire subject matter categories or fields of inventive enterprise, like the categories “process, machine, [article of] manufacture, or composition of matter.” 35 U.S.C. 101. Ascertaining eligibility should therefore require little more than checking the patent title and ensuring that, in the words of the venerable Judge Giles Rich, “[the invention] produces a useful, concrete and tangible result.” State Street Bank v. Signature Fin. Group, 149 F. 3d 1368 (Fed. Cir. 1998). In simple terms, Section 101 requires little more for eligibility than a showing that an invention has applied natural principles to achieve a concrete purpose within the expansive categories articulated by Thomas Jefferson in 1793. Patentability, on the other hand, proceeds as a detailed claim-by-claim, feature-by-feature examination of “the conditions and requirements of this title.” 35 U.S.C. 101. Ironically this fundamental distinction that eludes the Supreme Court is explicit in the statutory language of 35 U.S.C. 101 itself.
This week in Other Barks and Bites: the European Patent Office announces record patent application numbers for 2023; a French competition watchdog fines Google €250 million for several IP breaches related to AI; President Biden announces a deal granting $8.5 billion to Intel to expand its domestic production of advanced chips; and more.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 21, affirmed a district court’s grant of summary judgment that claims of a patent for an electronic gaming system were ineligible under Section 101. U.S. Patent No. 7,736,223 is owned by Savvy Dog Systems and POM of Pennsylvania (Savvy Dog) and is directed to a “more skill-based and less chance-based” version of a popular electronic game called “Tic Tac Fruit.” Savvy Dog sued Pennsylvania Coin and PA Coin Holdings (Pennsylvania Coin) for infringement in the Middle District of Pennsylvania. Pennsylvania Coin moved to dismiss the case, in part because it said the claims constituted patent ineligible subject matter.
On March 20, American semiconductor developer Intel Corporation and the U.S. Department of Commerce jointly announced that the chip giant had entered into a preliminary memorandum of terms (PMT) that could make Intel eligible for nearly $45 billion in federal investments into chip production facilities and workforce development. At least $19.5 billion of this funding comes from money appropriated under the CHIPS and Science Act, making Intel an early beneficiary of the landmark legislative package enacted in 2022 to establish U.S. dominance in chip production.
The Trademark Trial and Appeal Board (TTAB) on Wednesday, March 20, denied APPLE JAZZ mark owner Charles Bertini’s petition to cancel Apple, Inc.’s mark APPLE for entertainment services. While the Board found that Bertini had “proven and maintained his entitlement to a statutory cause of action,” it ultimately held that he had failed to make a prima facie showing of Apple’s abandonment of the APPLE mark for those services.