Posts Tagged: "patent eligibility"

Presenting the Evidence for Patent Eligibility Reform: Part III – Case Studies and Litigation Data Highlight Additional Evidence of Harm

Systemic-level studies and data regarding impact on investment and innovation, as detailed in Part II of this series, are not the only way to demonstrate the substantial harm that the current state of patent eligibility has inflicted on the U.S. innovation ecosystem. Other robust evidence shows that current Section 101 law has harmed innovation by removing the incentives to develop and commercialize particular inventions of public importance. As another form of harm, the vagueness and breadth of the Alice/Mayo framework have also enabled accused infringers to transmogrify Section 101 into a litigation weapon in inappropriate cases that has created unnecessary burdens and costs on innovators and the courts.

Federal Circuit Hands Zillow a Win, Ruling IBM Map Display Patents Cover Abstract Ideas

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding that two IBM patents directed to technology that allows users to select and view results on a map were directed to ineligible subject matter under 35 U.S.C. § 101. IBM had sued Zillow, alleging that several of the services offered on Zillow’s website and mobile applications infringed the claims. But the district court granted Zillow’s motion for judgment on the pleadings, finding the claims were directed to abstract ideas and lacked any inventive concept. The opinion was authored by Judge Hughes. Judge Stoll dissented in part, explaining that claims 9 and 13 of IBM’s U.S. Patent No. 7,187,389 were plausibly patent eligible and should not have been found ineligible at the pleadings stage.

Still Receiving Alice Rejections? Time to Revisit USPTO Guidance

Alice Corp v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) sent rejections under 35 U.S.C. § 101 skyrocketing from under 10,000 per year prior to the Alice decision to nearly 35,000 the year the Supreme Court handed down its decision (2014). Peaking at just over 100,000 rejections in 2018, the USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) helped to stabilize and ultimately lower the number of rejections under Section 101 to just over 20,000 in 2021. Though this number may continue to drop – the data on Section 101 rejections for 2022 is not yet complete – one thing is for sure: The number of rejections under Section 101 post Alice still far outnumber the Section 101 rejections made prior to Alice by at least 10,000 per year. As illustrated in Fig. 1 (data gathered using juristat.com), the majority of rejections under Section 101 made since 2014 are still Alice rejections, which leaves room for this number to decrease further.

IP Practice Vlogs: Responding to the USPTO’s Request for Public Comments

The United States Patent and Trademark Office (USPTO) would like public comments on how to update the 2019 Subject Matter Eligibility Guidance. The agency is also seeking comments on how to improve the robustness of the patent system overall. This article/video is in (unofficial) response to both of these requests for comments. The current mess surrounding subject matter eligibility in the United States is an offspring of a much deeper problem in patent law, which is that there is practically no standardization in patent practice. In medicine, U.S. doctors are trained by standardized practices through rotations and residency programs such that when they begin practicing, a doctor graduating in Florida will not practice medicine vastly different from a doctor graduating from medical school in California, for instance. Instead, the idea is that all the graduates will approach medical treatment in a standardized way so that the public has a lot more faith in the medical community.

Hughes Dissents in Partial Win for Inventor Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision in part reversing and in part affirming a district court’s dismissal of an inventor’s patent infringement suit against Google under Federal Rule of Civil Procedure12(b)(6). Judge Hughes dissented in part from the majority’s opinion, which was authored by Judge Stoll, explaining that he would have found all of the challenged claims patent ineligible.

Presenting the Evidence for Patent Eligibility Reform: Part II – Harm to R&D Investment, Innovation and U.S. Interests

The muddled state of patent eligibility law has direct and significant negative consequences for U.S. R&D investment, and for innovation in key fields of medical, economic, and strategic importance to the United States and its citizens. Uncertainty reduces R&D investment, as has been well-documented, and reliable patent protection mitigates uncertainty and generates increased R&D investment. As we explained in Part I of this series, the experts overwhelmingly agree on these points.

In re Smith: The Federal Circuit Jumps the Shark

Last June, Gene Quinn published an iconic article, “Yu v. Apple Settles It: The CAFC is Suffering from a Prolonged Version of Alice in Wonderland Syndrome,” in which Mr. Quinn evokes Lewis Carrol’s White Queen, “who was known to have sometimes ‘believed six impossible things before breakfast’” to describe the ridiculous nature of the Yu. v. Apple decision. To Judge Taranto’s credit, the Yu v. Apple decision is a remarkable read, so long as one knows nothing of photography and nineteenth century art history. However, in less than three months after Yu. V. Apple, the Federal Circuit would progress from mere fiction to fantasy / science fiction in both the In re Killian case (in which the author served as counsel for Killian) and the more recent case of In re Jason Smith, Appeal 22-1310 (Fed. Cir. Aug. 9, 2022), in which Judges Lourie, Dyk, and Hughes rejected Smith’s claims in an act that is aptly described as “jumping the shark.”

Presenting the Evidence for Patent Eligibility Reform: Part I – Consensus from Patent Law Experts

Patent eligibility law in the United States is in a state of disarray that has led to inconsistent case decisions, deep uncertainty in the innovative, investment and legal communities, and unpredictable outcomes in patent prosecution and litigation. These facts have been extensively documented in multiple sources, including: the statements of all 12 active judges of the nation’s only patent court, the U.S. Court of Appeals for the Federal Circuit (confirmed prior to October 2021); the findings and reports of the Executive branch across all recent Administrations; the bi-partisan conclusions of Congressional committees; a robust body of academic studies; and at least forty separate witness statements at the 2019 hearings on this issue before the Senate Committee on the Judiciary Subcommittee on IP, including statements from advocates that oppose Section 101 reforms.

Life Sciences Patents After American Axle — Grave Danger or Temporary Uncertainty?

The Federal Circuit’s denial of en banc rehearing and the Supreme Court’s denial of certiorari review mean the decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is the latest word on subject-matter eligibility under 35 U.S.C. § 101. In American Axle, the Federal Circuit applied the Supreme Court’s two-part Alice/Mayo test to hold a method for manufacturing driveline propeller shafts with liners designed to attenuate vibrations invalid as directed to a use of a natural law. The Federal Circuit characterized the claims as simply “[c]laiming a result” without “limiting the claim to particular methods of achieving the result. . . .”  Id. at 1295. The method claims were directed to nonpatentable subject matter because, even though neither the claims nor the specification explicitly referenced a natural law, the method steps required the application of a natural law, “and nothing more.”  Id. at 1297. Although the panel in American Axle stressed its decision was consistent with Supreme Court and Federal Circuit precedent, see 967 F.3d 1295, 1296 (“Our cases as well have consistently rejected such claims as unpatentable.”), its rationale, literally applied, jeopardizes broad categories of patent claims that have traditionally been considered patent-eligible subject matter.

Federal Circuit Clarifies Alice Step Two Analysis in Reversal of District Court’s Rule 12 Dismissal

The U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing, today reversed and remanded a district court’s dismissal of an amended complaint in a case where the district court found a patent directed to a method of distributing large video files via a peer-to-peer (P2P) network patent ineligible under Section 101. While the CAFC did not rule on whether the claims are patent eligible, it held that “there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal” on a Rule 12(b)(6) motion.

With Congress and Courts at Standstill, IPWatchdog LIVE 2022 Panel Says Upcoming ‘Action’ on 101 Will Be at USPTO

During a session titled “Politics, Policy and Legislation” on Monday at IPWatchdog LIVE 2022, three panelists who have each played a role in shaping patent law over the years discussed recent developments in patent eligibility reform, and congressional interest in so-called patent thickets being fueled by continuation patents and other topics.

The Path Forward from American Axle: Discussing Legislative and Agency Rulemaking Fixes to Section 101

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.

Senator Tillis: Here’s the Answer to Section 101

In early August, Senator Tillis (R-NC) proposed legislation called the Patent Eligibility Restoration Act of 2022, (S. 4734). US Inventor wrote a response to this legislation showing how it will destroy already damaged patent protection for U.S. software inventors and startups. Included in this destruction will be some of the most important inventions to U.S. technological development, economic growth and national security, like artificial intelligence, security systems, block chain, quantum computing, and much more, including anything that could compete with Big Tech’s core technology.  This legislation is dangerously misguided. In a recent interview with IP Watchdog, Tillis was asked about some of the fatal concerns we identified in our response. Tillis brushed those concerns off by saying that he doesn’t want to hear complaints without solutions.  Fair enough. 

Call for Amici: Whatever You Think of In re Killian, Patent Owners Deserve Clarity

[Editor’s Note: Bud Mathis is counsel for Killian]. The average attorney reading the recent opinion penned by Judge Chen and joined by Judges Taranto and Clevenger in In re Killian (Appeal 21-2113) might agree with Judge Chen’s conclusion that, “[w]hile there are close cases under the Alice/Mayo standard, the ’042 application does not present such a close case[.]” To this statement, I, Killian’s counsel, respond that, every time any claim comes close, the Federal Circuit engages in a predictable fiction in which the court: (1) announces that a claim is directed to “a something” described in such a broad and vague manner that “the something” barely resembles the claim at issue, (2) declares that “the something” that barely resembles the claim at issue is “abstract” based on no evidence or analysis, and then (3) declares that the remaining claim limitations lack an inventive concept.

Eliminating the Jargon: An Alternative Proposal for Section 101 Reform

On August 3, Senator Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2022, S.4734, which would amend the U.S. Patent Act to clarify the patent eligibility of certain technologies under 35 U.S.C. Section 101. Few would disagree that the current state of eligibility jurisprudence is in “abysmal shambles”, and recognizing that U.S. eligibility law needs changing comes from both side of the aisle, as Senator Chris Coons (D-DE) has long questioned the court-made exceptions to patent eligibility….. I have extensively followed the developments of 101 jurisprudence in the courts and the efforts of those in Congress to enact statutory changes to Section 101. In so doing, I have contemplated how Section 101 could be improved, and thus my proposal regarding how to revise the statutory language follows.