Posts Tagged: "Section 101"

In Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, Justice Brett Kavanaugh authored an opinion applying a statutory construction principle to the Federal Arbitration Act (FAA) that may foreshadow how the new Court, applying the same principle, will dramatically reshape how federal courts must approach patent eligible subject matter challenges by eliminating the judicial exceptions—abstract ideas, laws of nature and natural phenomenon—and thus moot the debate that has followed (and preceded) the Court’s Alice decision. Does Henry Schein, reflecting a unanimous Court’s interpretation of a statute, reflect a shift to now interpreting statutes such that exceptions not found in the text cannot be applied? Certainly, such an argument can be made that the three judicial exceptions to patent eligibility, which courts at all levels throughout the land have struggled over since their inception and which nowhere appear in the text of the Patent Act, could be found, unanimously, inapplicable at the Court’s next review of the issue.

On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Marco Guldenaar Holding B.V. (2017-2465) in which the claims of a patent application directed to a dice game were held to be patent-ineligible for being directed to an abstract idea, with “the only arguable inventive concept relat[ing] to dice markings, which constitute printed matter.” The holding in the case is unsurprising post-Alice, but Judge Mayer’s concurrence reveals some concerning views on patent eligibility. The concurrence concludes by alleging that “Alice, for all intents and purposes, articulated a ‘technological arts’ test for patent eligibility.” The statute certainly does not hint at the sort of “technological arts” test that Judge Mayer would prefer and that Alice itself never required, despite Judge Mayer purportedly being concerned with precedent.

Obtaining a U.S. software patent is still harder than it was five years ago, but studying these “lighthouse” cases can improve one’s chances of success. While the Federal Circuit’s decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the USPTO’s guidance to patent examiners on the Berkheimer decision have recently improved the landscape for software patents, the following cases contain critical lessons for drafters that can further ensure claims are patent eligible.

Judge Rich was attempting to articulate a test that would allow the decision maker to determine whether there is in fact an innovation; an invention that we recognize as one that can and should be patented if it is in fact novel and nonobvious. So, the key to the “useful, concrete and tangible result” test of State Street is the “concrete and tangible” part of the test. That part of the test must be referring to whether an invention has been articulated sufficiently so that if it is novel and nonobvious a patent could be appropriately awarded. This explanation of the State Street test would be in accord with both the Supreme Court’s decision in Bilski, as well as in Alice v. CLS Bank, as well as the Federal Circuit’s precedential decisions in which the Court discusses the need for an inventive concept under Alice/Mayo Step 2B, and particularly the Ancora Technologies, Inc. decision.