Posts Tagged: "Section 101"

Technologies such as computer networking, which, unlike software inventions, typically incorporate at least some hardware elements, may be less vulnerable to rejection under the U.S. Supreme Court’s decision in Alice v. CLS Bank. However, responding to these rejections when they are issued still requires some finesse. In these cases, rejections usually revolve around whether the hardware included in the claims serves as an improvement over existing hardware or is merely used as a tool for a mental process or other abstract idea. If the examiner concludes that the networking hardware merely serves as a tool, the claims usually fail the Alice/Mayo test. However, if you can show that the networking hardware either presents novel features or is improved by the invention to become a more effective tool, you may overcome the rejection.

Quantum computing continues to gain traction as an emerging technology, with potentially far-reaching and dangerous applications in the United States and worldwide. However, there are some applications for the technology which have not yet passed theoretical muster. In other words, the case for quantum advantage cannot be made by reference to known mathematical algorithms. But many applications, including quantum decryption (discussed below), have been concretely mapped out on a theoretical level and are now subject to only “engineering limitations” (i.e., implementation details).

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a decision of the United States District Court for the Northern District of California granting judgment on the pleadings to Google, Facebook, EMC Corporation and VMware, Inc. that PersonalWeb Technologies’  patent claims were ineligible under Section 101. The decision was precedential and written by Judge Prost. The case has a long history and the CAFC has dealt with the patented technology before. The specific patents at issue here are U.S. Patent Nos. 7,802,310 (“the ’310 patent”), 6,415,280 (“the ’280 patent”), and 7,949,662 (“the ’662 patent”). The patents generally cover “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.”

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic. Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

Reading the recent opinion of Judges Prost and Taranto in Yu and Zhang v. Apple and Samsung, Appeal Nos. 2020-1760, 1803 (Fed.Cir. June 11, 2021), I’m reminded of something Mark Twain never said: “There’s a lie, there’s a damned lie, and then there’s an Alice-Mayo decision.” Granted, it is hard to tell one Alice-Mayo decision from another. At face value, the Yu decision appears to be merely the latest absurdist fiction in a collection of short stories based on the abandonment of conventional law. Yet, the Yu decision is more than the typical Alice-Mayo scenario where logical construction and argument give way to irrationality in a senseless judiciary.

iLife Technologies last week petitioned the U.S. Supreme Court to hear its appeal of a January 2021 U.S. Court of Appeals for the Federal Circuit decision upholding a district court’s finding of patent ineligibility for claim 1 of iLife’s U.S. Patent No. 6,864,796. Claim 1 of the ‘796 patent “is directed to a motion detection system that evaluates relative movement of a body based on both dynamic acceleration (e.g., vibration, body movement) and static acceleration (i.e., the position of a body relative to earth).” iLife had accused Nintendoof infringing the patent through sales of products such as Wii Sports, Wii Sports Resort, Wii Club Sports and Mario Kart 8.

On June 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s grant of a motion to dismiss for Apple and Samsung in a patent infringement action brought by Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”). Yu alleged infringement of Claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), titled “Digital Cameras Using Multiple Sensors with Multiple Lenses,” and the court dismissed due to ineligibility under Section 101. Judge Pauline Newman dissented.

Could the United States Supreme Court once again weigh in on Section 101 subject-matter eligibility? With the Court having asked for the views of the Solicitor General yesterday, it seems increasingly likely. Late in 2020, patentee American Axle & Manufacturing, Inc. (American Axle) petitioned the Supreme Court for writ of certiorari, arguing that the Federal Circuit is “at a loss as to how to uniformly apply § 101.” Pet. for Writ of Certiorari at 3 (Dec. 28, 2020). Organizations such as the New York Intellectual Property Law Association, the New York City Bar Association, and the Chicago Patent Attorneys organization have all submitted amicus briefs supporting American Axle’s ask. On March 1, former USPTO Director David Kappos, former Federal Circuit Chief Judge Paul Michel, and Senator Thom Tillis from North Carolina also jointly filed an amicus brief, arguing that the “disparate and inconsistent application” of the current Section 101 jurisprudence has led to “an unpredictable and unstable” patent system. Br. in Support of Am. Axle’s Pet. for Writ of Certiorari at 5 (Mar. 12, 2021).

On April 5, NetSoc LLC filed a petition for a Writ of Certiorari to the Supreme Court of the United States (SCOTUS) after losing its appeal in the U.S. Court of Appeals for the Federal Circuit (CAFC), which found NetSoc’s patent was directed to patent-ineligible subject matter. NetSoc claims that U.S. Patent No. 9,978,107 (‘107 Patent), titled “Method and System for Establishing and Using a Social Network to Facilitate People in Life Issues,” was legally issued in 2003 contrary to the claim of respondents, Match Group LLC, Plenty of Fish Media and Humor Rainbow. NetSoc says that review is warranted to resolve four legal issues of importance,

On March 30, Judge Sean D. Jordan of the United States Federal District Court for the Eastern District of Texas, issued a rather atypical Order, at least for the Eastern District of Texas. A defendant prevailed on a motion to dismiss. See Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., Civil No. 4:20-CV-448-SDJ. Those familiar with patent litigation know that, over many years, the Eastern District of Texas has been a notoriously favorable venue for patent owners to pursue patent infringement lawsuits against alleged infringers. One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants. It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.

Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter on Monday to the acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.” This proposed pilot program would require a select group of examiners and applicants who elected to participate in the program “to engage in a full examination of the grounds of patentability and then, once that process is complete, a full examination of the grounds of eligibility.”

The judicial undermining of patent eligibility, in defiance of the clear language in Section 101 of the Patent Act, poses a clear and present danger to the pace of American innovation…. Fortunately, a recently released report by a bipartisan congressionally-established  commission lends powerful support to Section 101 reform initiatives. The National Defense Authorization Act of 2019 created a 15-member National Security Commission on Artificial Intelligence (NSCAI)…. On March 1, 2021 the NSCAI released its final Report to the President and Congress (NSCAI Final Report) (see the press release). Of particular note, the NSCAI’s Final Report includes a chapter underscoring the importance of a strong intellectual property law system to U.S. national security interests tied to technological advancement.

On March 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB) to hold the rejected claims from Leland Stanford Junior University (Stanford) were not patent eligible because the claims are drawn to abstract mathematical calculations and statistical modeling. The examiner rejected claims 1, 4 to 11, 14 to 25, and 27 to 30 of U.S. Application Nos. 13/445,925 (‘925 application), “methods and computing systems for determining haplotype phase,” for involving patent ineligible subject matter. The CAFC applied the two-step framework under Alice v. CLS Bank to determine whether the claims were patent eligible.  

Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) sent a letter on Friday to the Acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.

The Alliance of U.S. Startups & Inventors for Jobs has filed an amicus brief supporting American Axle & Manufacturing, Inc.’s petition for certiorari with the U.S. Supreme Court, claiming that many feel that “the U.S. patent system appears to be on life support”. The brief generally argues: The panel majority decision fails to comply with eligibility precedents established by the Court and Federal Rule of Civil Procedure Rule 56 (Rule 56); and Investments in technology startups in American has been declining for more than a decade.