Posts Tagged: "Section 101"

The case of the “garage door opener,” The Chamberlain Group v. Techtronic Industries, Inc., has received its share of attention. Rightly so. The case, after all, spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed.
And it fairly asks, in a petition to the Supreme Court, that if a claim on a garage door opener is “directed to” an “abstract idea” and thus ineligible for patent protection—is any patent, or any technology, safe from the Mayo-Alice ineligibility test? Chamberlain says no. From the outset, its petition declares that its case therefore presents a “patent emergency,” one that the Supreme Court must review to stop the Mayo-Alice test—and the Federal Circuit’s “directed-to” version of it—from expanding into, and negating, claims in every subject imaginable.

In a follow-up to a decision earlier this month blocking an attempt by Palomar Technologies, Inc. to bar new prior art references based on IPR estoppel, the U.S. District Court for the District of Massachusetts on May 28 has now granted a motion for summary judgment by MRSI Systems, LLC (MRSI), holding U.S. Patent No. 6,776,327 invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible abstract idea. The district court concluded that the ’327 Patent was directed to the abstract idea of placing an item at an intermediate location before moving it to a final one in order to increase the accuracy of the final placement and is applicable to an ‘almost infinite breadth of applications.

On May 15, the Chamberlain Group Inc. filed a petition for a writ of certiorari asking the U.S. Supreme Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision reversing a district court’s holding that Chamberlain’s claims covering a “moveable barrier operator” were patent-eligible under Section 101. If the Supreme Court grants review, it will consider whether the Federal Circuit “improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole,’ where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.”

Since the Supreme Court’s Alice decision in 2014, many patent prosecutors in Industrial & Mechanical Technologies practice groups have been spared the headaches that the decision created for their colleagues in Electrical & Computer Technologies practice groups. So, it came as quite a surprise, perhaps unwelcome to some, when the Federal Circuit decided American Axle v. Neapco, invalidating claims for a method for manufacturing propshafts as being directed to ineligible subject matter under Section 101 of the U.S. Patent Act…. Almost six months later, it appears that Neapco was right, at least when it comes to patent prosecution in the mechanical arts. Indeed, both anecdotal evidence and prosecution data aggregated by Juristat demonstrate that the American Axle decision has not affected the prosecution of mechanical inventions before the USPTO in any significant way.

Yesterday, the U.S. Court of Appeals for the Federal Circuit, in an opinion authored by Judge Moore, reversed and remanded a decision of the U.S. District Court for the Northern District of California, which had found that certain claims of Uniloc’s U.S. Patent No. 6,993,049 were ineligible under Section 101 as being directed to an abstract idea. The Federal Circuit disagreed, holding that the claims at issue were directed to a “patent-eligible improvement to computer functionality.”

Last week, VoIP-Pal.com, Inc. filed a combined petition for panel rehearing and rehearing en banc with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking for review of a Rule 36 judgment in VoIP-Pal.Com, Inc. v. Twitter, Inc. That judgment affirmed a decision of the U.S. District Court for the Northern District of California that resolved a claim construction dispute in the context of a motion to dismiss under Section 101 as per Rule 12(b)(6) of the Federal Rules of Civil Procedure prior to claim construction. In the petition, VoIP-Pal asserted that the Rule 36 judgment conflicted with CAFC precedent and “the time has come for this court to reconsider whether a Rule 12 motion based on §101 should be decided before claim construction.”

Last week, Consumer 2.0, Inc. d/b/a Rently filed a combined petition for panel rehearing and rehearing en banc asking the U.S. Court of Appeals for the Federal Circuit (CAFC) to review its recent Rule 36 judgment affirming a decision of the United States District Court for the Eastern District of Virginia that Rently’s patent claims were ineligible. The district court found the claims, which were directed to “the use of lockboxes able to recognize time-limited codes and coordination of those codes with software to facilitate secure automated entry”, ineligible for patent protection under 35 U.S.C. § 101. Among other arguments, Rently noted that the case raised multiple issues that required en banc review, including whether unconventionality alone is sufficient to satisfy the inventive concept requirement under Section 101, whether the determination of unconventionality is one of law or fact, and whether a court is permitted to conduct a quasi-Section 103 analysis of obviousness without the protections against hindsight bias.

Things are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE), efforts to reform America’s patent system for the better have stalled to the point that the Senate IP Subcommittee is moving on from patent matters and will focus on copyright reform throughout 2020. “Given the reasonable concerns that have been expressed about the draft as well as the practical realities of the difficulty of passing legislation, absent stakeholder consensus I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress,” Senator Tillis told the Intellectual Property Owners Association in an interview published earlier today. Sources tell IPWatchdog that it is not inconceivable that the Subcommittee will steer back toward patent issues – namely patent eligibility reform – but disagreement among the interested constituencies has shelved any hope for patent eligibility reform. Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform have their own demands and – if you can believe it – would prefer no change to a change that doesn’t give them 100% of what they are seeking.

The U.S. Supreme Court today denied two petitions for certiorari filed by Trading Technologies and one by ChargePoint, Inc. asking the Court to review their cases related to the patent eligibility of their inventions. Trading Technologies’ inventions relate to graphical user interface tools, while ChargePoint’s invention is for a vehicle charging station. The denials are not surprising following the High Court’s refusal to allow a number of other petitions dealing with Section 101 earlier this month, including Athena Diagnostics v. Mayo Collaborative Services and HP Inc. v. Berkheimer. Athena was thought to have the best chance of being granted, especially after the United States Office of the Solicitor General (SG) in December weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

I was at the JP Morgan Healthcare Conference when I learned a week ago that the Supreme Court of the United States (SCOTUS) had denied Athena Diagnostic’s Petition for Certiorari. I was shocked. We feel the same when as a child we discover there is no Santa Claus—a trusted institution is not as represented. SCOTUS ignored a recommendation from the U.S. Solicitor General in the strongly worded Vanda opinion that the Court’s opinions had veered away from Congress’ law; a desperate plea from the U.S. Court of Appeals for the Federal Circuit that it needed better guidance and thinks the law is on the wrong path; 11 thoughtful amicus briefs; and Athena’s petition. The Court was also referred to my law review article with Anthony Prosser “Unconstitutional Application of 35 U.S.C. 101 by the U.S. Supreme Court” based on almost a year of legal research. During the month after final briefing in Athena and after the U.S. Solicitor’s opinion, we saw a significant uptick in downloads of our article (cited in the amicus brief to the Court I co-authored with Meredith Addy of AddyHart on behalf of Freenome and New Cures for Cancers)—over 30 downloads during the holiday season and prior to the Court’s conference on January 10, when most IP practitioners are otherwise distracted, providing an unconfirmable assumption that the Court was reading it. All to no avail.

To the surprise and sorrow of some, but the relief of others, the Supreme Court earlier today denied certiorari in some key cases on patent eligibility law, putting any hope of further clarity in this realm squarely in the hands of Congress. Many see this as a dereliction of the Court’s duty, while others are just thankful the Court will not cause further harm than it already has. Commenting on the development, IPWatchdog CEO and Founder Gene Quinn tweeted out his view that this was a “bad day for patent eligibility” and that the denial of Athena ultimately “means medical diagnostics are NOT patentable in America.”

The Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely. The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

Five years after the last of the four decisions in patent eligibility doctrine by the Supreme Court—creating what is now referred to as the Alice-Mayo framework—the impact of this upheaval in the patent system has become even more clear. Ongoing court decisions and new data confirm that the Alice-Mayo framework has wrought an unsettling revolution and sowed uncertainty in what former U.S. Patent and Trademark Office (USPTO) Director David Kappos has referred to as the “the greatest innovation engine the world has ever known.” As policy debates on subject matter eligibility ramped up this past year, it is time to return back to the original dataset created by Robert Sachs and David Kappos that we presented in Turning Gold to Lead and provide an update.

Athena Diagnostics today filed its reply brief to Mayo Collaborative Services at the Supreme Court in the closely-watched petition asking the High Court to clarify U.S. patent eligibility law. The reply reiterates the points made in Athena’s petition for certiorari and dismisses Mayo’s argument in November that “any further action regarding the patentability of medical diagnostic claims such as Athena’s that employ conventional, known techniques should and does rest with Congress.” The reply comes three days after the United States Solicitor General recommended that SCOTUS grant cert in Athena or “another such case”, rather than in Hikma Pharmaceuticals v. Vanda Pharmaceuticals.

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”