Posts Tagged: "patent eligibility"

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. 

[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.

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.

Senator Thom Tillis (R-NC) has been perhaps the most active and passionate Congress person when it comes to intellectual property (IP) rights, and patents specifically, in recent history. In early August, he released the first draft of the Patent Eligibility Restoration Act of 2022, which if enacted would abrogate the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). He has also been closely involved with oversight of the U.S. Patent and Trademark Office (USPTO) on topics such as patent quality and has written numerous letters to the Biden Administration on issues including the waiver of IP obligations under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, the theft of U.S. IP by Chinese companies, and more. While he seemed fairly exasperated by the end of his last attempt at eligibility reform in 2019, he explains below that the Supreme Court’s refusal to fix the problem by denying the American Axle case inspired him to revive his efforts.

Following U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s blog post in July explaining that she will be revisiting the Office’s 2019 subject matter eligibility guidance, the USPTO today announce a September 1 Federal Register Notice requesting public comments on the existing guidance. The Notice explained that “given the overwhelming interest in the guidance, the USPTO will now accept feedback via the Federal eRulemaking Portal until October 15, 2022.”

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision issued today, affirmed a Patent Trial and Appeal Board (PTAB) finding that claims to a computer system for identifying eligibility for Social Security Disability Insurance (SSDI) benefits are invalid as patent ineligible. The opinion was authored by Judge Chen. The case originates from an examiner’s rejection of Jeffrey Killian’s claims of U.S. Patent Application No. 14/450,042 under Section 101 as being directed to “the abstract idea of ‘determining eligibility for social security disability insurance . . . benefits’” and lacking anything “significantly more” to satisfy Step 2 of the Alice-Mayo two-part test.

Last week, the Electronic Frontier Foundation (EFF) announced that it is launching a campaign against Senator Thom Tillis’ (R-NC) proposed “Patent Eligibility Restoration Act of 2022,” which would effectively abrogate the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). The EFF’s post claimed the bill “would tear down some of the public’s only protections from the worst patent abuses.” While many in the patent community welcomed Tillis’ renewed attempt at clarifying U.S. patent eligibility law, others said the bill would create more problems by failing to clearly define terms like “technological” and including language that would be problematic for software patents.

On August 5, US Inventor and Eagle Forum Education & Legal Defense Fund (Eagle Forum ELDF) jointly filed an Amicus Brief supporting inventor David Tropp’s petition for a writ of certiorari to the U.S. Supreme Court (SCOTUS) regarding whether Tropp’s method claims are patent-eligible under 35 U.S.C. 101. Tropp owns two patents relating to luggage lock technology that enables airport screening of luggage while still allowing the bags to remain locked. In July, just days after the Court denied cert in American Axle, Tropp asked the High Court to answer the question: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101, as interpreted in Alice Corporation Pty v. CLS Bank International, 573 U.S. 208 (2014).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the Patent Trial and Appeal Board (PTAB) correctly rejected a patent applicant’s reissue claims as “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution.” The opinion, authored by Judge Cunningham, explained that John Bradley McDonald, who is named as the inventor on U.S. Patent No. 8,572,111, amended claims 1-9 and 19-21 following an examiner’s rejection of them as patent ineligible, since they were not tied to a processor for conducting the claimed searches. McDonald added “a processor” to certain claim limitations in order to meet the requirement for tying the methods described by the patent to a particular machine and the examiner ultimately withdrew the Section 101 rejection.

June Cohan, Senior Legal Advisor in the Office of Patent Legal Administration at the U.S. Patent and Trademark Office (USPTO) today explained to attendees of an event about the Office’s patent eligibility guidance that there are no plans to revise the guidance in light of the denial of certiorari in American Axle. She also acknowledged several areas of “divergence,” or “outlier cases,” between the USPTO and the U.S. Court of Appeals for Federal Circuit (CAFC) approaches to determining patent eligibility which the Office has no plans for revising, despite the fact that the CAFC is the reviewing court for the USPTO.

In U.S. government, setting public policy is the sole and exclusive domain of Congress. The laws they pass effectuate the public policy positions that Congress alone has the power to set. In law, words are everything. The precise meaning of the words in law determines whether the public policy is implemented as intended by Congress. Altering the meaning of just one word can change the entire public policy set by Congress, even turning the public policy on its head. Anyone following the debate on patent eligibility can attest to how the Supreme Court’s redefinition of the word “any” in 35 U.S.C. § 101 to have an exception called an “abstract idea” caused a significant public policy change and that change destroyed countless startups, especially those in tech. Senator Tillis’ Patent Eligibility Restoration Act of 2022, S.4734, wrongly puts the courts in charge of defining public policy because it leaves key words completely undefined.

Today, Senator Thom Tillis (R-NC), the Ranking Member of the Senate IP Subcommittee, released the first draft of the Patent Eligibility Restoration Act of 2022, which if enacted would, at a minimum, overrule the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012)…. This legislation would absolutely be a solution to many of the patent eligibility problems that have plagued the industry for the last decade. Of course, if the tech giants in Silicon Valley think this will hurt them the bill will be killed, period.

This morning, 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 application of 35 U.S.C. Section 101 to certain technologies. While the bill was welcomed by many in the intellectual property (IP) community, since it would abrogate or weaken many of the seminal decisions that have arguably caused confusion on eligibility over the last decade-plus, some have called the bill out as being far from perfect. Questions remain with respect to the text’s language regarding the definition of “technological” and what it means for software patents, for instance, as some commenters note below.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a California district court’s award of attorneys’ fees in part to Netflix, Inc. for Realtime Adaptive Streaming LLC’s “improper” litigation conduct. The CAFC said that Realtime’s use of forum-shopping to blatantly avoid an adverse ruling amounted to “gamesmanship” that “constitutes a willful action for an improper purpose, tantamount to bad faith, and therefore [is] within the bounds of activities sanctionable under a court’s inherent power in view of the Ninth Circuit’s standard.” The opinion was authored by Judge Chen and Judge Reyna concurred-in-part and dissented-in-part.

In a Director’s Forum blog post published earlier today, United States Patent and Trademark Office (USPTO) Director Kathi Vidal recounted the Office’s efforts over the last several years to make U.S. patent eligibility standards clearer for applicants and said that the agency will be revisiting the 2019 subject matter eligibility guidance issued by the previous administration in an effort to bring further clarity to the examination process.