Posts Tagged: "patentable"

In essence, by narrowly identifying certain subject matter groups as being those that properly qualify for characterization as abstract ideas the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit. It has been frustrating — to say the least — that courts have refused to define the term abstract idea despite that being the critical term in the Supreme Court’s extra-statutory patent eligibility test. Without a definition for the term abstract idea rulings have been nothing short of subjective; some would even say arbitrary and capricious.

Last week, in Ancora Technologies v HTC America, the Federal Circuit reversed a lower court’s invalidity ruling under 35 USC §101 by concluding that Ancora’s claimed subject matter was concrete—not abstract—because it assigned specific functions to specific parts of a computer to improve computer security… This case is yet another in a string of post-Alice cases suggesting that patents should be drafted with an emphasis on the technical problem and technical solution delivered by the claims.

To date the United States Court of Appeals for the Federal Circuit has not explicitly required district courts to conduct a formal claim construction prior to determining whether a patent claim is directed to patent eligible subject matter. How one can know whether a patent claim is directed to patent eligible or patent ineligible subject matter without a full-blown claim interpretation is a mystery. It is axiomatic that one cannot know what a claim actually covers unless and until a proper analysis is conducted. Yet, district court judges somehow know with certitude what a claim covers while doing nothing more than a facial review of the claim that would be considered a defective and reversible claim construction if done at a later stage of the proceedings when actually attempting to define the metes an bounds of the claim.

Some courts have characterized this final inquiry as “the hunt for the inventive concept.” That would make some logical sense if and only if a claimed invention that is novel and non-obvious would be necessarily found to have satisfied the inventive concept requirement. Alas, that is not the case. Under the ridiculously bastardized law of patent eligibility foisted upon us by the Supreme Court it is actually possible for a claimed invention to be both new and non-obvious and to somehow not exhibit an inventive concept under what is considered a proper patent eligibility analysis. Of course, it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept. If something is new and non-obvious it is by definition inventive. This disconnect merely demonstrates the objective absurdity of the Alice/Mayoframework.

Four years later, the patent landscape demonstrates that Alice has become a train wreck for innovation… Unfortunately, the Federal Circuit failed to rein in this rout of Machiavellian creativity, which it could have done by relying on well-settled procedural process and patent doctrines… This year, the Federal Circuit appears finally to have awakened from its slumber. In two recent opinions, Aatrix v. Green Shades and Berkheimer v. HP, the Federal Circuit embraced long-established procedural rules and patent doctrines… Savvy and creative patent lawyering will prevail. To be successful, patent practitioners must show the PTO, the courts, and Congress the importance of our clients’ innovations and explain why the type of technology should not dictate whether there is enforceability.

Just days prior to our interview an announcement was made that PTAB Chief Judge David Ruschke would be stepping down and assuming new responsibilities. “At the PTAB, we will have new leadership. For now, come September 2nd, the acting chief will be Scott Boalick, and the acting deputy chief will be Jackie Bonilla,” Director Iancu said. “We’re going to post the position, the vacancy. I want to encourage everybody out there, both inside the PTO and from the outside, who is interested, and thinks will do an excellent job, to apply. We are at the beginning of the process for finding new leadership at the PTAB.”

Narrowly construing the § 101 eligibility exception for abstract ideas is not only suggested by Supreme Court guidance, but also could potentially allow for increased coherence and consistency while simultaneously serving to solicit further Supreme Court guidance on eligibility. Even if the bright-line eligibility prohibition is construed narrowly, § 101 can still serve to police claiming at a level of abstraction that results in overbroad claiming.

It seems clear that the Supreme Court did not intend to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level because the Court indicated that there are at least some abstract ideas that are sufficient to confer patent eligibility: namely, inventive concepts.  The Court’s bright-line prohibition against patenting laws of nature and mathematical formulas clearly was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea because such a bright-line extension would bar patenting of inventive concepts, which by definition are capable of characterization as abstract ideas but which the Court explicitly acknowledged are sufficient to signal eligibility.

Understory’s first patent covers the sensor device itself which consists of a stainless steel sphere sitting on top of a shaft, a configuration which one of the sensor’s designer called “God’s joystick.” “The sensor detects microdeflections from rain or hail pushing on the joystick,” Kubicek said. Such measurements take place on the order of 50,000 times each second and algorithms processed at the device separates each microdeflection into a data point which can be sent to a cloud-based network of weather data… One has to wonder though whether the Federal Circuit and Supreme Court, when they might get their hands on these patents, will find them to be directed to nothing more than an abstract idea. After all, sensing the weather has been done since at least the dawn of recorded history.

It’s been over eight years since the Supreme Court issued its Bilski v Kappos decision, over six years since the Supreme Court issued its Mayo v. Prometheus decision and over four years since the Supreme Court issued its Alice Corp. v. CLS Bank decision.  In case anyone missed it, each of these three landmark cases was decided based on evidence on the record.  Thus, the Supreme Court not only contemplated the need for evidence when determining patent eligibility for abstract ideas of man-made origin, but wholly embraced the practice. Yet despite the Supreme Court’s trio of evidence-based holdings, it was February of this year before a single three-judge Federal Circuit panel definitively ruled on the evidence issue in Berkheimer v. HP, and it was the end of May before a majority of the Federal Circuit signed on to the idea that determining whether a man-made something is well-understood (or well-known), routine and conventional is an issue of fact that should be based on objective evidence. That’s the better part of a decade of the Federal Circuit wandering the desert.

2018 celebrates the six-year anniversary of one of the most important Supreme Court decisions of the modern era. On March 20, 2012, the Court handed down its ruling in Mayo v. Prometheus Laboratories. The decision was understood immediately to be a break from the immediate past, a product of the Court’s intention to clarify patent eligibility for a new era of biotech, pharma, and life science technologies. The Court hoped it would help clarify eligibility issues raised by new technologies that the drafters of Title 35 § 101, 102, and 103 hadn’t envisioned, but it’s done the opposite. Six years later, eligibility is harder to discern than ever, especially for diagnostic method claims.

InvestPic filed a combined petition for panel rehearing and rehearing en banc on June 19, 2018, making two arguments. First, that the original decision must be vacated and remanded because the claims considered by the district court and the panel were surrendered as the result of two reexaminations that ultimately resulted in the original claims being lost, with new claims awarded in their place. Second, that the panel’s decision is alleged to be inconsistent with decisions of prior panels, which found claims lacking improvements in the physical-realm could still be patent eligible improvements. This second argument goes on to assert that the ruling of the panel would effectively preclude groundbreaking innovations in the field of data science to be considered patent eligible moving forward.

The same factual analysis required in Berkheimer under step 2B should apply to fundamental economic practice analysis of claims under step 2A. The questions have similar factual underpinnings in both steps. Applicants, when faced with economic based claims and particularly blockchain-based claims, should argue that whether a claim is directed to a fundamental economic practice is a fact question that has three parts. (1) The claims should be directed to a “fundamental” economic practice; (2) The claims should be directed to practice it has been “long” practiced in the system of commerce; and (3) The claim should be directed to a “prevalent” practice in our system of commerce. Each of these fact questions requires supporting evidence which should fall in the same four categories outlined in the April 19, 2018 Memorandum.

This article examines Supreme Court and Federal Circuit analyses of patent eligibility under 35 U.S.C. § 101 where the patent claims at issue were directed to Life Sciences-related technologies. I first examine this topic in the context of composition of matter patent claims and then in the context of method claims. As reflected in the below discussion, while the § 101 case law is fairly straightforward with respect to composition claims, the case law is murkier when it comes to method claims.