Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

We have previously written about the Supreme Court’s renewed interest in patent eligibility and seemingly unintended confusion between the patent eligibility requirements of 35 U.S.C. § 101 and the remaining patentability requirements under Title 35.  To paraphrase Judge Rich, whether we lawyers would take advantage of terminology available to us and stop talking nonsense is up to us.  Principles of Patentability, Geo. Wash. L. Rev., 28(2), 393-407, 407 (1960).  We tried to heed his guidance and aimed to be careful to differentiate between eligibility under § 101 and the remaining requirements of patentability.  Since our article, there has been significant commentary and angst regarding the failure of the courts to so differentiate, at least with respect to patent eligibility and the requirements of §§ 102 and 103.  But there has been less attention paid to possible changes in the relationship between § 101 and § 112, so we address the relationship of those two sections here.

The Way Things Used to Be

As described in our previous article (J.W. Cox, et al., A Brief  History of Supreme Court Interest in Patent Eligible Subject Matter Under 35 U.S.C. § 101, J. Tech. Law & Policy, 19(2), 181–226, (2014)) the law of § 101 was relatively stable from 1952 to 2010, with the Supreme Court opining on eligibility under § 101 only five times during that period.  In short, the law of § 101 was simple and well understood, and was only rarely invoked to prevent a patent right covering an actual abstract idea or mathematical formula.

As a result, claim scope was traditionally determined as a question of patentability under § 112.  These standards have not evolved dramatically over the last 50 years, with perhaps the greatest change being that of the new Nautilus standard for definiteness announced in 2014.  Nevertheless, as a matter of policy, patent applicants have needed to conform with the written description, enablement, and definiteness requirements in § 112 in substantially the same form over the last five decades.

The Way Things Are – Current Status of the Law – The Relationship Between Patent Eligibility and 35 U.S.C. § 112

Sections 101 and 112 provide their own separate limitations to the scope of patent protection in ways that are sometimes complimentary and sometimes contradictory.  The contours of these sections of the Patent Act are discussed below.

1. 35 U.S.C. § 101

Patent eligibility under § 101 is traditionally understood as a “threshold” test: the first of multiple challenges to the sufficiency of a patented invention.  See Bilski v. Kappos, 561 U.S. 593, 602, 130 S. Ct. 3218, 3225 (2010).  Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  35 U.S.C. § 101.  Courts have limited the scope of patentable material by exempting laws of nature, natural phenomena, and abstract ideas.  See Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).

These subject matter qualifications have been observed for over 150 years.  Id.  Despite their venerable nature, however, courts have struggled in recent years to clearly define the proper scope of § 101.  In particular, it remains a vexing problem to describe exactly when an invention is entitled to patent protection, and when an invention is merely the recitation of an abstract idea.  The Supreme Court has developed a two-part analytical framework to identify claims that are directed to a patent-ineligible concept.  See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289 (2012), and Alice, 134 S. Ct. 2347.  This Mayo/Alice framework has courts first examine whether the patent claims “are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.  If so, courts must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”  Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).  This approach seeks to limit the protection of unpatentable subject matter, despite the fact that “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ ” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2354).  Above all, § 101 is concerned with weeding out claims that merely claim the “building blocks of human ingenuity” and thus threaten to preempt the use of those ideas for other innovations.  Alice, 134 S. Ct. at 2354-55 (quotations omitted).

2. 35 U.S.C. § 112

Should a claim satisfy the threshold test of § 101, it can properly be subjected to the requirements of other sections of the patent statute, including 35 U.S.C. § 112.  Section 112 contains multiple requirements that relate to the adequacy of the inventor’s disclosure within a patent application.  The first requirement, the written description, “serves a quid pro quo function in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.”  Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quotation omitted).  This requirement requires an applicant to “convey with reasonable clarity to those skilled in the art that [. . . ] he or she was in possession of the invention,” by including sufficient disclosures in the specification.  Id.  (quotation omitted).

Under § 112, broader claims require broader disclosures.  Claims to the genus of an invention are patentable, just as claims to a species.  See Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204 (1980).  But broader claims must be accompanied by an equally broad disclosure.  “[A] broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.”  Carnegie Mellon, 541 F.3d at 1127 (quotation omitted).  “[C]laims may be no broader than the supporting disclosure.”  Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998).

The enablement requirement of § 112 is directed to disclosing how to make and use “the full scope of the claimed invention.”  Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quotations omitted).  As with written description, “[e]nablement serves the dual function in the patent system of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention.”  MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012).  Therefore, a patentee risks the invalidation of claims that are not fully enabled by the specification.  Id.

Finally, § 112 contains a definiteness requirement that serves as a check against claims broadened by vague and imprecise language.  While formerly understood as a requirement that claim language avoid being “insolubly ambiguous,” see, e.g., Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005), the Supreme Court recently clarified this standard: “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).  This standard mandates clarity, and requires a level of detail that discourages different reasonable interpretations of claim language.

Ultimately, the requirements of § 112 operate to incentivize substantial inventor disclosures to the public.  Furthermore, § 112 calibrates claim language to the bounds of the disclosed specification.  Compliance with § 112 results in claims that “avert[] the generality or vagueness or imprecision or over-breadth that characterize abstract ideas.”  Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1353–54 (Fed. Cir. 2016).

3. The Relationship

Inventors are motivated to maximize the breadth of their claims.  But they may seek to do so by employing imprecise claim language.  Both §§ 101 and 112 corral this behavior, although in slightly different ways.  Section 101 safeguards against claims that are too abstract or overbroad to be patentable, being concerned with claims that would “wholly pre-empt” any other use of an inventive concept, thereby foreclosing independent innovations or application.  Bilski, 561 U.S. at 610 (quotation omitted).  Section 112 protects against claims that are not completely and functionally disclosed within the patent specification ensuring that patentees cannot claim more than what they have invented – and shared with the public.

In our second and final installment, we will examine how this dynamic is playing out in federal and district courts across the country. CLICK HERE to continue reading part 2:

The coupling of § 101 and § 112, and what it means for patent practitioners