“In the course of its opinion in SAP America, Inc. v. InvestPic, LLC, the Federal Circuit created a ‘physical realm’ test, which is nowhere to be found in 35 U.S. Code Section 101, having been wholly conjured by judges.”
Among the seven amicus curiae briefs filed Monday with the U.S. Supreme Court in InvestPic, LLC, v. SAP America, Inc., Eagle Forum Education & Legal Defense Fund’s brief argues that the case demands a hearing because the Federal Circuit has added yet another extra-statutory test to the already distorted patentability jurisprudence.
In a decision of May 15, 2018 authored by Judge Taranto, the Federal Circuit found the patent claims of U.S. Patent No. 6,349,291 invalid because they were directed to an abstract idea and lacked an inventive concept necessary to save the invention under 35 U.S.C. § 101.
In the course of its opinion, the Federal Circuit created a “physical realm” test, which is nowhere to be found in 35 U.S. Code Section 101, having been wholly conjured by judges. Such a requirement to be eligible for a patent would render novel, useful, nonobvious inventions unpatentable—purely on grounds outside the statute and ill-suited for the Information Age.
The amicus curiae notes “a vast domain of subject matter that should be patentable” between truly abstract ideas and the physical. This includes, for example, “complex algorithms, software, computer operating systems, clever business processes, website innovations, e-commerce inventions, medical diagnostic techniques, data compression, error detection, signal processing.”
Eagle Forum ELDF observes how the Supreme Court rejected the Federal Circuit’s “machine-or-transformation test” in Bilski v. Kappos. The “physical realm” test in InvestPic resurrects the same rejected concept. The Supreme Court again rejected such a requirement for patent eligibility in Alice Corp. v. CLS Bank, holding that “an invention is not rendered ineligible for patent simply because it involves an abstract concept.”
Furthermore, the Federal Circuit’s “physical realm” test is “anachronistic,” the brief argues, and unsuited to the inventions of the Information Age. The consequences of such an “archaic” standard, termed the “horse-and-buggy mindset of the Federal Circuit, is contributing to the forces compelling patent applications to be filed overseas rather than here.”
The amicus curiae illustrates the danger of this judicially induced slide by quoting the IPWatchdog article on St. Jude Children’s Research Hospital’s reassessment of its IP strategy, due to the raft of destructive 101 rulings: “Uncertainty about being able to get a patent and license it weighs against pursuing diagnostics and computer-implemented inventions—at least in the United States.”
Other notable amicus briefs include U.S. Inventor.