Amici Implore Supreme Court to Take Up Chamberlain Petition

“[T]here is no dispute that the claims [in Chamberlain] involve the identified well-known idea of ‘wirelessly communicating status information about a system,’ but there is much dispute as to whether it is permissible to simply ignore the reality that the claim is plainly directed to a ‘movable barrier operator.’” – Amicus brief of Judge Randall Rader and Chargepoint, Inc. amicus briefs have now been filed in The Chamberlain Group’s bid to the Supreme Court for review of “whether the Federal Circuit improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole.’” Former Federal Circuit Chief Judge Randall Rader has submitted a joint brief with Chargepoint, Inc.—which recently lost its own plea to the High Court to fix Section 101 law—and High 5 Games submitted a separate brief. Both are backing the petition and urging the Court to resolve the uncertainty around U.S. patent eligibility law once and for all, and sooner rather than later.


A ‘Scalpel, Not A Sledgehammer’

Judge Rader and Chargepoint, Inc. in their brief argue that the judicial exceptions to Section 101 must be narrowly construed and “wielded like a scalpel, not a sledgehammer.” Additionally, under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, Part II, Section 5, Article 27, the United States has agreed that “patents shall be available for any inventions, whether products or processes, in all fields of technology.” Citing Alexander Murray v. The Schooner Charming Betsy, 6 U.S. 64, 118 (1804), Rader/ Chargepoint explain that the Court’s own statutory construction canon requires that “an act of congress ought never to be construed to violate the law of nations if any other possible construction remains.”

In Phillips, Inc. v. Walling, 324 U.S. 490, 493 (1945)), the Court said that statutory exceptions should be narrowly construed. “To extend an exemption to other than those plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people,” wrote the Court. This should be even more true for “atextual, implicit statutory exceptions inferred by the judicial branch” than it is for the explicit exceptions at issue in Phillips, says the brief.

Furthermore, the general uncertainty surrounding 101 law is creating chaos for lower courts. Citing the United States’ amicus brief in Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., Rader/ Chargepoint explain that step one of the Court’s Alice-Mayo two-step framework for determining patent eligibility provides “little guidance,” as noted in the U.S. brief, and that both the United States and the Federal Circuit have acknowledged that almost all inventions involve laws of nature at some level. For instance, in the present case, which involves a patent for a “moveable barrier operator” (for example, a garage door opener), the brief says:

[T]here is no dispute that the claims involve the identified well-known idea of “wirelessly communicating status information about a system,” but there is much dispute as to whether it is permissible to simply ignore the reality that the claim is plainly directed to a “movable barrier operator.” (citation omitted)

The brief goes on to recount the Federal Circuit’s recent conflicting case law on Section 101, concluding that “at least one member of the Federal Circuit believes that ‘[t]he law… renders it near impossible to know with any certainty whether [an] invention is or is not patent eligible,’” and also explains that step two of Alice-Mayo is similarly ambiguous and inefficient to step one, with similarly conflicted judicial interpretations seen in cases such as Berkheimer v. HP Inc versus Am. Axle & Mfg., Inc. v. Neapco Holdings LLC. “The Federal Circuit has been unable to resolve the confusion and uncertainty regarding step two of the Mayo/ Alice inquiry, and thus this Court’s intervention is needed,” says the brief.

Finally, the brief notes that the uncertainty is creating an atmosphere that allows patent challengers to easily convince courts to “wield the exception like a sledgehammer in a manner that threatens to ‘swallow all of patent law.’ Alice, 573 U.S. at 304.” Citing an IPWatchdog article, the brief continues:

Indeed, while this Court indicated in Alice that “we tread carefully in construing this exclusionary principle lest it swallow all of patent law,” Alice, 573 U.S. at 304, the Federal Circuit has held ineligible 86% of all patent claims it has confronted facing a challenge under the atextual, implicit exception.

Ultimately, the Court must act “sooner rather than later,” because the uncertainty is hampering investment in key technologies and risking America’s position as a global competitor, says the brief.

A ‘Patent Emergency’

High 5 Games, a leading developer of automated wager slot games, online social games, and related game technology, echoes this concern and says in its brief that the Federal Circuit’s “unbridled analytical framework . . . is disastrous for the future of [America’s] innovation economy.”

High 5 proposes that the Court consider the following question in addition to the one presented by Chamberlain:

Whether the Federal Circuit’s application of the two step patent ineligibility test improperly failed to, as required by this Court’s prior holdings: (i) limit its “step one” analysis to whether the patent claim at issue is directed to a fundamental building block; (ii) determine in its “step two” analysis whether the patent claim added anything inventive to that same building block, which is required by this Court’s previously-announced “bright line” test that narrowly limits patent ineligibility to claims that would tend to stifle rather promote innovation and growth of human knowledge in the Sciences and Useful Arts, as required by the Constitution’s Patent and Copyright Clause.

The brief explains that the Federal Circuit’s jurisprudence on Section 101 reflects a “patent-hostile approach” and an “alarming and continued expansive departure from [Supreme Court] precedent and Congress’s intent.”

High 5 Games argues that claims that “add more,” such as the Chamberlain claim, be distinguished from claims reciting only an abstract idea that are therefore patent ineligible, with no need for the two-step Alice analysis.

Also citing IPWatchdog, the brief says that “a strict and narrow application” of the exceptions to patent eligibility “is mandated by this Court’s jurisprudence, by the Constitution, and by the Patent Act.”

Given the “general statement of policy” underlying Section 101—namely that “anything under the sun that is made by man” is patentable, Chakrabarty, 447 U.S. at 309—the courts are to “read [any] exception[s] narrowly in order to preserve the primary operation of the provision.”

The Brief adds that, with regard to patent claims that do not solely recite an abstract idea, they are patent eligible under Alice unless “directed to a fundamental ‘building block’ idea” so that the claim effectively preempts “the ‘building block’ itself.”

Alice’s step one is therefore met only when claims are directed to ideas that are “fundamental ‘building blocks of human ingenuity’” (see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)), such that these “building blocks” are placed “at risk of preemption.”  Step two, in turn, is met only if “the claim elements, both individually and as an ordered combination,” lack a separate inventive concept sufficient to transform the nature of the claim into a patent-eligible application that does not preempt the fundamental “building block.” Alice, 573 U.S. at 216–17.

The Federal Circuit’s decision in Chamberlain did not follow this analysis and erred at step one by only “look[ing] at the focus of the claimed advance over the prior art” and ultimately determining that ““the broad concept of communicating information wirelessly, without more, is an abstract idea.” The brief continues:

Under no stretch of the imagination could “wirelessly communicating status information about a system,” much less the claimed “movable barrier operator,” be construed to be an abstract idea rather than a physical process and apparatus, respectively, or the kind of fundamental “building block” idea that concerned the Court in Alice and was also at issue in Bilski v. Kappos, 561 U.S. 593 (2010). Alice, 573 U.S. at 219–21

“The Federal Circuit interpreted step one as requiring a court to search a claim in order to find something somewhere that is arguably an abstract idea in an unrestricted sense,” adds the brief.

Next, the Federal Circuit incorrectly applied step two:

The Federal Circuit did exactly what this Court instructed should not be done: it dissected the claims into old (“conventional”) and new (“inventive”) elements and then concentrated exclusively on the “aspect of the claim[] that… [is] allegedly inventive over the prior art”—“wireless transmission”—while ignoring the many other elements present in the claim providing a new garage door opener, sensing, and wireless information communication system.

In the end, says High 5 Games, “the current state of affairs is indeed a ‘patent emergency’.” The decision in Chamberlain puts “every patent claim at risk.”

If, as the Federal Circuit held in Chamberlain, all that is required to find a claim ineligible under Section 101 is (1) the existence of one claim element that can be characterized as somehow “abstract,” and (2) a finding that the other claim elements should be ignored because each independently was known in the art and could thus be described as “conventional,” then patent claims directed to new, useful, and nonobvious combinations of prior art elements often would not have a separate “inventive concept” and survive an eligibility analysis.

Thus, the situation requires an immediate “course correction,” lest industries like gaming and other computer and software-centric industries be further threatened.

On June 8, the Supreme Court requested that Techtronic Industries file a response, and that response is now due by August 7.

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Join the Discussion

21 comments so far.

  • [Avatar for Chris W.]
    Chris W.
    July 20, 2020 12:41 pm

    Great article. If you think about it, we didn’t even need Chakrabarty. Any claims to naturally-occurring bacterium, enzymes, etc. in nature, are most-appropriately rejectable under sec. 102. i.e., all biolife in nature should be considered prior art and in the public domain, more than one year prior to the applicant’s filing date, unless the Applicant can prove otherwise ! There was no need to even mention “man-made”.

  • [Avatar for concerned]
    July 18, 2020 06:38 am

    I have learned a lot from this forum, from the articles and the posted comments. It sure seems to me that this case will go nowhere, I hope my non-legal opinion is wrong.

    “While not required by the statutory text, these exceptions are consistent with the notion that a patentable process must be “new and useful.” And, in any case, the exceptions have defined the statute’s reach as a matter of statutory stare decisis going back 150 years.”

    I am hanging my patent application and appeal on the preceding statement by Judge Kennedy regarding new and useful. My inventive concept has never been used in any field of commence (documentation submitted to prove as much), the examiner never disputed the same on the record and he also conceded a solution occurred. Hopefully Judge Kennedy’s statement will hold true for my application on appeal to overrule the examiner.

    Good luck on this appeal also.

  • [Avatar for Anon]
    July 17, 2020 06:10 pm

    Sadly, Curious, you are quite correct about the “1,” although I will distinguish that the prior views were geared differently to those that would HOLD that minority views actually controlled the state of law; and the Kavanaugh Scissors is NOT about a “state of law” but rather about a mechanism AVAILABLE to rectify the current Gordian Knot.

    There is an appreciable difference there.

    Not only would those Scissors need be applied, but they would need be applied by a majority (as I am sure that you are aware).

  • [Avatar for Curious]
    July 17, 2020 03:20 pm

    There is a light: the Kavanaugh Scissors.
    Remember when we wrote about Bilski that 4 (now 3) is not 5 referring to those that signed onto Steven’s so-called concurrence. Here is a follow-on … “1 is not 5.” To the extent that Kavanaugh has a pair of scissors, it is his scissors alone. There is also the problem of statutory stare decisis. This is from the first paragraph of Kennedy’s opinion in Bilski: “While not required by the statutory text, these exceptions are consistent with the notion that a patentable process must be “new and useful.” And, in any case, the exceptions have defined the statute’s reach as a matter of statutory stare decisis going back 150 years.”

    That is why any real change has to come from Congress.

  • [Avatar for Anon]
    July 17, 2020 09:31 am

    A clever play on words from MaxDrei (who has seen his share of horses dying at the well of wisdom).

    Made me smile with the irony.

  • [Avatar for MaxDrei]
    July 17, 2020 07:53 am

    What has attracted the court’s attention? As Gene muses, the bad press? Probably. But helping perhaps is the difference they perceive between a molecule and a garage door.

    It is credible for the justices to cling to their comfort blanket, when the claimed subject matter is as invisible and elusive as a molecule, that it is the job of the Federal Circuit to put flesh on the bone of “abstract idea”. But really, when it comes to something as highly visible as a barn door, leaving it to somebody else to shut it is bordering on negligence (and even more so, after the horse has well and truly bolted).

  • [Avatar for Anon]
    July 17, 2020 06:48 am

    There is a light: the Kavanaugh Scissors.

    Whether or not the Court will choose to employ those scissors to cut the Gordian Knot of the 101 mess is an entirely different question.

  • [Avatar for Curious]
    July 16, 2020 09:25 pm

    This is not going to be the same summary denial situation that the respondents seem to have expected it would be.
    One could hope, but someone needs to show Clarence Thomas the light as he seems to be as anti-patent as they come.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 16, 2020 03:31 pm

    I was just going to echo what Hopeful wrote at 12. While it is easy for us to just chalk this up as another 101 petition that SCOTUS will ignore — because that is what they do — this petition seems to have captured their attention for some reason. Perhaps it is all the bad press with respect to a garage door being abstract under the Alice/Mayo test. Who knows?

    In any event, keep watching. This is not going to be the same summary denial situation that the respondents seem to have expected it would be.

  • [Avatar for Hopeful]
    July 16, 2020 02:41 pm

    You may find of interest that, initially, the respondents in this case filed a waiver of their right to respond to the Petition. The Court then conducted a conference regarding this matter, and the next day the Court ordered the respondents to respond. The respondents then asked for good amount of additional time to respond, and it was granted. This case appears to have the Court’s attention.

  • [Avatar for B]
    July 15, 2020 11:27 am

    @ jacek “Judges have no authority to create the code. Their job is to interpret the existing one.”

    I’ve actually said this very same thig to both the CAFC and the SCOTUS in more than one brief, but none of them seemed to listen.

  • [Avatar for B]
    July 15, 2020 11:23 am

    @ NW “What strikes me is that people actually think that the Scotus did this accidentally. The Scotus knew exactly what it was doing”

    Justice Stevens (who I believe is the justice Anon references above) was particularly anti-patent, and some of the language in his opinions goes against every rule of statutory construction known, but then again Justice Stevens had a room temperature IQ and apparently tended to hire clerks off the short bus.

    My point? Just because some president picked a person out of obscurity to sit on the highest court in the country — often solely for political reasons — doesn’t mean said person is competent to fill the post. Thus, ignorance as well as bias comes into play.

  • [Avatar for jacek]
    July 15, 2020 11:11 am

    Why we do not start from the wider view\that all “judicial exemptions” in fact are illegal attempts to undermine existing law invented by the congress. Judges have no authority to create the code. Their job is to interpret the existing one.
    Recently, one of the Supreme court judges privately used arguments invented by the efficient infringement lobby in 2011 at the time of creating the American Invention Act. They are under the influence of ongoing lobbying efforts. There is no other explanation that she remembers so well years old arguments and repeats word-for-word today pure nonsense created by efficient infringements lobby.
    Their constant refusal to revise problems created by themselves has no other logical explanation.
    If somebody looks like a duck …
    Runaway justice sold out to political influence.

  • [Avatar for Night Writer]
    Night Writer
    July 15, 2020 11:01 am

    What strikes me is that people actually think that the Scotus did this accidentally. The Scotus knew exactly what it was doing. They just pushed this off to the CAFC to say you define the boundaries of 101 anyway you want.

  • [Avatar for B]
    July 15, 2020 10:48 am

    @ Anon “Zero Percent chance of cert.”

    No, there’s a 0.0000000000001% chance a meteor will hit the SCOTUS and a whole new crop of less ignorant justices will replace the current bench.

  • [Avatar for Anon]
    July 15, 2020 06:31 am

    Mr. Williams,

    I am reminded by your comment of the (failed) attempt by a certain Justice to bookend his career with two anti-patent decisions, but lost his majority position and ended up with a ‘concurrence’ (which was really a dissent).

  • [Avatar for Joe Williams]
    Joe Williams
    July 14, 2020 11:16 pm

    Can anyone provide a simple pie chart of remaining SCOTUS opinions discounted by what their kids do for a living now? Considering legacy, if a justice quit today but could select a final topic to culminate their career — which … [intentionally blank space]

  • [Avatar for Pro Say]
    Pro Say
    July 14, 2020 07:27 pm

    “In effect, because this invention is no more than a cavewoman yelling to her caveman husband to roll the darn rock back in front of their cave opening because she’s cold; an action which is at least one-million years old (see, e.g., the movie “One Million Years B.C.”); it is abstract.”

    “And because neither the cave nor the rock were improved in rolling the rock back in front of the cave, it also fails Alice step 2.”

    — The CAFC

  • [Avatar for Anon]
    July 14, 2020 07:04 pm

    Zero Percent chance of cert.

  • [Avatar for Concerned]
    July 14, 2020 07:01 pm

    My application has no 102, 103 or 112 rejections so it must need a 101 rejection somehow because a 705 classification cannot have a patent.

    So after the examiner admits my process solved a problem of 64 years that escaped all the working professionals and experts in my field, he argues the solution simply automated an imaginary process that does not exist in the official record or with any authority in the field (a fact submitted into the official record.)

    Why have a 705 classification if the application is dead on arrival? A sledgehammer is an understatement as to the destruction to the patent system, truth and logic!

    SCOTUS needs to clean up their mess.

  • [Avatar for Curious]
    July 14, 2020 05:32 pm

    Prediction: Cert denied. Just like every other eligibility case that has gone to the Supreme Court since Alice. They aren’t interested. I wish it wasn’t true, but in the absence of evidence otherwise, I have to assume that Congress is the only place that real change to patent eligibility can occur.