“[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.
Two 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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