Employing a Trademark Test to Determine When a Patent is ‘Directed To’ a Section 101 Judicial Exception

By Wayne Reinke
October 6, 2021

“A patentable subject matter inquiry [under Section 101] is currently too difficult and confusing, and often leads to highly questionable results. Hence, it is appropriate to consider other ways, such as a factors-based approach.”

Section 101 test - https://depositphotos.com/90320770/stock-photo-factor-1-2-3-venn.htmlUnder U.S. trademark law and court precedent, determining whether there is a likelihood of confusion involves weighing a number of factors (13 factors to be exact), known as the “Dupont factors,” set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The CCPA (Court of Customs and Patent Appeals) is a predecessor court to the Federal Circuit. As noted by the Federal Circuit, not all the DuPont factors may be relevant or of equal weight in a given case and any one of the factors may control a particular case.

Under 35 U.S.C. §101, patent-eligible inventions include any process, machine, manufacture, composition of matter and any new and useful improvement thereof. There are, in addition, three judicially created exceptions to the broad recitation of Section 101: laws of nature; natural phenomena; and abstract ideas. Natural phenomena is said to include products of nature. This article focuses mainly on the abstract ideas exception, but also touches on laws of nature and mathematical equations.

If the goal of Section 101 is to act as a gatekeeper, rather than a roadblock, the factors approach seems appropriate to employ in a patentability analysis.

The Need is Urgent

A discussion regarding possible different ways to determine whether a claim is directed to a judicial exception is particularly relevant now, in light of the present state of Federal Circuit jurisprudence on judicial exceptions. Of particular interest, pending with the Supreme Court is a Petition for Writ of Certiorari from Am. Axle & Mfg. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) (hereinafter, “American Axle”). American Axle appeals a split decision from the Federal Circuit denying a rehearing en banc. The Petition seeks, in part, clarification from the Supreme Court as to the appropriate standard for determining whether a patent claim is directed to a patent ineligible concept (the judicially created exceptions).

To refresh, the Alice two-part test includes, in step one, the court determining “whether the claims at issue are directed to a patent-ineligible concept. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). If so, we then “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (quoting Mayo, 566 U.S. at 72–73, 78).

I do not envy the Supreme Court, as it would seem difficult, if not impossible, to fashion one standard fitting all situations for determining whether a patent claim is “directed to” one of the judicially created exceptions to §101. However, perhaps we do not need to try to fashion one standard. Instead, this proposal looks to factors, the collective weight of which tips one way or the other, much like the DuPont factors for likelihood of confusion in trademark law. Think “useful indicia” of patentable subject matter. This may well be considered an academic exercise, but the Supreme Court does have the authority to make it happen.

To be sure, the factors to consider would need to be fleshed out, but below are some possibilities to consider, followed by application to American Axle and Yabin Yu v. Apple Inc. (Fed. Cir. 2021) (hereinafter, “Yu v. Apple”). Like the DuPont factors, not all the judicial exception factors will be applicable in a given case, and one or a subset of the factors may be controlling. Further, the factors may evolve or fall out with time and/or technology changes.

Possible Factor One: Traditional Patentability

For example, one factor may be whether a given claim results in a type of invention traditionally patentable, such as a digital camera (Yu v. Apple) or the result of an industrial manufacturing method (American Axle). If so, then this factor would weigh in favor of patentable subject matter being present. Applied to both Yu v. Apple and American Axle, this factor should weigh, perhaps heavily, in favor of finding patentable subject matter, but still subject, of course, to the other statutory requirements.

Possible Factor Two: Physical Components

Another example of a possible factor is whether a plurality of specific physical components, other than a general-purpose computer, are present. If present, this factor would weigh in favor of patentable subject matter. For both Yu v. Apple and American Axle, this factor would also weigh, perhaps heavily, in favor patentability.

Possible Factor Three: Non-Obviousness

Another possible factor is whether the claims have been held to be novel and non-obvious over the prior art. If so, this factor would weigh in favor of patentable subject matter. Applied to both Yu v. Apple and American Axle, this factor would weigh in favor of patentable subject matter. I realize the novel and non-obvious factor may be controversial, but it is an indicia of an improvement or new approach over conventional approaches.

Possible Factor Four: Data

Another possible factor is whether one or more of the following are present in the claim: data gathering; analysis of data; reporting of results of analysis; displaying results or organizing data. If one or more are present, this factor would weigh against patentable subject matter. Applied to either Yu v. Apple or American Axle, this factor would weigh in favor of patentable subject matter.

Possible Factor Five: the ‘How’

Not that I endorse the Federal Circuit (inconsistent) requirement of the presence of a “how” in the claim, but another possible factor is whether there is literally only a desired end result with a complete lack of claim limitations as to how the end result is achieved. If present, then this factor would weigh against patentable subject matter. Applied to American Axle, this factor would weigh, on balance, in favor of patentability. Application to Yu v. Apple is difficult. There is a recitation of a resulting “enhanced” digital image. However, it is completely unspecified in the claim as to what type of enhancement, so it seems insufficient to qualify as an end result. In my view, this would be a Section 112 issue; that is, whether “enhanced” is indefinite, without any effect on the patentable subject matter inquiry.

Possible Factor Six: ‘Well Understood, Routine and Conventional’

A last suggested factor for a process or method of use is whether the claimed steps are well understood, routine and conventional; if so, this factor would weigh against patentable subject matter. As applied to American Axle, this factor would clearly be in favor of patentable subject matter, since the prior art did not teach dampening the two types of vibrations for the same prop shaft liner. However, as applied to Yu v. Apple, there were some aspects of individual claim elements that may weight against patentability, but not in a very strong way. The other factors above weighing heavily in favor of finding patentable subject matter in Yu v. Apple should outweigh this factor.

Sub-Factors

With regard to laws of nature and mathematical equations, if neither is expressly recited, it would weigh in favor of patentable subject matter. In that case, a possible sub-factor could be whether there is clear reliance on the same for patentability. If so, then this factor would weigh against patentable subject matter, depending on the strength of the case for clear reliance. If either a law of nature or a mathematical equation is expressly recited, a possible sub-factor is whether there is an otherwise relatively high level of specificity in the claim. If so, then this factor would weigh in favor of patentable subject matter.

Jumpstarting the Section 101 Dialogue

A patentable subject matter inquiry is currently too difficult and confusing, and often leads to highly questionable results. Hence, it is appropriate to consider other ways, such as a factors-based approach proposed in this article. However, the real purpose of this article is to spark a discussion regarding other viable approaches to determining whether a claim is directed to one of the judicial exceptions to Section 101.

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The Author

Wayne Reinke

Wayne Reinke is a long-time partner with Heslin Rothenberg Farley & Mesiti, an IP boutique firm with offices in upstate New York. His practice over the years has been varied, in areas including patent, trademark (including trademark portfolio management), copyright practice, licensing, appeals, reexaminations, opinions and litigation support. The majority of his practice has been in patent prosecution, including success in overcoming patentable subject matter rejections. His patent experience spans multiple technology areas, including microelectronics, nanoelectronics, integrated circuit fabrication, as well as semiconductor design and fabrication. Additionally, he has drafted and prosecuted patent applications involving computer-related inventions, including artificial intelligence, machine learning, augmented reality, virtual machines, software, graphical user interfaces, memory management, database management, distributed storage, online search technologies, data structures, data storage architectures, and online data security encompassing firewalls and encryption schemes.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments. Join the discussion.

  1. Anon October 6, 2021 8:27 am

    How about we simply follow the direct words of Congress and NOT continue done an improper path of the judicial branch writing patent law?

  2. concerned October 6, 2021 9:01 am

    My attorney will be reminding the CAFC that SCOTUS never said a general purpose computer denied patentability and he has the SCOTUS case cites to back it up.

    And my attorney will be arguing that evidence is what SCOTUS used to determine routine, conventional and well understood, not whatever secret standard and whims now in play.

    In addition, collateral estoppel is unconstitutional to deny due process. The favorite of using cases a,b,c to completely deny due process of patent case d that has a different fact patern, subject matter and evidence is unconstitutional. I never was a party to a,b,c and I have a right to due process based on my claims, my facts, my subject matter and my evidence. Of course, the cases used for collateral estoppel are cherry picked while actual text of Alice/Mayo is ignored.

    I agree with Anon and a good place to start is with evidence, facts and the truth.

  3. Night Writer October 6, 2021 10:24 am

    This is absolutely ridiculous as is Alice/Mayo.

  4. Anonymous October 6, 2021 10:31 am

    Anon @1 is exactly right. The author admits “it would seem difficult, if not impossible, to fashion one standard fitting all situations”, yet that is exactly what legislation is. The author continues, “the Supreme Court does have the authority to make it happen.” No, they don’t. Only Congress has Constitutional authority to legislate regarding patents. Failing to recognize this IS the problem.

    If we’re looking to trademark law for anything, it ought to be for the principle of incontestability. A patent’s validity ought to become incontestable a time certain after issuance. That’s the straightforward way to preserve the PTAB but limit its potential harm, to remove errantly issued patents soon after they issue, to eliminate hindsight bias many years after issuance, to incentivize licensing rather than litigation after the would-be incontestability date has arrived, to allow Congress a quasi-solution to the 101 debacle since they don’ have the political fortitude to abrogate Alice entirely, and to free the courts from having to deal with endless (and meritless) challenges based on 101/112/102/103 in EVERY patent infringement case.

  5. Pro Say October 6, 2021 5:22 pm

    What Anon, Anonymous, Night Writer, and concerned said.

    The author’s approach, while admirable, would transform the current eligibility can o’ worms . . . into a barrel o’ worms.

    At the CAFC, the District Courts, and the Patent Office as well.

    Just try to imagine the multiplied complexity of the briefs . . . of the decisions . . . of patent prosecution . . .

    Scary dangerous.

  6. Curious October 7, 2021 4:12 pm

    The author’s approach, while admirable, would transform the current eligibility can o’ worms . . . into a barrel o’ worms.
    Yes, yes, and more yes.

    If the goal of Section 101 is to act as a gatekeeper, rather than a roadblock, the factors approach seems appropriate to employ in a patentability analysis.
    The “factors approach” is the wrong way to go about this. A factors approach lends itself to a post facto rationalization of whatever the decisionmaker initially determines. If you want something to be directed to non-statutory subject matter, then you give factors 2, 3, and 6 more weight and factors 1, 4, 5, and 7 less weight (these factors are made up so don’t take anything from it). If you want something to be directed to non-statutory subject matter you give different weighting.

    This approach is essentially what we have today. We have judges that are determining subject matter eligibility based upon a myriad of factors (already present in the jurisprudence) and weighting the factors as they see fit based upon their preconceived notions as to the “proper” result. For example, lack of preemption is important when determining that something is directed to patent-eligible subject matter — it isn’t important when you are looking for a different result. As another example, physical components are important — except when they aren’t (e.g., Yanbin Yu v. Apple).

    FYI — the petition for en banc rehearing in Yu v. Apple was denied. Although the facts are great, I very much doubt this case will get any traction at the Supreme Court for political reasons.

  7. concerned October 7, 2021 5:04 pm

    Curious:

    Our CAFC appeal brief revealed probably 2 to 1 the number of SCOTUS case cites on our behalf vs. CAFC case cites on the PTAB/USPTO side.

    It is exactly what you said: It depends on who is doing the mattering for it to matter.

    And the broad use of collateral estoppel is horrible. A,B,C is similar so it must apply to your rejection also. And we do not care how much hard evidence you have revealing otherwise. If we say it is a horse, it is a horse regardless how many black and white stripes that horse has.

    Sad.

  8. Curious October 8, 2021 10:25 am

    It is exactly what you said: It depends on who is doing the mattering for it to matter.
    True.

    If we say it is a horse, it is a horse regardless how many black and white stripes that horse has.
    True as well.

    Sad.
    True yet again.

    If you haven’t done so already, familiarize yourself with Yanbin Yu v. Apple, which I referenced above. Ask yourself, are my claims better positioned than those claims regarding 101? Correct me if I’m wrong, but from my recollection, your invention involves a methodology not necessarily requiring a computer — what one might call a “pure” business method. If so, then I don’t think you’ve got a snowball’s chance in hell of prevailing. I suspect you already know that. However, I guess we all have to fight the good fight. (FYI — not legal advice)

  9. concerned October 8, 2021 12:09 pm

    Curious:

    “B” is my attorney and he advances one heck of a brilliant argument. He filed the CAFC brief yesterday.

    B feels the he raises enough due process questions for SCOTUS to accept the case should we lose at CAFC. Considering B has made it to SCOTUS before, I think we just might.

    My first attorney had USPTO and PTAB all over the place and them on the run changing their rejections left and right. He felt it might be best to get another attorney with more experience at CAFC.

    B takes the arguments to the next level on steroids. In my non-attorney opinion, B slam dunks it.

    However, our eyes are wide open. We know the CAFC dances to their own drum, whatever that my be.

  10. Pro Say October 8, 2021 7:56 pm

    concerned: I’ve admired B’s work for years. If this patent master can’t bring you the justice you deserve and are entitled to, no one can.

    And as I’ve said before, your first attorney’s args were excellent.

    Had the PTO merely followed the facts, the law, Alice, and indeed their own eligibility guidance, he would have won the day for you.

  11. concerned October 11, 2021 5:53 am

    Many issues in play, especially Berkheimer. My official record has documents from every possible end user proving no one uses my process. The documents destroy the USPTO’s routine, non conventional and well understood arguments and that is why the USPTO refuses to even acknowledge the evidence exists.

    PTAB gave us a song and dance simply saying we misunderstood the holding of Berkheimer without stating any legal reasoning. We could not counter response to a blank statement.

    Then, I kid you not, the Board stated a new rejection reason of mental steps and indicated we could reopen prosecution and submit evidence accordingly. Now would that be the one million working professionals and experts since the inception of the government program? Would we subpoena them, get brain scans and ask each one why they could not solve the problem with their brain, many of which have law degrees? Would such evidence be recognized in the official record, the other evidence was not.

    FYI: Mental steps has never been part of any Alice/ Mayo doctrine according to the case cites in the appeal. It was easier than the brain scans.

    Accordingly, the Berkheimer holding will be on trial with our appeal as how many patent application have documents from every possible end user? Let’s find out here and now: Do facts and evidence matter in a legal setting? Evidence mattered in Alice and Mayo as the nature of the evidence was specifically referenced in the SCOTUS decisions.

    Pro Say: I agree. If B cannot win I do not see how anyone else could. I think he is brilliant, he knows the law, he knows the judges and specifically asked for my case if I ever needed further assistance.

    My first attorney was excellent also. He had to realize there is alot more going on with patent prosecution than meets the eye when he suggested I bring in a top talent. And that I did.

  12. B October 12, 2021 1:26 am

    @ Pro Say “concerned: I’ve admired B’s work for years. If this patent master can’t bring you the justice you deserve and are entitled to, no one can.”

    Thank you for the kind words. I deeply appreciate it.

    The problem with the CAFC’s Alice-Mayo test is that it’s not a test but a rigged carney game. There’s no test for abstract – it’s anything they say it is. There’s no test for inventive concept. There’s no test for what is “substantial more.” Berkheimer is ignored at a whim.

    Alice-Mayo is a capricious judicial veto. So long as a claim is judged by the yardstick of inventive concept the courts can say the claim language is never enough.

    Anyone wonder how the Enfish claims were held patent eligible? I mean, think about it – mental steps and all. The self-referential table idea is limited to computers (like Benson), and the Enfish claims preempt self-referential tables far, far more than Benson’s claims preempted BCD-binary conversion.

    Benson was a garbage decision. Flook was a garbage decision. Bilski and Alice – total garbage.

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