SCOTUS Kicks Patent Eligibility Cases to the Curb in Last Move of the Term

“The  Court also denied certiorari in Spireon, Inc. v. Procon Analytics, Inc., which presented identical questions to American Axle.”

https://depositphotos.com/126319192/stock-photo-business-woman-holding-paper.htmlThe U.S. Supreme Court has denied certiorari in American Axle v. Neapco Holdings, Inc., leaving it up to Congress and the U.S. Patent and Trademark Office (USPTO) to restore any semblance of clarity on U.S. patent eligibility law for now.

Many expected that the Court would grant the petition after the U.S. Solicitor General in May recommended granting review. The SG’s brief said that inventions like the one at issue in American Axle have “[h]istorically…long been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied” and that the U.S. Court of Appeals for the Federal Circuit “erred in reading this Court’s precedents to dictate a contrary conclusion.” It also explained in no uncertain terms that claim 22 of the patent at issue in the case does not “simply describe or recite” a natural law and ultimately should have been held patent eligible.

But the Supreme Court justices today denied cert without comment in their last Orders List of the term. This leaves it up to Congress and the USPTO to take action to fix some of the unpredictability stakeholders have noted, as outlined just this week in the USPTO’s study on patent eligibility jurisprudence. The Office is continuing to solicit feedback on eligibility issues and will presumably announce changes via rulemaking or revised guidance at some point in the future.

Congress is currently exploring ways to reform the Patent Trial and Appeal Board (PTAB), but the eligibility issue has largely fallen off the map. Senators like Thom Tillis (R-NC) had been working to get a bill addressing eligibility issues passed, but explained in 2020 that efforts had stalled due to a lack of compromise. However, he and other members of congress have been pushing the USPTO to address eligibility directly, for example, through pilot programs like the “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program.” That pilot allows eligible applicants who receive a subject matter eligibility rejection with prior art rejection(s) or indefiniteness rejection(s) to defer substantively responding to the Section 101 rejection until all other rejections have been withdrawn. The goal is to make the Section 101 analysis less “vague and subjective,” according to the letter sent by Tillis and Senator Tom Cotton (R-AR) in March 2021.

However, as noted in the USPTO’s recent eligibility report, while USPTO guidance/ action on eligibility may be helpful on the front end, it is not binding on the courts and thus is of limited value.

The Supreme Court also today denied certiorari in Spireon, Inc. v. Procon Analytics, Inc., a petition that was filed in April of this year and asked the Court to consider identical questions to those presented by American Axle.

Commenting on the denial today, a USPTO spokesperson told IPWatchdog in a written statement: “As we have previously noted, innovation cannot thrive in uncertainty. We are committed to making every effort to ensure that the U.S. patent system is as clear and consistent as possible.”

 

This article was updated on 6-30 to include the USPTO’s comment.

Image Source: Deposit Photos
Author: Rawpixel
Image ID: 126319192 

Share

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.

Join the Discussion

15 comments so far. Add my comment.

  • [Avatar for Pro Say]
    Pro Say
    July 4, 2022 10:14 am

    B: “the courts and the USPTO lack the constitutional authority to declare exceptions to s101.”

    That.

  • [Avatar for concerned]
    concerned
    July 2, 2022 03:50 am

    The answer seems simple to me, a simple layperson.

    CAFC throws out all judicial exceptions per Dobbs effective immediately. Force SCOTUS to take cases if SCOTUS does not like it.

    Rinse and repeat. Rinse and repeat.

    We do not need Congress to codify anything, Congress already has codify the patent laws. If SCOTUS still wants to legislate from the bench, FORCE them to take ownership. SCOTUS dodging cert is irresponsible and gutless after sticking their nose in the middle of things and legislating from the bench.

    CAFC may start with my case, it has the foundation. Everyone agrees in writing that I met the law as written by Congress and I provided a solution to a long sought problem.

    What is the hold up?

  • [Avatar for B]
    B
    July 1, 2022 05:15 pm

    @ Thomas Jackson “SCOTUS has just decided that the Environmental Protection Agency is not to establish rules and regulations to interpret federal statutes.”

    Respectfully, what the SCOTUS decided is that the EPA exceeded its authority under s111(d) of the Clean Air Act. Totally different

    https://www.supremecourt.gov/opinions/21pdf/20-1530_n758.pdf

    ” . . . . SCOTUS turns around and denies cert of American Axle leaving the USPTO to interpret what comprises ‘patent-eligible subject matter’ yet to be defined except by the lower federal courts, USPTO guidelines and BPA opinions.”

    Dude – no one knows what constitutes patent-eligible subject matter, and the problem is that the courts and the USPTO lack the constitutional authority to declare exceptions to s101.

  • [Avatar for concerned]
    concerned
    July 1, 2022 04:18 pm

    Patent application 14450042. CAFC appeal 21-2113.

  • [Avatar for Anonymous]
    Anonymous
    July 1, 2022 03:32 pm

    Concerned, is there a link to your brief available?

  • [Avatar for concerned]
    concerned
    July 1, 2022 02:28 pm

    Mr. Jackson:

    The CAFC has every opportunity to step up on my appeal and straighten things out with SCOTUS’ own language.

    If CAFC does, force SCOTUS to come back and re-straigten things out.

    CAFC can force USPTO to define abstract, significantly more and inventive concept. CAFC can throw out all judical exceptions per Dobbs. Make SCOTUS take a case to demonstrate the will to do otherwise.

    Draw a line in the sand CAFC and poke SCOTUS in the eye for a change.

  • [Avatar for Thomas Jackson]
    Thomas Jackson
    July 1, 2022 12:40 pm

    SCOTUS has just decided that the Environmental Protection Agency is not to establish rules and regulations to interpret federal statutes. SCOTUS turns around and denies cert of American Axle leaving the USPTO to interpret what comprises “patent-eligible subject matter” yet to be defined except by the lower federal courts, USPTO guidelines and BPA opinions .

  • [Avatar for B]
    B
    July 1, 2022 10:36 am

    @ concerned

    FWIW, I think this will increase the likelihood of Taranto and Clevenger favoring the decision you’d like to see.

    “During the oral arguments at CAFC, one judge said our arguments should be in front of SCOTUS, another judge kept implying how does CAFC get around stare decisis (answer: approach used under Dodd decision) and the third judge was silent.”

    Both of those were Taranto

  • [Avatar for concerned]
    concerned
    July 1, 2022 07:30 am

    Correction: Dobbs decision.

  • [Avatar for concerned]
    concerned
    July 1, 2022 07:25 am

    My attorney “B” is advancing a different argument through CAFC than American Axle, so “B” may have been one step ahead of this denied certiorari by arguing a new approach.

    His arguments are the capricious nature of the undefined words of abstract, inventive concept and significantly more, that my due process rights have been violated, and the USPTO and its Board provided no evidence of its position while completely ignoring 55 separate documents of my evidence.

    The constitution says I have a right to pursue a patent under Article 1, clause 8, plus USPTO and its Board said I met the s101 law as written by Congress. It is only the courts who “unconstitutionally” engrafted their words unto the statutory text with words that are never defined that are preventing my patent.

    USPTO and the Board did offer collateral estoppel as a reason using cases where the fact pattern is different, and cases where I was not a party to defend.

    The Dodd decision was also recently added to the argument via a R28j letter where SCOTUS says the courts do not have a right to engraft their views and words unto the statutory text and usurp legislative intent.

    The above is not due process in my opinion (i.e. throw my constitutional rights, throw out the Congressionally passed law, throw out my evidence while providing no evidence to support the rejection, and apply stare decisis void of my constitutional due process rights.)

    During the oral arguments at CAFC, one judge said our arguments should be in front of SCOTUS, another judge kept implying how does CAFC get around stare decisis (answer: approach used under Dodd decision) and the third judge was silent.

    Still alive. CAFC decision pending.

  • [Avatar for Paul Cole]
    Paul Cole
    June 30, 2022 04:36 pm

    Unfortunately the validity of the American Axle patent was questionable in any event having regard to DE-A-3632418 (BMW) which was not cited against American Axle either in the US or before the EPO but which, as I have previously commented is very pertinent prior art. Furthermore, although there is a disclosed embodiment, there is no worked example of the methodology for damping multiple driveline vibrations. Even if certiorari had been granted, the precedential value in relation to such a weakly patentable invention would have been doubtful. It may be that for reasons of this type certiorari was not granted.

  • [Avatar for Paul Morinville]
    Paul Morinville
    June 30, 2022 03:35 pm

    I wonder how heartily they laughed after denying yet another petition they themselves created by releasing the abstract idea demon into the patent system. Their demon has destroyed so much Big Tech competition that Big Tech monopolized and the Silicon Valley moved to Shenzhen, China.

    Good days work done by unfirable English major in a robe… just not my sense of humor.

  • [Avatar for Pro Say]
    Pro Say
    June 30, 2022 03:02 pm

    A sad day for American innovation.

    A sad day indeed.

  • [Avatar for Anonymous]
    Anonymous
    June 30, 2022 02:30 pm

    Congress, time to do your job and fix this mess. Software is patent eligible, so now codify it.

  • [Avatar for Model 101]
    Model 101
    June 30, 2022 12:37 pm

    Stupid idiots.

Add Comment

Your email address will not be published.