is a registered patent agent and recent graduate from UNH Franklin Pierce School of Law. Theodore will be joining Morgan, Lewis, & Bockius LLP as an associate in the Silicon Valley’s patent prosecution practice group in October 2021.
Quantum computing continues to gain traction as an emerging technology, with potentially far-reaching and dangerous applications in the United States and worldwide. However, there are some applications for the technology which have not yet passed theoretical muster. In other words, the case for quantum advantage cannot be made by reference to known mathematical algorithms. But many applications, including quantum decryption (discussed below), have been concretely mapped out on a theoretical level and are now subject to only “engineering limitations” (i.e., implementation details).
In Part I of this article, I explained that the CAFC invalidated almost every software patent on appeal for eligibility in 2020 and recapped the first 13 such cases of the year. Despite the many software eligibility cases decided last year, there is still some uncertainty about what passes muster under the Alice two-step framework. Below is a recap of the remaining 14 cases considered by the CAFC in 2020 with respect to software patent eligibility.
Last year was an active one at the United States Court of Appeals for the Federal Circuit (CAFC) for software eligibility. It also was a brutal year for patent owners, as the CAFC invalidated almost every software patent on appeal for eligibility. Despite the many cases decided last year, there is still some uncertainty about what passes muster under the Alice two-step framework promulgated by the Supreme Court in 2014. But one thing that has become increasingly clear is that the CAFC wants to see how a particular result is achieved or how a problem is solved. This desire for a “how” or rule set from the claims creates an evident tension with the traditional notion that patent claims should recite structure, not functional language. These recent CAFC cases have also made it clear that courts will look to the specification for implementation details, even if these details do not emerge in the claims. This analysis has previously been reserved for the written description requirement under Section 112 but found its way into the Alice two-step.
In Eli Lilly & Co. v. Apotex, Inc., decided last week, the Federal Circuit affirmed a district court finding of infringement under the doctrine of equivalents. The patent at issue, U.S. Patent No. 7,772,209 (the ‘209 patent), relates to “a method of administering an antifolate to a mammal.” In addition to an effective amount of the antifolate, the claim recites administering an effective amount of a methylmalonic acid lowering agent. The patent claims cover using Lilly’s ALIMTA®, used to treat mesothelioma and certain types of lung cancer.