Posts Tagged: "patentable subject matter"

The Day One Project Examined: USPTO Transition Proposals Advocate Questionable PTAB, Section 101 Policies

Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.

Alice in 2020: Slashing Software Patents and Searching for Functional Language at the Federal Circuit (Part II)

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.

The Patent System is ‘Desperate’: American Axle Implores High Court to Take Up Eligibility Fight

American Axle & Manufacturing, Inc. filed a petition for certiorari with the U.S. Supreme Court on December 28, 2020, asking it to review the Federal Circuit’s July 31, 2020 modified judgment and October 2019 panel opinion in a closely-watched Section 101 patent eligibility case involving driveshaft automotive technology. The Federal Circuit has been sharply divided by the issues presented, leading Judge Moore to refer to the original panel’s analysis as “validity goulash” and to state that the “majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”

Illinois District Court Finds Appliance Controller Patents Ineligible under Alice/Mayo

On November 6, the Northern District of Illinois, Eastern Division, granted a motion to dismiss an infringement suit on the grounds that the patents in suit were directed to ineligible subject matter under 35 U.S.C. 101 in Karamelion LLC v. Intermatic, Inc. The court explained that although Karamelion’s solution may be a novel application of network communication to a particular problem, “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.”

Rently Makes Section 101 Bid to High Court

Consumer 2.0, Inc. d/b/a Rently has filed a petition with the U.S. Supreme Court asking it to review a U.S. Court of Appeals for the Federal Circuit decision holding its patent claims ineligible for patent protection under 35 U.S.C. § 101. The claims are directed to “the use of lockboxes able to recognize time-limited codes and coordination of those codes with software to facilitate secure automated entry.” Rently’s petition was filed just as the High Court kicked off its new term by denying certiorari yesterday in Chamberlain v. Techtronic, which also sought review of a Section 101 eligibility decision.

New Enablement-Like Requirements for 101 Eligibility: AAM v. Neapco Takes the Case Law Out of Context, and Too Far – Part I

With its recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020), and a 6-6 stalemate by the court’s active judges on whether to take the case en banc, the Federal Circuit has now adopted—under the rubric of 35 U.S.C. §101—a formalized set of enablement-like requirements for patent claims. For a simple “threshold” eligibility test, section 101 has grown remarkably complex. Indeed, since the Supreme Court’s 2012 Mayo and 2014 Alice decisions re-cast patent eligibility into a “two-step framework,” the Section 101 test adjudges not just subject-matter eligibility and the three “limited” exceptions thereto, but also patentability or “inventive-concept” challenges predicated on comparisons to the prior art, see 35 U.S.C. §§ 102-103. And now the enablement-type requirements imposed by AAM v. Neapco.

Techtronic Dismisses Chamberlain Petition to SCOTUS as ‘Nothing Important’

On August 7, Techtronic Industries filed a brief in opposition to The Chamberlain Group’s petition to the U.S. Supreme Court asking 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.’” Techtronic’s brief asks the Court to deny the petition, and presents the following two questions in the case it is granted: “1) Whether the Federal Circuit, on the particular facts of this case, erred in analyzing the claims as a whole and 2) Whether Chamberlain forfeited and is estopped from making its current arguments about the scope and preemptive effect of its claims in view of its inconsistent arguments below.”

Rethinking the Way We Patent Diagnostics

The 2012 Supreme Court decision in Mayo Collaborative Servs. v. Prometheus Labs changed the landscape for patenting diagnostic inventions in the United States. Patent eligibility/ineligibility in the United States stems from two sources: (1) 35 U.S.C. § 101, and (2) judicially-created exclusions, including laws of nature, natural phenomena, abstract ideas, and mental processes. In Mayo, the Supreme Court struck down method of treatment claims for being directed to a law of nature. While Mayo did not create this exclusion, it significantly expanded its applicability to diagnostic-based inventions. This paper explores Federal Circuit case law on patent eligibility of diagnostic-based inventions since the Mayo decision, as well as provides practical guidance on drafting diagnostic patent claims in light of these decisions.

Strong Roots: Comparative Analysis of Patent Protection for Plants and Animals

Much has been written about the uncertainty in U.S. patent law concerning laws of nature, natural phenomena, and abstract ideas following the Supreme Court’s decisions in Mayo v. Prometheus and Alice Corp Pty Ltd v. CLS Bank Int’l. A recent decision from the Enlarged Board of Appeal at the European Patent Office (the Enlarged Board), however, demonstrates that the United States is not alone in grappling with issues surrounding patent eligibility. In the case of genetically modified plants and animals, questions arise on where to draw the line between human invention and biological processes. Earlier this year, the Enlarged Board reversed a 2015 decision that had held that product-by-process patents could be sought for genetically modified plants and animals despite a patent exclusion for “essentially biological processes.” 

Illumina v. Ariosa: En Banc Rehearing Denied, Illumina Patents Again Upheld on Rehearing

On August 3, the United States Court of Appeals for the Federal Circuit (CAFC) denied a petition for rehearing en banc and issued a modified opinion, following a petition for rehearing filed by Ariosa in Illumina, Inc. v. Ariosa Diagnostics, Inc. Sticking closely to the reasoning of its March opinion, the CAFC reversed a decision by the United States District Court for the Northern District of California that claims of U.S. Patent Nos. 9,580,751 (the ’751 patent) and 9,738,931 (the ’931 patent) belonging to Sequenom and Illumina (Illumina) were invalid under 35 U.S.C. § 101 as being directed to an ineligible natural phenomenon.

CAFC Evenly Splits on En Banc Rehearing of American Axle’s Driveshaft Patent Case

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued Orders granting a request for panel rehearing and denying a request for rehearing en banc in response to a joint petition filed by American Axle & Manufacturing (AAM). The CAFC also issued a precedential modified opinion of its October 3, 2019 opinion in American Axle & Manufacturing v. Neapco Holdings. In the Order Denying Rehearing En Banc, Judges Newman, Moore, O’Malley, Reyna, Lourie and Stoll dissented from the denial of rehearing en banc. Each of Dyk, Chen, Newman, Stoll and O’Malley wrote separately.

Federal Circuit Affirms District Court’s Eligibility Analysis, Reyna Dissents

On July 14, the United States Court of Appeals for the Federal Circuit, with Judge Lourie writing for the majority, affirmed-in-part and vacated-in-part a decision of the United States District Court for the Eastern District of Texas in Packet Intelligence, LLC v. NetScout Systems, Inc. The CAFC affirmed the district court’s judgments on the issues of infringement, invalidity, and willfulness, but reversed with respect to pre-suit damages. Judge Reyna wrote separately, dissenting on the issue of patent eligibility under Section 101.

CAFC Decision in CardioNet Should Make More Accurate Diagnostics Patentable

A strategy for the COVID-19 pandemic is testing for antibodies to determine possible immunity. Such diagnostic tests may suffer from a high false positive rate. Improving accuracy is therefore desirable. However, the U.S. Patent and Trademark Office (USPTO) is generally not receptive to diagnostic claims that improve accuracy. The recent case of CardioNet v. Infobionic, makes patenting more accurate diagnostics easier. CardioNet considered whether a more accurate cardiac monitoring device was eligible. Claim 1 recites a device that detects abnormal heart rhythms (atrial fibrillation or atrial flutter) in a patient. The district court held that the claims were directed to an abstract idea of identifying atrial fibrillation or atrial flutter “by looking at the variability in time between heartbeats and taking into account ventricular beats.” The Federal Circuit reversed and held an improved cardiac monitoring device was not an abstract idea.

Amici Implore Supreme Court to Take Up Chamberlain Petition

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.

An Emerging Section 101 Expansion to Section 112(a) Enablement? The Federal Circuit Should Stop It Now

The most dominant, divisive issue in patent law over the last decade—Section101-eligibility and the Supreme Court’s Mayo-Alice framework—appears to have just become more divisive. Indeed, at least part of the reason for the controversy is that, with Mayo-Alice as the governing test, courts as a preliminary matter can decide Section101-eligibility based on considerations of an “inventive concept” and patentability—issues the Court once declared were “not relevant” to the separate eligibility provision of the Patent Act. Be that as it may, the Federal Circuit has recently issued certain decisions indicating that Section 101 now incorporates another vast area of invalidity; viz., the requirements for “enablement” under 35 U.S.C. §112(a). See, e.g., Customedia Technologies, LLC v. Dish Network Corp., 951 F.3d 1359, 1365-66 (Fed. Cir. March 6, 2020). In this article, we examine how this new requirement for Section 101 has emerged, the recent precedent on the issue, and the Patent Act’s requirements that undermine such Section 112(a) considerations for a Section 101-eligibilty test.