Posts Tagged: "Section 101"

CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University earlier this week filed a petition for certiorari with the U.S. Supreme Court asking the justices to review a 2022 decision holding certain claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient patent ineligible.

A manufacturer of Radio Frequency Identification Device transponders (RFIDs), Avery Dennison Corporation, yesterday petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for RFID technology as patent eligible. Avery Dennison is urging the Court to take up the case, which it says “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate, in order to balance competing perspectives. While past and present petitions to the Court on eligibility have traditionally focused on uncertainty due to the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the view that the Federal Circuit’s reading of 101 is too broad.

Over the last 15 years, the United States Supreme Court has mutated patent eligibility into an impossibly complex and confusing mess. The Court’s current eligibility test strays far from Congress’s original intent, erodes trust in predictability, and has left many remarking that innovation in the United States is falling behind due to uncertainty of patent eligibility law. Even more troubling, the resulting uncertainty of patent ineligibility for large swaths of innovation in critical technology areas, including artificial intelligence, poses significant risks to U.S. competitiveness, economic growth and national security. The Court has had opportunities to rectify its patent sinkhole but recently declined another chance to mend the chaos. When the Court denied certiorari in American Axle v. Neapco—despite the Solicitor General’s plea to hear the case—it became clear that Congress must step in to rescue U.S. innovation.

On November 4, the U.S. Patent and Trademark Office (USPTO) hosted a webinar regarding the agency’s recent request for comments (RFC) on initiatives that the USPTO is exploring to enhance the robustness and reliability of patent rights issued by the agency. While the USPTO senior legal advisors moderating the webinar indicated that the agency was interested in hearing all viewpoints, the types of initiatives being considered could lead one to believe that ensuring robust and reliable patent rights means encouraging fewer U.S. patent filings.

On November 1, Representative Jim Jordan (R-OH) sent letters to several federal agency heads, including Kathi Vidal, Director of the U.S. Patent and Trademark Office (USPTO), asking those officials what their agencies had done to respond to the U.S. Supreme Court’s mandate in West Virginia v. Environmental Protection Agency decided this June. While Jordan’s letter is clearly responding to political developments during the Biden Administration, West Virginia has garnered interest among some patent industry stakeholders responding to recent USPTO rulemaking surrounding subject matter eligibility under 35 U.S.C. § 101.

The current unreliability of patent-eligibility law, documented thus far here, here and here, has also created undue burdens on litigants and the courts. In this final installment, we detail how the current unreliability burdens litigants and the courts and how it is a fundamental threat to U.S. competitiveness and national security. Patent infringers now routinely raise Section 101 as a defense, often merely as a strategy to complicate and prolong the litigation, rather than as a good-faith defense with a likelihood of success. For example, one analysis found that, from 2012 to 2014 (when Alice was decided), Section 101 was raised in just two Rule 12(b)(6) motions across the country each year. In the year after Alice, that number rose to 36 motions, and by 2019, accused infringers were filing over 100 such motions each year.

Alice Corp v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) sent rejections under 35 U.S.C. § 101 skyrocketing from under 10,000 per year prior to the Alice decision to nearly 35,000 the year the Supreme Court handed down its decision (2014). Peaking at just over 100,000 rejections in 2018, the USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) helped to stabilize and ultimately lower the number of rejections under Section 101 to just over 20,000 in 2021. Though this number may continue to drop – the data on Section 101 rejections for 2022 is not yet complete – one thing is for sure: The number of rejections under Section 101 post Alice still far outnumber the Section 101 rejections made prior to Alice by at least 10,000 per year. As illustrated in Fig. 1 (data gathered using juristat.com), the majority of rejections under Section 101 made since 2014 are still Alice rejections, which leaves room for this number to decrease further.

The United States Patent and Trademark Office (USPTO) would like public comments on how to update the 2019 Subject Matter Eligibility Guidance. The agency is also seeking comments on how to improve the robustness of the patent system overall. This article/video is in (unofficial) response to both of these requests for comments. The current mess surrounding subject matter eligibility in the United States is an offspring of a much deeper problem in patent law, which is that there is practically no standardization in patent practice. In medicine, U.S. doctors are trained by standardized practices through rotations and residency programs such that when they begin practicing, a doctor graduating in Florida will not practice medicine vastly different from a doctor graduating from medical school in California, for instance. Instead, the idea is that all the graduates will approach medical treatment in a standardized way so that the public has a lot more faith in the medical community.

In early August, Senator Tillis (R-NC) proposed legislation called the Patent Eligibility Restoration Act of 2022, (S. 4734). US Inventor wrote a response to this legislation showing how it will destroy already damaged patent protection for U.S. software inventors and startups. Included in this destruction will be some of the most important inventions to U.S. technological development, economic growth and national security, like artificial intelligence, security systems, block chain, quantum computing, and much more, including anything that could compete with Big Tech’s core technology.  This legislation is dangerously misguided. In a recent interview with IP Watchdog, Tillis was asked about some of the fatal concerns we identified in our response. Tillis brushed those concerns off by saying that he doesn’t want to hear complaints without solutions.  Fair enough. 

On August 3, Senator Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2022, S.4734, which would amend the U.S. Patent Act to clarify the patent eligibility of certain technologies under 35 U.S.C. Section 101. Few would disagree that the current state of eligibility jurisprudence is in “abysmal shambles”, and recognizing that U.S. eligibility law needs changing comes from both side of the aisle, as Senator Chris Coons (D-DE) has long questioned the court-made exceptions to patent eligibility….. I have extensively followed the developments of 101 jurisprudence in the courts and the efforts of those in Congress to enact statutory changes to Section 101. In so doing, I have contemplated how Section 101 could be improved, and thus my proposal regarding how to revise the statutory language follows.

Following U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s blog post in July explaining that she will be revisiting the Office’s 2019 subject matter eligibility guidance, the USPTO today announce a September 1 Federal Register Notice requesting public comments on the existing guidance. The Notice explained that “given the overwhelming interest in the guidance, the USPTO will now accept feedback via the Federal eRulemaking Portal until October 15, 2022.”

On August 5, US Inventor and Eagle Forum Education & Legal Defense Fund (Eagle Forum ELDF) jointly filed an Amicus Brief supporting inventor David Tropp’s petition for a writ of certiorari to the U.S. Supreme Court (SCOTUS) regarding whether Tropp’s method claims are patent-eligible under 35 U.S.C. 101. Tropp owns two patents relating to luggage lock technology that enables airport screening of luggage while still allowing the bags to remain locked. In July, just days after the Court denied cert in American Axle, Tropp asked the High Court to answer the question: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101, as interpreted in Alice Corporation Pty v. CLS Bank International, 573 U.S. 208 (2014).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the Patent Trial and Appeal Board (PTAB) correctly rejected a patent applicant’s reissue claims as “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution.” The opinion, authored by Judge Cunningham, explained that John Bradley McDonald, who is named as the inventor on U.S. Patent No. 8,572,111, amended claims 1-9 and 19-21 following an examiner’s rejection of them as patent ineligible, since they were not tied to a processor for conducting the claimed searches. McDonald added “a processor” to certain claim limitations in order to meet the requirement for tying the methods described by the patent to a particular machine and the examiner ultimately withdrew the Section 101 rejection.

In U.S. government, setting public policy is the sole and exclusive domain of Congress. The laws they pass effectuate the public policy positions that Congress alone has the power to set. In law, words are everything. The precise meaning of the words in law determines whether the public policy is implemented as intended by Congress. Altering the meaning of just one word can change the entire public policy set by Congress, even turning the public policy on its head. Anyone following the debate on patent eligibility can attest to how the Supreme Court’s redefinition of the word “any” in 35 U.S.C. § 101 to have an exception called an “abstract idea” caused a significant public policy change and that change destroyed countless startups, especially those in tech. Senator Tillis’ Patent Eligibility Restoration Act of 2022, S.4734, wrongly puts the courts in charge of defining public policy because it leaves key words completely undefined.