Mcle Self-study Article

• Jurisdiction: United States,Federal
• Citation: Vol. 43 No. 1
• Publication year: 2018
• Author: D. Benjamin Borson
• topic: Patent law,Intellectual Property

MCLE Self-Study Article

D. Benjamin Borson

Borson Law Group P.C.

PATENT ELIGIBILITY, CATCH ME IF YOU CAN

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

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Disclaimer

This article is intended for informational purposes only, and is not to be relied upon for any legal matter. If you have a question regarding patent eligibility, consult your attorney.

Introduction

According to 35 U.S.C. § 101, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

This portion of the patent act has remained unchanged since its incorporation in 1952. However, the Supreme Court has interpreted § 101 to exclude "laws of nature, natural phenomena, and abstract ideas." The Supreme Court rendered decisions in Mayo v. Prometheus (laws of nature), and Alice v. CLS Bank (abstract ideas), explaining that inventions contained in the underlying patents are fundamental building blocks that cannot be removed from the public.

These two cases have been used to derive a "two-step" process for determining whether a claim is eligible for patenting. In the first step, the court determines whether the invention is "directed to" patent eligible subject matter (process, machine, manufacture, or composition of matter). If the decision is "yes," then the claim is considered drawn to patent eligible subject matter. If the answer is "no," then the court proceeds to step 2, to consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim into a patent eligible application. Step 2 is satisfied if there are additional elements in the claim that represents an "application" of the ineligible subject matter having sufficient additional limitations to provide "substantially more," "markedly different" and an "inventive concept" sufficient to render the claim patent eligible. The Supreme Court did not define "substantially more," "markedly different," or "inventive concept."

There have been many decisions rendered by district courts, the Court of Appeals for the Federal Circuit, and the USPTO Patent Trial and Appeal Board (PTAB), attempting to apply the general statements of the Supreme Court decisions in Mayo and Alice. Since the decisions in Mayo and Alice, practitioners and inventors, the courts and the USPTO have worked to analyze patent applications and claims and interpret or render decisions.

Efforts by patent applicants and practitioners have generally not been very productive, and the Mayo and Alice decisions have encouraged those interested in invalidating patents in software, diagnostics and other areas to file Declaratory Judgment motion suits before district courts, and since the passage of the America Invents Act (AIA) in post-grant opposition and inter partes review (IPR) proceedings before the PTAB.

In addition to the undefined terms used by the Supreme Court, another reason for the continuing lack of clarity about patent eligibility stems from the different standards applied by the USPTO and the courts. Being in separate branches of government, there is no requirement that the standards be the same. In court proceedings, claims are "construed" meaning that the court will look into the claims themselves, the application, and the prosecution history to understand the scope and meaning of the claim. Once a claim is construed, the court will presume the claim to be valid and will determine whether a challenger (alleged infringer) provides sufficient evidence of invalidity by substantial evidence. In contrast, under the AIA, the USPTO may review a claim without a presumption of validity, and requires only that the evidence for invalidity meet the preponderance of evidence standard.

The courts have also wrestled with the question of whether § 101 is a "pure matter of law" to be decided by the tribunal. According to one view, § 101 is a "threshold" matter, requiring no claim construction or detailed understanding of the application. Under this idea, a court or USPTO Examiner may simply declare the subject matter to be ineligible for patenting. Under such circumstances, a patent applicant may try to limit the scope of the claim by introducing limitations that would not "preempt the entire field." This approach has been limited by the USPTO and courts holding that the "additional elements" are "well-understood, conventional, and routine," thereby holding that there is no "inventive concept" sufficient to render the claim patent eligible.

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Recent Decisions

There have been a few recent cases addressing the uncertainty about patent eligibility. This article will review three cases, two of which are related to software inventions, and another relating to "natural laws."

Each of these decisions rests on the idea that although patent eligibility is a matter of law, there are underlying facts pertinent to the analysis.

Steven Berkheimer ("Berkheimer") v. HP Inc., FKA Hewlett-Packard Company ("HP"), Slip Op. 2017-1437 (Fed. Cir. 8 February 2018).

Berkheimer sued HP for infringing claims 1-7 and 9-19 of U.S. Patent No. 7,477,713 (the '713 patent). HP filed motions for summary judgement alleging that Claims 1-7 and 9 are ineligible under 35 U.S.C. § 101, and that claims 10-19 are invalid as indefinite. The district court granted the § 101 motion, and further held claims 10-19 to be indefinite. Berkheimer appealed.

The Invention

According to the court, "[t]he '713 patent relates to digitally processing and archiving files in a digital set management system.... The system parses files into multiple objects and tags the objects to create relationships between them...This system eliminates redundant storage of common text and graphical elements, which improves system operating efficiency and reduces storage costs." Slip. Op. at 2. "The relationships between the objects within the archive allow a user to 'carry out...