Supreme Court on Section 101 Patent Eligibility: Thanks But No Thanks

The U.S. Supreme Court conferred on two patent eligibility cases last week. And, if you are like me, you did not sleep a wink while anxiously awaiting the Court's decision.

But if you're reading this, you likely already know that the Supreme Court again declined to weigh in on patent eligibility despite the U.S. Solicitor General (and the U.S. Patent and Trademark Office) urging the justices to hear two pending patent eligibility decisions: 1) Tropp v. Travel Sentry et al., and 2) Interactive Wearables v. Polar Electro Oy, et al.

Some Thoughts on Interactive Wearables

The Supreme Court made the right decision on Interactive Wearables. It is unnecessary to rehash all of the arguments as to why the lower courts got the Interactive Wearables decision correct and why this case was a poor vehicle to address any patent eligibility concerns. (Disclaimer: the author is quite biased because Holland & Knight, including the author, represented the respondent in Interactive Wearables v. Polar Electro.) This case is now behind us, along with the pile of other patent eligibility cases the Supreme Court has disregarded.

But the Solicitor General's argument in support of review still interests me. The Solicitor General presented its arguments as a way for the Supreme Court to reconcile Interactive Wearables with the Supreme Court's precedents, namely Alice. But, from my read, the Solicitor General was actually asking the Supreme Court to discard its precedents. I found this excerpt telling:

The scope of the abstract-idea exception may be further clarified by what it does not include. An automobile is not an abstract idea. A remote control is not an abstract idea. A camera is not an abstract idea. (See here at p. 14.)

Again, this is only my read, but Solicitor General's focus is on the physical aspect of the claimed invention. Our view, as expressed in the supplemental brief, was that the Supreme Court addressed this head-on in Alice:

There is no dispute that a computer is a tangible system (in § 101 terms, a 'machine'), . . . But if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. (See here at p. 8.)

If this read was correct, it should not be surprising that the court would reject the Solicitor General's argument since its ask was to basically discard recent precedent – and precedent supported by the majority of the current justices. There are only four new justices since the 2014 Alice decision, and it would likely take all four of those justices to vote yes on the petition. (Justice Brett Kavanaugh would have granted the petition.)

Patent Eligibility – What Now?

The Solicitor General has suggested that the Supreme Court review patent eligibility a number of times recently, including the closely watched American Axle case last year. The Supreme Court has, however, denied cert in all of these cases.

While the Supreme Court has an apparent interest in patent eligibility based on consistently asking for the Solicitor General's opinion, it may simply be a numbers game on votes with five Alice justices still on the bench. There are a couple petitions still outstanding, including in the CareDx v. Natera case, but I would be surprised to see the court grant cert on patent eligibility in the near term.

So, if you are someone who wants to see patent eligibility law constrained, narrowed or just reassessed, your best bet is likely with patent eligibility reform. And the good news for you is that Sens. Chris Coons (D-Del.) and Thom Tillis (R-N.C.), along with Rep. Hank Johnson (D-Ga.), have all recently expressed "optimism" for patent eligibility reform. That said, I have also expressed skepticism on whether patent eligibility reform actually goes anywhere in the near future.

As always, thanks for reading, and please email with any thoughts or comments.