Section 101 Patent Eligibility Roundup: A Senate Hearing, a New Cert Petition and More

There Was a Senate Hearing, and I Watched It, So You Don't Have to

The Senate on Jan. 23, 2024, held a hearing to consider the Patent Eligibility Restoration Act (PERA), the proposed legislation introduced by Sens. Chris Coons (D-Del.) and Thom Tillis (R-N.C.). Tillis noted that though legislation is not always the best fix, he believes "we reached a point where legislation is needed as a result of a series of U.S. Supreme Court decisions." Both senators spoke of the law being unclear, and Tillis specifically referenced confusing law hindering U.S. innovation in "new and emerging technologies" such as precision medicine, quantum computing, artificial intelligence and 5G wireless.

The hearing included a slew of witnesses. Though most of the witnesses supported the proposed legislation, or at least supported the idea of patent eligibility reform, there was pushback. Some notable takeaways include:

• Andrei Iancu (former U.S. Patent & Trademark Office (USPTO) Director) was unsurprisingly supportive of patent eligibility reform. He stated that the "current system is not working well … We don't know what the courts will hold for the next invention … We have great unpredictability in the court system."
• Richard Blaylock (appearing as counsel for Invitae Corp.) disagreed with the panel's common refrain of unpredictability. He said that there is a "substantial degree of predictability," and that "right now things are operating well, not poorly." He further stated that those who object to the status quo simply have a different policy outcome in mind. Their disagreement is not a "functional disagreement, but a policy disagreement … and the status quo is practicable, manageable and serving the country well."
• Adam Mossoff (law professor at Antonin Scalia Law School, George Mason University) cited statistics emphasizing the "drastic" change in courts finding patents ineligible after the 2014 Alice Corp. v CLS Bank International decision. He said the Alice "inquiry caused a revolution in U.S. patent law … and these unprecedented high rates of use of Section 101 have created a quagmire." At best, he said, there is uncertainty. At worst, there is certainty that novel inventions will be found ineligible under the current case law.
• David Kappos (former USPTO Director) argued that there is uncertainty with patent eligibility, and this is hindering investment and innovation in the U.S.
• David Jones (Executive Director, High Tech Inventors Alliance) made three points: 1) The current law does provide predictability, 2) PERA could make almost any activity patent eligible under PERA's proposed language and 3) there are alternatives available, including focusing on an advancement on technology.

The hearing lasted two hours. You can view Part 1 and Part 2. And if you have not been watching hearings recently, C-SPAN includes the ability to filter by speaker and search text.

You can read this blog's earlier post on the PERA, as well as Ryan Davis's Law360 article on the hearing.

We Have Another Cert Petition to Follow

Ficep is the latest party to ask the U.S. Supreme Court to address Section 101 patent eligibility. Ficep's patent, U.S. Patent No. 7,974,719 ('719 patent) relates to the "automatic manufacture of an object based on automatic transmission of a three-dimensional rendering of the object, such as a rendering from a CAD to an assembly line for manufacture."

At step one, the U.S. Court of Appeals for the Federal Circuit found that the claims were directed to the abstract idea of "extracting and transferring information from a design file to a manufacturing machine." The court noted that "while the '719 patent eliminates human error by automating the data transfer step, this type of improvement does not make the claims patent eligible."

At step two, the Federal Circuit agreed with the U.S. District Court for the District of Delaware's finding that "beyond the abstract idea, claim 7 recites generic, conventional elements of a computing device, a programmable logic controller, a receiver, a database unit, a processor, a transmitter, and a manufacturing machine."

Ficep argued that identifying intersection parameters from a CAD model was unconventional, but the Federal Circuit disagreed: "Adding data to a CAD model and then identifying that data is an abstract idea … neither the claims nor the specification explain the process for obtaining the intersection parameters from the design model and leave open the possibility that a human determines the intersection parameters …"

Ficep, in its petition, argues that the appellate court, "or at least some of its panels," searches for "some underlying essence of the invention … and then decides whether that level of abstraction is too high to be patent-eligible." Ficep says this cannot be the law. The entire petition is interesting and worth a read.

But will the Supreme Court take it up? If you're one of the four habitual readers of this blog, you already know my answer.

The Federal Circuit found Claim 7 to be representative (the patent is here). Read Dennis Crouch's Patently-O analysis of the petition and Kelly Lienhard's Law360 story. The case is Ficep Corporation v. Peddinghause Corporation, No. 23-796 (view the docket and petition).

Miscellany

Let's take a look at my open tabs.

• The IP/Decode Blog: I want to highlight a couple of recent IP/Decode posts. If you're interested in how technology and intellectual property work together, this blog is a must-follow.
  • The Coming Shift from Patent to Trade Secret Protection for Generative AI Inventions
  • Generating a Body of Generative AI Case Law
• How Obvious Is Obvious? Dennis Crouch at Patently-O reviews a new cert petition, asking the Supreme Court to assess whether obviousness requires a showing of "predictable" results or if a "reasonable expectation of success" is sufficient.
• Good News. Derek Thompson (The Atlantic) writes about The Nine Breakthroughs of the Year. You'll guess some of them – GLP-1s, ChatGPT – but he also looks at fusion, engineered skin bacteria and malaria vaccines.
• Venice Is Saved! Woe Is Venice. Jason Horowitz, Emma Bubola and Laetitia Vancon (The New York Times) look at MOSE, an Italian acronym for Experimental Electromechanical Module, which is a project of flood barriers intended to protect Venice, Italy. It's a fascinating story of an engineering project that has become so much more, accompanied by wonderful photos and videos.
• Oscar Season. It's nearly time, and I still have a lot of movies to watch. But I'm almost ready to make my Best Picture call: "Oppenheimer." Lots of momentum for "The Holdovers," but I won't hear it. Here are Variety's predictions.
• Go Blue! It's been three weeks since Michigan won the national championship, so here are some links to relive the excitement.
  • Full game highlights.
  • A three-hour-plus MGoBlog podcast.
  • Two MGoBlog posts: The Edge of Space and Take Us Home. (Honestly, if you're a Michigan fan and you're not reading MGoBlog, what are you even doing?)

As always, thanks for reading and please email with any thoughts, comments, movie suggestions, or just to say "Go Blue!"