PATENTS
Why patent eligibility is ripe for SCOTUS review
A new case has only added to the clamour for clarity on Section 101, says Phil Harris of Holland & Hart.
In yet another interesting patent eligibility case, the Supreme Court has once again requested input and insight from the US Solicitor General.
The patentee in Tropp v Travel Sentry obtained claims directed to “[a] method of improving airline luggage inspection by a luggage screening entity”.
The claims included features of “making available to consumers a special lock having a combination lock portion and a master key lock portion”, and “marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity [eg, the Transportation Security Administration (TSA)]”, among others.
This call for Solicitor General comments is significant because this is now the third recent patent eligibility case with such a request from the court.
Second opinion
The other recent cases include American Axle v Neapco and Interactive Wearables v Polar Electro. First, in a somewhat disappointing, although not too surprising decision, the court in American Axle denied cert in June this year despite the federal government’s strong support of hearing the case to clarify Section 101.
”This call for Solicitor General comments is significant because this is now the third recent patent eligibility case with such a request from the court.”
Phil Harris
There, the government even provided the justices with multiple lines of reasoning to take up the case due to the technology at issue—methods of manufacturing propshafts with mechanical liners—by explaining “[i]ndustrial techniques [such as those claimed in American Axle] have long been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may” be protected, and that the court should be “sceptical” of any assertion that claims traditionally viewed as patentable (such as those in American Axle)—are ineligible under § 101.
Second, not even four months after denying cert in American Axle, the Supreme Court again requested the Solicitor General’s take in Interactive Wearables, a case focused on consumer electronics. One of the wrinkles raised in Interactive Wearables that was not directly presented to the Supreme Court in American Axle (although raised vehemently by Judge Kimberly Moore in her Federal Circuit dissent) is the intersection of Section 101 and Section 112 enablement. This was the third question presented: “Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?”
In October, the court again requested the government’s view on eligibility in Tropp. If Tropp were one of the cases, if not the only case, taken up by the court, it provides an opportunity for the High Court to clarify the judicially-created “abstract idea” exception to eligibility—which has plagued many patents and patent holders—and to clarify the application of Section 101 to simpler, mechanical technology (here the dual-access airline luggage locks and related techniques) outside of the “computer” and “software” contexts.
This third request for federal government comment against the backdrop of two now-concurrent outstanding requests coming just weeks apart is significant in showing the High Court’s potential propensity to hear—and hopefully clarify—its Section 101 jurisprudence, which most believe desperately needs to provide more certainty.
”Other stakeholders have been turning up the heat on patent eligibility in the wake of the cert denial in American Axle.”
Demands for clarity
Other stakeholders have been turning up the heat on patent eligibility in the wake of the cert denial in American Axle. First, Congress—ie, senators Thom Tillis and Chris Coons—has reignited efforts to reform the law on Section 101 by proposing and supporting, respectively, the Patent Eligibility Restoration Act, which is designed to nullify multiple Supreme Court rulings and clarify this legal area.
Second, the US Patent and Trademark Office—under the active leadership of director Kathi Vidal—has indicated a potential desire to revamp the 2019 patent eligibility guidance (PEG), with public comments closing in mid October (that request for comments, if nothing else, again showed a desire for increased clarity about Section 101).
Third, groups outside the government—including the Council for Innovation Promotion—are actively attempting to counteract the lobbying and potentially misleading narratives of big tech and others opposing Section 101 reform. This council, led by former USPTO directors Andrei Iancu and David Kappos and retired US Court of Appeals for the Federal Circuit Chief Judge Paul Michel and Judge Kathleen O’Malley, aims to educate about the ways that IP benefits the public and provide bipartisan unified support for IP rights. In October this council provided various congressional committees—and by extension the public—with a letter responding to false assertions that the Patent Eligibility Restoration Act would allow for patenting of human genes.
Given the red-hot attention that patent eligibility has been receiving from various sources in recent months, the Supreme Court’s continued interest and concurrent requests for government comments suggest the time is ripe for the Court to revisit patent eligibility issues.
Phil Harris is a partner at Holland & Hart. He can be contacted at: pwharris@hollandhart.com
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