Is “…disparate and inconsistent application…” of Section 101 of the patent laws leading to “…an unpredictable and unstable…” patent system?
YES. This is according to former USPTO Director David Kappos, former Federal Circuit Chief Judge Paul Michel, and Senator Thom Tillis from North Carolina, who all agree that something needs to be done to make the application of Section 101 of the Patent Act more predictable.
According to a court in SecureNet Solutions Group, LLC v. Senstar Corp., No. 19-cv-02913, 2020 WL 2557625, at * 9 (D. Colo. May 20, 2020) “Determining whether a claim is directed at an abstract idea, and is therefore not patent eligible under § 101, seems almost like the ‘know it when I see it’ definition of obscenity, but transposed to the patent context.”
Not Good!
The court in United Cannabis Corp. v. Pure Hemp Collective Inc., No. 18-cv-1922, 2019 WL 1651846, at *5 (D. Colo. Arp. 17, 2019) opined that “[T]he proper application of the … Alice standard is an evolving and sometimes hazy area of law. Deciding whether a patent claim is ‘directed to’ a law of nature is not as straightforward as the Supreme Court makes it sound in Alice itself.”
Not Good!!
The appellate court opined in Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1354-55 (Fed. Cir. 2018) (Plager, J., concurring-in-part and dissenting-in-part) “There is little consensus among trial judges (or appellate judges for that matter) regarding whether a particular case will prove to have a patent with claims directed to an abstract idea, and if so whether there is an ‘inventive concept’ in the patent to save it.”).
In Location Based Servs., LLC v. Niantic, Inc., Case No. 17-cv-04413 NC, 2018 WL 7569160, at *2 (N.D. Cal. Feb. 16, 2018), a district court judge opined that “The law under 101 is developing and quickly changing, and the question of whether a patent is directed at an abstract idea or whether it discloses an innovative concept is not easy to answer.”
Not Good!!!
The court in YYZ, LLC v. Pegasystems, Inc., Civ. No. 13-581-SLR, 2016 WL 1761955, at *1 (D. Del. May 2, 2016) opined that “[T]he 101 analysis is an evolving state of the law and a difficult exercise[.]”
You get my point, yes?
You might remember that the appellate court originally split 6-6 on whether to hear the American Axle case en banc, leaving the last chance for review of the eligibility of certain claims of this axle patent up to the Supreme Court of the United States. but the highest court has been hands off as lower courts struggle to apply its “Alice” framework.
If its hard for a court with a fully developed record before it to determine patent eligibility, you might imagine that it is nearly impossible for patent examiners and practitioners to do so without the benefit of experts, claim interpretation hearings and more.
Right now, it is difficult to find any reason why one type of claim is patentable and another not — at least not based solely on precedent. The patent system is broken for many types of patented technologies, and it seems to be spreading to more inventions. Alice needs to be tamed either by the courts or by Congress.
As for American Axle’s claims, a new district court judge, Judge Gregory B. Williams, revisited the claims at issue after the Court of Appeals for the Federal Circuit reversed itself and remanded some of the claims to the district court for further reconsideration. Judge Williams ruling relied on precedent in Diehr, which was never expressly overturned by any court, and this might give a ray of hope to those looking for a patent eligibility foundation that is more than shifting sand. However, there is reason to be pessimistic, if not entirely cynical, as the original judge that found American Axle’s claims patent ineligible, Judge Stark, was replaced by Judge Williams after Judge Stark was elevated to the Court of Appeals for the Federal Circuit, which will be the court called upon to hear an appeal of Judge Williams’ reasoned opinion.
Stay tuned here for updates.
