Missing Facts for § 101 Jurisprudence

By: Maureen Abbey

Inventors have been running to the Patent Office for decades hoping to protect their ideas on new technologies, and new uses of technology in a variety of fields. The recent development in the law and application of 35 U.S.C. § 101 to invalidate patents is an unprecedented, aggressive use of this statute by the courts that targets patented technology and its applications. Section 101 has historically been treated and applied as an initial, threshold inquiry to ensure the subject matter of a claim does not fall within one of the non-statutory subjects: law of nature, natural phenomenon, or abstract idea. The more rigorous, and time-consuming test of patentability under Sections 102, 103 and 112 of the Patent Laws have typically been applied with more scrutiny and factual considerations in analyzing validity of the claim(s) in issue.

The judiciary is now applying a broader application of Section 101 than is (and was) applied during prosecution before the PTO. The USPTO has responded to recent case law by issuing “interim patent guidelines” with each new development.[1] However, the most recent PTO Guidelines[2] are not applied to claims consistently by the PTO (internal inconsistencies which it is admittedly working to rectify). The Guidelines are also in direct contradiction to the judiciary’s Section 101 analytical framework as it exists today. The result is this: the courts are invalidating patents under Section 101, and the PTO is still allowing claims that do not appear able to withstand the scrutiny of the judiciary under current law. There is a disconnect between the PTO (and the Guidelines within which it operates), and the courts’ approaches to the Section 101 analysis.

By way of example, the current Guidelines, published on December 16, 2014, set forth the Mayo Test,[3] and include a detailed discussion to guide practitioners, litigators and the public alike, in wrestling with the new-found interpretation of Section 101 from Alice Corp. v. CLS Bank Int’l.[4]

The Guidelines include a short summary of fact-based analyses from prior cases as examples in how to approach the Section 101 analysis under current case law. Even where the Guidelines provide further definition of the second step of Mayo and the question of whether the claims include “significantly more”[5] than the judicial exception, there is still no understanding of the role of facts in the analysis during prosecution. There are no guidelines for how the courts are to consider facts in this analysis. After having reviewed a number of recent judicial decisions invalidating claims under Section 101, there are many parts of the Section 101 analysis that make unclear the role of the claim language, the specification, the file history, and claim construction(s). While the analysis requires a determination as to whether the claim covers an improvement to a technology, there is no understanding as to the role of facts in the analysis, and whether expert evidence or testimony would be, or should be (in certain circumstances) considered. By not making an evidentiary record in the Section 101 analysis, the court(s) are apt to use hindsight, and perhaps rely upon evidence not in the record. As much as it is rudimentary to Patent Law that the claims’ validity is determined in the context of prosecution history and the state of the field at the time of the invention, none of the court’s Section 101 analyses require this. The courts’ silence on these issues weakens the current legal framework for issuing patents.

Another inconsistency between the PTO and the judiciary is the role of claim construction in a Section 101 analysis. The PTO’s Guidelines start out with reference to the examiner’s approach in “reviewing the entire application disclosure and construing the claims” under MPEP 2103.[6] In contrast, the courts do not need to construe the claims before deciding whether the claims meet the requirements of § 101.[7] Nor are the courts bound to follow the MPEP.

The PTO and the public are wrestling with the inherent contradictions that are part of the overly broad application of Section 101. Claims that appear otherwise patentable when viewed with additional facts such as normally considered under Section 103 (Graham Factors) are being invalidated under Section 101 with no apparent factual basis or evidentiary record. Many courts are issuing opinions that appear conclusory, and premised on a reading of the claims without consideration of the specification, file history, or the state of the art at the time of the invention.[8] Although Judge Rader provided guidance on the approach to testing a claim’s patent eligibility under Section 101 prior to Alice Corp., that approach is ignored under current law.[9]

The result is that the courts are left to determine on a case-by-case basis what facts could be relevant, or necessary for it to consider (or ignore) in a Section 101 analysis. The use of hindsight in the court’s approach to determining claim patentability is inescapable. The tumultuous landscape of Section 101 uncertainty is leading to the swift invalidation of patents through the judicial process. There is no consideration of a patent’s statutory presumption of validity, nor to the other sections of the Patent Laws.

There is no denying that the underlying technical facts pertinent to the claimed invention, as set forth in the specification, and the technology of the state of art at the time of the invention, are all relevant to any conclusion as to whether the claimed invention meets any one of those six exemplary considerations of “significantly more” enunciated by the PTO in its Guidelines, and referenced by the Supreme Court in Alice Corp. The courts need to incorporate a factual inquiry methodology into the Section 101 analysis to ensure the integrity of the U.S. patent system is not undermined by overly-broad interpretations of the law.

[1] Even now, the PTO is still searching for uniformity for Section 101 Guidelines.

[2] 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014) [hereinafter Guidelines].

[3] Under the Mayo Test, an analysis is performed to first determine whether the claim is directed to a process, machine, manufacture or composition of matter, and secondly, whether a judicially-recognized exception applies. A law of nature, a natural phenomenon, or an abstract idea (judicial exceptions). If the answer is yes to the second step, then one must determine whether the claims recite additional elements that amount to significantly more than the judicial exception.

[4] 134 S.Ct. 2347 (2014).

[5] The Guidelines provide the following explanation of what may qualify as “significantly more”:

The Supreme Court has identified a number of considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself. The following are examples of these considerations, which are not intended to be exclusive or limiting. Limitations that may be enough to qualify as ‘‘significantly more’’ when recited in a claim with a judicial exception include:

  • Improvements to another technology or technical field;
  • Improvements to the functioning of the computer itself;
  • Applying the judicial exception with, or by use of, a particular machine;
  • Effecting a transformation or reduction of a particular article to a different state or thing;
  • Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
  • Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.

Guidelines, 79 Fed. Reg. at 76424 (internal citations omitted).

[6] Id. at 74622.

[7] Intellectual Ventures I LLC v. Mfrs. and Traders Trust Co., case no. 13-cv-1274- SLR, (D. Del. Dec. 18, 2014) (“The Federal Circuit has “never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility”) (citing Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed. Cir. 2011), vacated sub nom., WildTangent, 132 S.Ct. 2431 (2012)).

[8] For example, Judge Guilford invalidated claims directed to applying for a loan on the Internet which had an invention date of 2002, yet no discussion of the state of the art in 2002 was included in the opinion. See Mortgage Grader, Inc. v. Costco Wholesale Corp., et al., case no. 13-cv-00043-AG (C.D. Cal. Jan. 12, 2015).

[9] See Ultramercial v. Hulu, 722 F.3d 1335 (Fed. Cir. June 21, 2013).

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