Will the Supreme Court Finally Clarify Patent Eligibility?April 11, 2023

To be eligible for a patent, an invention must be a “useful process, machine, manufacture, or composition of matter.” However, in recent years, the U.S. Supreme Court has narrowed the scope of patent eligibility. In the landmark cases Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) and Alice Corp. v. CLS Bank International (2014), the Court held that laws of nature, natural phenomena, and abstract ideas are not patent-eligible unless the invention includes an inventive concept that goes beyond the ineligible subject matter.

Accordingly, the Court has said that integration of an abstract idea, law of nature or natural phenomenon into a practical application may be eligible for patent protection. In Alice, the Court explained that “in applying the §101 exception, we must distinguish between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more” and stating that Mayo “set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” See Alice Corp. and Mayo.

The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception. This framework is referred to as the Mayo test or the Alice/Mayo test. The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. The Supreme Court has described the second part of the test as the “search for an ‘inventive concept’.” Alice Corp., at 1981 (citing Mayo, at 1966). See also MPEP § 2106.

On April 5, the Solicitor General submitted an amicus brief on two cases: Interactive Wearables, LLC v. Polar Electro Oy, et al.; and David A. Tropp v. Travel Sentry, Inc., et al. https://www.supremecourt.gov/DocketPDF/21/21-1281/262869/20230405140402650_21-1281%2022-22%20CVSG%20-%20Interactive.Tropp.pdf

In Interactive Wearables, the Federal Circuit affirmed the lower court’s decision invalidating Interactive Wearables’ 9,668,016 and 10,264,311 patents, directed to a wearable content player connected to a remote control. Id. at p. 6. The district court followed the Alice/Mayo test and found that the claims were directed to the abstract idea of “providing information in conjunction with media content” and that “the recited physical components merely provide a generic environment in which to carry out the abstract idea.” Id. at p. 7. Thus, in step two, the district court further found that the claims do not “recite any elements that individually or as an ordered combination transform the abstract idea” and thus that the claims do not reflect an “inventive concept” as required by Alice. Id.

In Tropp, the Federal Circuit affirmed the lower court’s decision invalidating Tropp’s 7,021,537 and 7,036,728 patents, directed to a method of improving airline luggage inspection which includes a dual-access lock which can be locked by passengers, but may be opened by TSA via a “master key” provided to TSA. Id. at p. 8. Again, the district court followed the Alice/Mayo test and found that the claims were directed to the abstract idea of “the application of dual-access locks to airport luggage inspection” and that there was no “inventive concept” because the claims “simply describe a well-understood and conventional device, a dual-access lock, and incorporate[ ] it with the fundamental economic practice of baggage inspection at airports.” Id. at p. 9.

The Solicitor General notes that these two cases “provide an opportunity for the Court to clarify the proper reach and application of the abstract idea exception to patent eligibility under Section 101” Id. at p.10. The Solicitor General further states that “[t]he category of patent-ineligible abstract ideas thus does not encompass quintessentially technological inventions, like the improved content player that the patentee claimed in Interactive. By contrast, as the court of appeals correctly recognized, Section 101 excludes non-technological methods of organizing human activity like the luggage-inspection method claimed in Tropp.” Id. at p. 10-11. Yet, goes on to state that although these cases are both directed to abstract idea exceptions under Section 101, they cover “two very different inventions” and thus should not be consolidated. Id. at p. 11-12.

So far, no other amicus briefs have been filed in Interactive Wearables, but the US Inventor and Eagle Forum Education & Legal Defense Fund filed an amicus brief in Tropp in August 2022. Last year the Supreme Court denied hearing American Axle v. Neapco case, which many were hoping to clear up Section 101. We will see if further amicus briefs will be filed, what will come of these cases during this year, and if any clarity will come from the Court regarding the Alice/Mayo test.

Ashley Holland is an intellectual property attorney in the MVS Biotechnology and Chemical Practice Group. To learn more, visit our MVS website, or contact Ashley directly via email.

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