The Federal Circuit’s recent decision in McRO has been interpreted by many in the patent community as a further signal that the so-called “pendulum” is swinging back to a more favorable position for patentees.  There is some superficial evidence of this possibility.  Let’s look at the numbers. September 2016 was the first time since Alice that the number of federal court decisions finding eligible subject matter (16) exceeded those finding ineligible subject matter (13).  Those sixteen decisions also mark the highest number of eligibility decisions in a single month.  The most significant contribution to the switchover is that only two motions to dismiss under § 101 were granted in September, compared to nine that were denied, the largest gap since March 2016 (6 granted, 10 denied).
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In Part I, I explained some general criteria for laws of nature, considering the prototypes of Newton’s laws and Einstein’s E=mc2. Now I’ll turn to whether there are laws of nature in biology. Biological generalizations, such as those identified by the courts (and similarly found in many rejected patent applications), do not meet the various criteria used to identify laws of nature. Most significantly, they are not universal—they apply only to specific characteristics of human biology. And while in some cases they allow for predictions, they are not reductionist: They do not explain more specific phenomena in more general terms. In many cases, the generalizations are not objective and independent of human concerns but entirely dependent on them—for example the alleged law relating specific genes to elite athletic performance. Mother Nature does not concern herself with Usain Bolt’s sprinting prowess. The reason that biological generalizations are not universal is that they are the result of evolution—they are contingent outcomes, they could have been otherwise. Indeed it is possible that they could not have arisen at all. This thesis is known as the Evolutionary Contingency Thesis.
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I believe that the opinions of the Federal Circuit do not reflect a deep understanding of science and technology. In this blog I’ll focus specifically on the issue of laws of nature. It appears that the Federal Circuit has uncritically accepted the Supreme Court’s statement in Mayo that a law of nature is any natural relationship that exists “in principle apart from any human action.” In Genetic Technologies v. Merial*, the panel (Dyk, Prost, Taranto) held that the “linkage disequilibrium between the non-coding and coding regions,” the condition in which certain alleles at two linked loci are non-randomly associated with each other, “is indisputably a universal, inherent feature of human DNA” and thus a law of nature. The panel in Ariosa (Reyna, Linn, Wallach) held that Sequenom’s claims to identifying parental cell-free DNA “begins and ends with a natural phenomenon. Thus, the claims are directed to matter that is naturally occurring.” Judge Dyk in his concurrence with the denial of en banc review in Ariosa clearly accepted the Supreme Court’s definition, saying, “Mayo contributed only routine application to a law of nature that was already well known.” In Rapid Litigation Management v. CellzDirect, the panel (Prost, Moore, Stoll) skipped the question of whether the ability of liver cells to survive multiple freeze-thaw cycles was a law of nature: “The district court identified in these claims what it called a “natural law”—the cells’ capability of surviving multiple freeze-thaw cycles. We need not decide in this case whether the court’s labeling is correct.” Instead, the court engaged in the convoluted exercise of whether the claims were “directed to” this ability. While the result of this decision was correct—the claims were patent eligible—a more direct path to that outcome would have been a finding that there was no law of nature being claimed at all.
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In Ameritox v. Millenium Health (W.D. Wis., J. Conley) the court rejected the defendant's motion to reconsider its earlier ruling that Ameritox's patents were not ineligible.  (The earlier decision cited my Law360 article, noting that only 26% of patents have survived post-Alice motions.)  Here, Millenium argued that the court should not have considered that "the prior art steered a skilled artisan away" from the claimed invention, and that one of the claimed steps was not conventional, since this allegedly conflated eligibility with novelty and non-obviousness.  The court ripped Millenium on this point, saying "this argument ignores that Millenium itself squarely argues the relevant relevance of this factor in assessing the eligibility of the ’680 patent under § 101, by citing the Federal Circuit's decisions in In re BRCA1- and BRCA2- Based Hereditary Cancer Test Patent Litigation, where the court specifically held that "what practitioners already knew" and what were "well-understood, routine, and conventional techniques that a scientist would have thought of" were relevant to eligibility.

This is, in my view, the right approach.   Several recent district court decisions have said that evidence of novelty is not relevant to eligibility, and cited Diehr's statement that "the "novelty" of any element or steps in a process, or even of the  process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter."  This interpretation utterly misreads Diehr: the Court was discussing claim dissection, emphasizing that "it is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis."  The Court was criticizing the approach of disregarding "old elements" that lack novelty from the the claim for the purposes of eligibility–not saying that actual novelty was irrelevant.  


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By: Robert R. Sachs

The Supreme Court has consistently cautioned that the judicial exceptions to patent eligibility need to be carefully applied:

At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U. S., at ___. At some level, "all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”

Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347, 2352 (2014) (citations omitted).

On November 14, 2014, exception did in fact swallow the rule in the Federal Circuit’s decision Ultramercial, Inc. v. Hulu, LLC, 2010-1544, 2014 U.S. App. LEXIS 21633 (Fed. Cir. Nov. 14, 2014) (“Ultramercial III”). Judge Lourie, writing for the panel of Judges O’Malley and Mayer, found Ultramercial’s patent claims ineligible. Along the way to that ending the court observed:

[W]e do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea. Future cases may turn out differently.

2014 U.S. App. LEXIS, at *11.

This phrasing is precisely how one would state an exception to a rule. Instead of saying that software is generally not directed to abstract ideas, and that in some cases may be, this phrasing implies the opposite: software is presumed to be an abstract idea (hence ineligible) though there may be some case in the future in which it is not. This approach turns the entire patent eligibility framework on its head. This essay explores how Ultramercial III reaches this inversion and its potential consequences.


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By: Robert R. Sachs

On June 25, 2014, just six days after the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the USPTO  issued its Preliminary Examination Instructions (“Guidance”) in view of the case.   Subsequently, the Office asked for public comments on the Guidance.   Over forty companies, associations, law firms and individuals submitted comments, including myself.  This series of posts is based on the comments I submitted to the Office.

In my view, the Guidance does not correctly interpret the Supreme Court’s decision, and does not provide specific guidance to the 7,000 examiners who will have to implement them on a daily basis.  The Court’s decision was not written as a manual for how examiners are to evaluate patent applications, and so simply quoting and paraphrasing the decision (along with scrupulous footnoting) is not sufficient to provide a cohesive, workable framework for the examination of patent applications, particularly for computer implemented inventions.  The core problem remains that examiners will be left to their own subjective evaluation and opinion of the patent eligibility of the claims before them.  Already, the patent community is observing very different approaches from different examiners.  This lack of uniformity leads to increased costs and delays in the examination of patents, as well as increased uncertainty by innovators as to the eligibility of their inventions in technologies that have been traditionally considered patent eligible.


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By: Robert R. Sachs

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office. 

Our approach to this roundtable was different from the typical conference or roundtable on patent

By: Robert R. Sachs

You are heading to Grandma’s house for yet another family gathering. Upon entering the front door, you are belted by a thunderclap of the smells of mothballs, yellowed plastic sofa covers, cat hair and foot powder. As you regain your bearings, the mellifluous under notes of Grandma’s apple pie reach you: tiny, moist, fragrant, individually encapsulated particles of Granny Smiths, butter and sugar, all borne upon the dry, hard air like foam upon breaking waves. You beeline to the kitchen, bypassing the hubbub of family, friends and distant cousins congregating in the living room.


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By: Robert R. Sachs, Daniel R. Brownstone

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the bellwether case for the patent eligibility of software. The question