PublishedFebruary 23, 2018

A New § 101 Trio Shows That We Don’t Need § 101 Legislation

The Bilski, Alice, Mayo, and Myriad cases are sometimes referred to as a § 101 quartet because they set forth the Supreme Court’s test for patentable subject matter under § 101.  Over the past few weeks, we’ve seen a new trio of § 101 cases emerge from Federal Circuit panels—Berkheimer, Aatrix, and Automated Tracking.

The Trio Hits Some Sour Notes

At the outset, I have serious concerns about these cases, concerns shared by other commentators on patent law.  

In Berkheimer, the Federal Circuit relied on statements in the patent’s specification to reach the conclusion that a feature wasn’t routine and conventional.  These statements weren’t detailed descriptions of how an improvement was achieved.  They weren’t experimental results showing the benefits of the technological improvement.  They were conclusory statements that something improved efficiency, and that known systems didn’t work in that manner.

According to the Berkheimer panel, that’s sufficient to create a factual dispute.  Unsupported, conclusory, self-serving statements by the patentee?  No problem, we have to give them weight as if they were factual evidence.  

Aatrix has similar flaws, relying heavily on conclusory allegations from the patent owner, unbacked by a factual underpinning, to create a factual dispute.  In addition, the Aatrix panel simply misapplied the law on claiming computer software; as it acknowledges, claims to “pure data” are ineligible.  Unfortunately, in order to find eligibility, the panel reads elements into the claim that aren’t actually part of the claim.  That allowed them to determine that claim 1 is more than a pure data claim.  The Federal Circuit doesn’t allow defendants to read limitations into a claim from the specification—but that’s exactly what the panel did in this case.

As a side note, I completely agree with Dennis Crouch’s summary of the Aatrix patents: “[t]hese patents cover really simple tax prep forms that I expect the Supreme Court would eat for lunch.”

Automated Tracking, on its surface, appears to reach a better result.  But the opinion is clear—the only reason the Court allowed summary judgment in this case is because the patent owner failed to allege that the claimed components were not routine and conventional.  Given the Berkheimer panel’s acceptance of conclusory statements unbacked by any evidence as sufficient to create a factual dispute, all Automated Tracking points toward is a requirement for patent owners to allege unconventionality in a complaint to avoid any possibility of summary judgment on § 101.

That’s not good for anyone—product makers, patent owners, or even the courts.  All it will do is shift the resolution of § 101 disputes later in cases without actually changing the outcome of the dispute.  That creates additional legal costs—for both sides—and burdens our court system unnecessarily.

As Dennis Crouch noted over on Patently-O, “[t]he divide among the court [on § 101 procedure] is now quite clear — what is needed is an en banc consideration of the issues.  Failing that, we will continue to muddle and err.”  En banc, the Federal Circuit can properly resolve this question by determining that the factual elements of § 101 are limited and that patent owners’ conclusory and self-serving statements are insufficient to create plausible factual disputes sufficient to prevent summary judgment on the issue.

The Federal Circuit Is Acting—We Don’t Need § 101 Legislation

Over the past 18 months, we’ve seen a number of misguided proposals to amend § 101.  Those proposals, as Patent Progress has explained, are fundamentally flawed.

But beyond the flaws in the proposals and the legal uncertainty a statutory change would provoke, there’s a simpler reason these proposals are being ignored.  They simply aren’t necessary.  As the Patent Office’s § 101 Roundtable Summary acknowledged, many in industry feel that the Federal Circuit’s ongoing development of § 101 case law represents the right avenue for any needed changes in this area.

In the end, these Federal Circuit cases—even though I disagree with the outcomes and believe they will be overturned en banc—show that there’s no present need for legislation on § 101.  The courts are actively addressing the contours of the § 101 statute.  Changing the § 101 statutory language now would just create new disruptions—something no one would benefit from.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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