The Three Biggest Section 101 Stories of 2019
Jalen Rose often says that you got to give the people what they want, and it’s important to listen to Jalen. So here’s the holiday reading you’re craving. Refill your eggnog, turn on the Netflix fireplace, and curl up to read about the biggest Section 101 stories of 2019. (Spoiler: the creation of this blog did not make the list.)
But before we get to the list, here are a few honorable mentions:
- RPX did a deep dive on the effects of Berkheimer and Aatrix. In short, district courts have become less likely to grant Alice challenges since those two 2018 Federal Circuit decisions.
- E.D. Texas Chief Judge Gilstrap introduced Section 101 subject matter eligibility contentions.
- The Federal Circuit held that when there is a disputed claim term, the district court must either adopt the non-moving party’s constructions or resolve the dispute to whatever extent is needed to conduct the Section 101 analysis.
No. 3: Cellspin v. Fitbit
In June, the Federal Circuit agreed that asserted patent claims were directed to the abstract idea of capturing and transmitting data from one device to another. At step two of the Alice inquiry, however, the Federal Circuit found Cellspin's allegations were enough to exclude a finding that the asserted claims were ineligible under Section 101 as a matter of law.
Cellspin continued the discussion of what role factual allegations play in Section 101 decisions. While the patent does not need to expressly state all the reasons there is an inventive concept, the purported inventive concept cannot be "wholly divorced" from the claims or the specifications. The Federal Circuit also made it clear that patents are presumed to be valid and eligible in the Section 101 context.
Further reading:
No. 2: American Axle & Manufacturing v. Neapco
The Federal Circuit, in a split decision, was tasked with determining the eligibility of a patent directed to a method of manufacturing a driveline propshaft containing a liner designed such that its frequencies attenuate two modes of vibration simultaneously with claims directed to tuning liners—i.e., "controlling a mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies."
Judge Dyk and Judge Taranto agreed with Neapco and found that the claims merely invoked Hooke’s law – a law that relates the mass and/or stiffness of an object to the frequency with which that object vibrates.
Judge Moore issued a blistering dissent, stating that this "is now the law of Section 101. The hydra has grown another head."
Further reading:
- A Federal Circuit Quarrel: Patent Eligibility, Enablement and a Fiery Dissent
- Rep. Collins (R-Ga.) Calls for Patent Reform After American Axle Decision
No. 1: Section 101 Patent Reform – Maybe?
Back in April, Sens. Chris Coons (D-Del.) and Thom Tillis (R-N.C.), along with Reps. Doug Collins (R-Ga.), Hank Johnson (D-Ga.), and Steve Stivers (R-Ohio), unveiled a bipartisan and bicameral framework on Section 101 patent reform. The framework was short but the intent was clear: temper the Section 101-based rejections and invalidations that have skyrocketed since the Supreme Court's 2014 Alice decision.
And we’ve been covering it since. Will reform occur and, if so, what will it look like? That is certainly a question we’ll be trying to answer in 2020.
Further reading:
- Patent Reform: New Bipartisan Framework for Section 101 Eligibility Introduced in Congress
- Patent Reform: An Interview with Alex Moss, Attorney at Electronic Frontier Foundation
- Bloomberg Law: There is a Lack of Consensus among Stakeholders on Patent Eligibility Reform
Thank you for reading. Have a great holiday and, as always, sign up here for a monthly roundup from the Holland & Knight Section 101 blog.