Section 101 Patent Eligibility Roundup: October 2023
In this latest roundup, we look at some recent opinions from around the country, an interesting article discussing the constitutionality of the Patent Eligibility Restoration Act, "My Cousin Vinny" and more.
(Also, a reminder: a reference to a particular case or article does not necessarily mean we agree with what is being proffered; we might just find it interesting.)
The Supreme Court Continues to Turn Down Patent Eligibility Petitions
This is unsurprising to anyone reading this blog, but the Supreme Court continues to mostly ignore patent eligibility. I say mostly for two reasons: First, the Court has often asked for the input of the Solicitor General so there is at least enough interest to request the brief. Of course, that has not led to the Court granting a petition, even when the Solicitor General suggests it. Second, Justice Kavanaugh seemingly wants to hear a patent eligibility case. Earlier this month, the Supreme Court denied certiorari in CareDx v. Natera, but Justice Kavanaugh would have granted the petition for a writ of certiorari.
Earlier this year, the Supreme Court denied two other petitions: 1) Tropp v. Travel Sentry et al. and 2) Interactive Wearables v. Polar Electro Oy, et al. And Justice Kavanaugh would have also granted the petition in each of those cases. This is interesting because these three cases concerned very different technologies, yet Justice Kavanaugh would have granted certiorari in each. He is not being technology-specific in his consideration of patent eligibility. Although we know Justice Kavanaugh is open to contemplating patent eligibility, he will likely need to convince three more of his colleagues before the Court grants certiorari.
Dennis Crouch at Patently-O delved into the CareDx v. Natera petition. And this blog has previously covered the Interactive Wearables v. Polar Electro and Tropp v. Travel Sentry petitions. (Disclosure: Holland & Knight, including the author, represented the respondent in Interactive Wearables v. Polar Electro at District Court, the Federal Circuit and the Supreme Court.)
The Patent Eligibility Restoration Act – Unconstitutional?
This summer, Sens. Thom Tillis (R-N.C.) and Chris Coons (D-Del.) introduced the Patent Eligibility Restoration Act of 2023. We covered that here. Earlier this month, Burman (Bud) Mathis, writing for IP Watchdog, asked whether the Supreme Court would find the Patent Eligibility Restoration Act unconstitutional.
Mr. Mathis comes at the patent eligibility framework with a specific tilt, but he presents an interesting discussion should the Act ever actually come into existence.
Section 101 Patent Eligibility at the ITC
Holland & Knight recently welcomed Jim Coughlan, Amy Simpson, and Terry Wikberg to our intellectual property (IP) group. Each has an extensive IP practice with significant experience litigating at the U.S. International Trade Commission (ITC). They recently co-authored a Law360 article discussing the treatment of Section 101 at the ITC, along with worthwhile tips for patent prosecutors and litigators. If you're interested in patent litigation at the ITC, the article is worth your time.
If you want to discuss any of these issues, please reach out directly. Or, better yet, reach out to me so I can make an introduction and confirm that someone is actually reading this far into the blog post.
Let's Talk About Some Recent Cases
Here are a few Section 101 opinions that have been sitting on my desk:
- PerformancePartners LLC v. FlashParking, Inc. – In this Western District of Texas case, the Court (Judge Cardone) invalidated patent claims directed to "managing vehicle access to secured parking areas," which entails 1) monitoring points of access, 2) electronically obtaining characteristics of vehicles, 3) offering "security options" by providing a ticket, 4) obtaining a unique characteristic from each exiting vehicle, 5) allowing exiting vehicles that match the characteristic to exit, while 6) offering other non-matching vehicles a "resolution process."
The Court further found that the assessed claim relied on "generic, conventional technologies to apply the abstract method of managing vehicle access to a secured area." PerformancePartners, LLC v. FlashParking, Inc., No. WA-23-CV-130-KC, 2023 WL 6617395 (W.D. Tex. Oct. 11, 2023).
- PowerBlock Holdings, Inc. v. iFit, Inc. – In this District of Utah case, the Court (Judge Parrish) invalidated most of the asserted claims of a patent directed to automated dumbbell weight stacking because they, at bottom, claim "substantially all systems for automated dumbbell weight plate stacking involving electric motors and data entry systems and is therefore overly broad."
Most interesting is that the Court found that claim 19 was not properly represented by the other claims because of its "means for" language. The Court declined to construct the claim terms but noted that, by operation of 35 U.S.C. § 112 ¶ 6, this claim "may not be subject to the abstraction that ails" the other relevant claims. The Court declined to offer a holding on this claim because the parties had not fully argued the issue. Powerblock Holdings, Inc. v. iFit, Inc., No. 122CV00132JNPCMR, 2023 WL 6377781 (D. Utah Sept. 29, 2023).
- Fred Bergman Healthcare Pty Ltd., et al. v. Seneca Sense Technologies – In this Northern District of Illinois case (Judge Blakey), the Court assessed the asserted patent, entitled "Incontinence Management System and Diaper." The defendant argued that the relevant claim is directed to the abstract idea of "receiving and analyzing data to characterize a 'wetness event.'" The Court at Step 1 assessed the parties' arguments – whether the tangible nature of the elements was relevant, the combination of elements, and whether the automatic feature of the claimed invention mattered to patent eligibility. The Court, however, did not make a determination at Step 1 because the claim survived Step 2.
At Step 2, the Court noted that plaintiffs alleged the patent claims "the improvement of a technological process (namely, the improvement of incontinence management technology), not simply an improvement in computational accuracy," and the Court could not, at the Rule 12 stage, concluded that the claimed invention lacked an inventive concept. Therefore, based on the pleadings and intrinsic evidence, the Court denied the motion to dismiss. Fred Bergman Healthcare Pty Ltd. v. Seneca Sense Techs. Inc., No. 1:22-CV-02167, 2023 WL 6388147 (N.D. Ill. Sept. 30, 2023).
Courtroom Month on The Rewatchables Podcast
I have a massive backlog of podcasts, and I have finally started Courtroom Month on The Rewatchables If you like watching movies and then listening to people talk about movies, this podcast might be for you. They discuss some all-time legal greats: "Primal Fear," "A Time to Kill," "My Cousin Vinny," "And Justice for All," "The Devil's Advocate" and "A Few Good Men."
At the top of this mountain is "My Cousin Vinny." This might be a hot take*, but Joe Pesci is one of our greatest living actors and has shown impressive range throughout his career. In 1990, he played Tommy DeVito in "Goodfellas," eventually winning the Academy Award for Best Supporting Actor. Two years later, he is bumbling around, falling in the mud, wearing a clown suit – i.e., playing against type – in "My Cousin Vinny." This is a long way of saying go rewatch "My Cousin Vinny." You won't regret it. (And if you are a litigator, you have certainly had an experience that felt like this.)
*My real hot take might be that Marisa Tomei clearly deserved to win Best Supporting Actress for her role in My Cousin Vinny – and any controversy/conspiracy is silly.