March 5, 2024

Section 101 Patent Eligibility Roundup: The PTAB, Cert Petition and My Oscars Picks

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

Section 101 Patent Eligibility at the PTAB

Dennis Crouch, famed Patently-O blogger, recently looked at several Section 101 decisions from the PTAB. In his first post, "Four Funerals: Recent 101 Decisions," Crouch analyzes four recent eligibility cases that involve communications technology. Interestingly, only two of the four cases affirmed examiner rejections for eligibility, while the PTAB entered eligibility as a new ground of rejection in the other two cases.

In his second post, "Eligibility and Physical Products," Crouch looks at six PTAB decisions that involve physical devices or molecules, ranging from CKRD peptides to a system of monitoring coffee pods for convenient reordering. Despite the physical nature of the claim elements, the PTAB found the majority of these to be ineligible and directed to an abstract idea.

I suggest reading both posts.

Following the Latest Cert Petition

As mentioned in the latest roundup, Ficep has asked the U.S. Supreme Court to address Section 101 patent eligibility. Ficep argues that the appellate court, "or at least some of its panels," searches for "some underlying essence of the invention … and then decides whether that level of abstraction is too high to be patent-eligible." Ficep says this cannot be the law. Here is the petition.

The respondent, Peddinghaus Corp., filed its opposition at the end of February 2024 and argues:

  • the claims are directed to processing information, not to a specialized manufacturing machine, and the Federal Circuit got it right
  • this case does not present an inconsistency between Diehr and Alice. Instead of overruling Diehr, the respondent argues that the Federal Circuit did the opposite and "cited Diehr multiple times throughout the opinion, including for support in concluding that [the patent] lacks any inventive concept …"

I stand by my initial prediction: The Supreme Court is not granting cert.

A Walk Down Memory Lane

The January Roundup touched on the Patent Eligibility Restoration Act (PERA) Senate hearings. And while the hearing lasted two hours, C-SPAN made it easy to jump to a particular speaker or search the hearing transcript. If you are into patent law and C-SPAN videos, here is a handful that might interest you:

Thanks to Howard Mortman, communications director at C-SPAN, for providing these links.

Let's Talk About the Oscars

Here are my picks (not what I believe will win). Here we go.

Actor: Cillian Murphy ("Oppenheimer")

Actress: Carey Mulligan ("Maestro")

Supporting Actress: America Ferrera ("Barbie")

Supporting Actor: Robert Downey Jr. ("Oppenheimer")

Cinematographer: Hoyte van Hotema ("Oppenheimer") but closely followed by Matthew Libatique ("Maestro")

Director: Christopher Nolan ("Oppenheimer")

Best Picture: A ranking:

1. "Oppenheimer" – This is far and away the best of the year.

2. "Maestro" – Cooper was good, but Carey Mulligan stole the movie.

3. "American Fiction" – This has me excited for whatever Cord Jefferson does next.

4. "Killers of the Flower Moon" – If Dan Friedkin gets a win in 2024, it's going to be in the Europa League. Daje Roma!

5. "Barbie" – It has an incredibly entertaining middle third and then dragged.

6. "Anatomy of a Fall" – Uncork your favorite French wine and settle in for a French legal drama where you'll be asking, "Are French trials really like this?"

7. "The Holdovers" and "Past Lives" – I watched them. That's all I got.

A couple of notes: 1) I apologize to the readers because I have not watched "Poor Things" or "The Zone of Interest," and 2) maybe it was the subject matter that kept it off the list, but I expected to see "The Killer" at least considered an Oscars snub. It is not David Fincher's best movie (that's "The Social Network"), but "The Killer" is very good and very Fincher.


Another look at my open tabs:

  • Holland & Knight colleagues Tom Brooke and Allysan Scatterday look at Sarah Silverman's copyright lawsuit related to the alleged use of her work by generative artificial intelligence (AI) tools (Bloomberg Law).
  • Another one from Patently-O, but this time it is Jason Rantanen, who gives a Federal Circuit statistics update – e.g., number of opinions vs. summary affirmances (Patently-O).
  • Confused about the Corporate Transparency Act? Start with this podcast from Alan Winston Granwell (Corporate Transparency Talk Podcast Series).
  • My colleague Mark Masutani looks at the recently issued USPTO guidance on AI-assisted inventorship (IP/Decode Blog).
  • The ACX grant results are always interesting (and encouraging). They range from $15,000 to work on animal rights in Türkiye to $50,000 for the Far Out Initiative, which is studying the FAAH-OUT pseudogene that regulates levels of pain-related neurotransmitters, to $25,000 for an online training program for healthcare workers in developing countries (Astral Codex Ten).

As always, thanks for reading, and please email with any thoughts, comments or movie suggestions.

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