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Subject Matter Eligibility Update

For an applicant to be granted a patent, the patent claims defining the invention must be written so as to satisfy several criteria, including novelty, non-obviousness, clarity, and definiteness. Historically, satisfying these four criteria has been the primary challenge faced by inventors and patent practitioners when obtaining and enforcing their patent rights. For the past decade, however, an additional criterium has brought a new, formidable challenge to those seeking to obtain and enforce patents: subject matter eligibility.

35 U.S.C. § 101 provides a statutory definition of eligible subject matter: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

A simple reading of § 101 suggests that any new and useful process, machine, manufacture, composition, or improvement thereof should constitute eligible subject matter. While not expressly set out in the statute, certain “judicial exceptions” of ineligible subject matter have been given by the courts, and these exceptions include abstract ideas (including mathematical formulas or equations), natural phenomena, and laws of nature. Even with these exceptions, the bar for eligibility has traditionally been quite low, with the Supreme Court once stating that patentable subject matter includes “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303 (1980).

However, the past decade of jurisprudence has appeared to move the historical bar. Bilski v. Kappos, 561 U.S. 593 (2010) rejected the Federal Circuit’s workable “machine-or-transformation” test as the sole test of eligibility. The decisions in Mayo v. Prometheus, 566 U.S. 66 (2012) and Assoc. for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013) resulted in the questionable validity of several patents in the biotech field under the new analysis provided by the Court, with issued patent claims potentially written in a way that is directed to ineligible laws of nature. The decision Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) rocked the software patent landscape, with many questioning whether any software applications are eligible in any situations under the Court’s analysis.

The fallout from these Supreme Court decisions has been immense. District courts and the Federal Circuit have attempted to apply the Court’s decisions, but the results appear to be less consistent or clean, as compared to earlier cases using the “machine-or-transformation” test. This has resulted in even more confusion for patent practitioners and the U.S. Patent and Trademark Office (which has released several examples and examination guidance to help practitioners and examiners alike navigate the various court decisions), as well as less predictability for inventors and patent owners.

While the software industry and certain sectors of biotech have been navigating the subject matter eligibility issues over the last several years, mechanical inventions have not encountered these same challenges. However, that appears to be changing, with the Federal Circuit recently finding in multiple cases that patent claims for mechanical device inventions, including an electric car charger (ChargePoint, Inc. v. SemaConnect (Fed. Cir. 2019)) and a garage door opener (Chamberlain Group, Inc. v. Techtronic Industries (Fed. Cir. 2019)), were directed to ineligible abstract ideas. In American Axle & Mfg. v. Neapco Holdings, the Federal Circuit determined that claims reciting a method for tuning driveshaft liners was directed to an ineligible law of nature. (Fed. Cir. 2019).

Last week, the Federal Circuit decided Yu v. Apple (2021). The claims at issue were directed to an improved digital camera comprising a first and second lenses and first and second image sensors, which are used to produce two images that can provide an enhanced image. In addition to the lenses and sensors, the claims also recited several other specific pieces of camera hardware. Despite that the claims were considered allowable over the prior art, the majority believed that the recited hardware was generic and unconventional, and therefore insufficient to overcome the fact that the claims were directed to the abstract idea of “taking two pictures and using those pictures to enhance each other in some way.” The dissent argued that the claims as a whole were directed to “a digital camera having a designated structure and mechanism that perform specified functions … not for the general idea of enhancing camera images.”

Based on these recent decisions, it appears that the electronic device and other mechanical industries are now being dragged into the subject matter eligibility issue, with at least some judges on the Federal Circuit believing that the judicial exceptions should extend to quite tangible inventions. Many commentators believe that the Supreme Court will take up one or more of these cases for consideration. We will continue watching these cases and provide updates on new developments.

If you have any questions regarding your own invention or whether it may be eligible for patentability, please do not hesitate to contact us.

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