In its first action for the October 2017 term, the Supreme Court has (inter alia) denied Certiorari in three pending Patent Cases:
- 16-1288 SYNOPSYS, INC. V. MENTOR GRAPHICS CORPORATION
- 16-1442 ARUNACHALAM V. SAP AMERICA, INC.
- 16-1427 OLEKSY V. GENERAL ELECTRIC CO.
Of these, only Synposis was truly interesting. That case asked for a review of the law and procedure of the Abstract Idea inquiry under Section 101:
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2), if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims. The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers. The questions presented are:
1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.
2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.
In his case, Oleksy faced an uphill battle against an affirmance-without-opinion.