Next Steps in Eligibility.

Two competing patent eligibility petitions have been filed with the Supreme Court.  In American Axle, the patentee argues that the Federal Circuit has gone too-far in finding its claimed method of manufacturing a frequency-tuned vehicle drive-shaft to be directed to a natural law (namely Hooke’s law).  In Ariosa Diagnostics, the petition goes the other way and argues that the Federal Circuit has unduly narrowed its conception of a product-of-nature under Myriad.  It would be interesting for the Supreme Court to take these cases as a pair in order to reconcile the law and explain the extent that product-of-nature analysis fits within the Mayo framework.


Sequenom Back Again: This time Patent Eligible

Federal Circuit Narrows Application of Hooke’s Law, but Still Wields the Ineligibility Hammer

Hey Mechanical Engineers: Your Patents are Also Ineligible


22 thoughts on “Next Steps in Eligibility.

  1. 5

    I spent a fair bit of time going through the axel case.

    This was a 103 case where they just used 101 to invalidate the claims. You can see that they used the same arguments used at the EPO. The big thing the CAFC did that no one seems to notice is they pulled a new reference out of their b*tt to invalidate the patent in step 2 of Alice.

    This case isn’t really about whether axels are patent eligible or not. It is about whether the CAFC can use 101 to invalidate claims under 103 using 101.

    The Scotus won’t take this case. It is too sloppy.

    1. 5.2

      Agreed. But note how the UK, under the same statute as the EPO, also invokes the “inventive concept” way of thinking to decide eligibility.

      The English courts go further, declaring the EPO approach to be intellectually dishonest. Presumably the courts of the USA usually find it more amenable to adopt English jurisprudence than that of the EPO.

      Me, I find the UK/US position on eligibility disappointing and intellectually weak. Will SCOTUS toughen it up though? No chance.

      1. 5.2.1

        Is there any particular distinction between US and UK?

        What (exactly) bothers you about the US position?

        Does the actual different Sovereign choice of Useful Arts versus technology (no matter how Greg might wish to celebrate any unfortunate misapplication here) play into your feelings on the US position?


          Any distinction between USA and UK? Yes, of course, because the respective statutory exclusions of eligibility are so different.

          What bothers me? Using the notion of an inventive concept to decide eligibility.

          Technology = Useful arts (more or less). That’s not the problem.

  2. 4

    It would be interesting for the Supreme Court to take these cases as a pair in order to reconcile the law and explain the extent that product-of-nature analysis fits within the Mayo framework.

    Interesting? Yes. Salutary? No.

    There is a line in Sholem Aleichem’s Tevye the Dairyman where a rabbi pronounces a blessing on the Tsar, “may God bless and keep the Tsar,… far away from us.” Mutatis mutandis, the same goes for the royal nine. May God bless and keep them,… far away from patent law.

    1. 4.1

      And then there is that old fridge magnet that declares that the first duty of any lawyer towards their client is to keep them as far away as possible from other members of the profession

      (or something to that effect, if I remember it right)


          I’ll have a look for it. It’s in my room at my firm. But with Lockdown/home working, it might take a while to get back to you with the exact wording.

  3. 3

    “..he [Andrei Iancu] lamented that the Federal Circuit is now finding the manufacturing of Truck Axles and operation of Garage Door Openers ineligible for patenting.” A reality check would be to count all the issued patents on both, and to note how many of them claim the invention over the prior art, not just claiming the desired end result.

    1. 3.1

      How would this be a reality check, when that faction’s reality is that the desired end result can be the “invention”?

  4. 1

    Just my take–the Federal Circuit sees medicine and automatically associates it with PhDs, sympathizes with their scholarly brethren, and therefore deems it “hard science.” The same Federal Circuit sees software patents, doesn’t understand what the words mean, sees that the inventors have no advanced degrees, and automatically sides with the big tech companies that whine about patent trolls. It is elitism at its finest in the world of ivory towers.

    1. 1.2

      If that were true there would not be all the allegations that all medical diagnostics inventions are unpatentable, and the pharmaceutical and biotech companies would not have been the principal backers of of the proposed 101 legislation in the Senate last year.

      1. 1.2.1

        I do not recall Pharma being as you indicate, Paul.

        Plus, it may be worth noting who exactly was late to the party and demanded ‘compromises’ that were nothing more than Trojan horses aimed at scuttling that same proposed legislation.

        Think of it as adding context.

    2. 1.4

      There is a lot of truth to this. And people like Stevens have said things that support your view. Stevens said to the effect that what you do is you write down what you want the computer to do on a piece of paper and then give it to a technician to program the computer to program it.

      Posner said that all you need to motivate a nerd to invent is a pizza that the nerds just need to do these things.

      And so forth.

    3. 1.5

      Makes sense to me too. ………

      And so, here in Europe, I am grateful for the historical accident which left the Enlarged Board of Appeal of the EPO as Europe’s final authority on eligibility/patentability/validity for all 38 Member States of the EPC.

      Why? Because the members of the EBA have the skills and experience to do the job they are appointed to do. See the White Book, the Established Caselaw of the Boards of Appeal of the EPO, if you don’t believe me. You will be astonished how readable it is.

      1. 1.5.1

        +1 – on the somewhat rare occasion of reading cases there, I commend the overall writings as to their readability.

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