Overlap of Enablement and Eligibility

Patent

New pending petition for certiorari in Interactive Wearables, LLC v. Polar Electro Oy, 21-1281 (Supreme Court 2022) on patent eligibility grounds.

Question presented:

The patents-in-suit are directed to an electronics hardware device comprising a content player/remote-control combination having numerous concretely-recited components that undisputedly qualifies as a “machine” or “manufacture” under the statutory language of 35 U.S.C. § 101. Nevertheless, the court below found the claims of the patents-in-suit invalid under Section 101, on a motion to dismiss, for claiming nothing more than the abstract idea of “providing information in conjunction with media content.”

As a justification for disregarding each recited structural component from its characterization of what the claims are “directed to,” the court resorted to a factual, enablement-style analysis of the level of detail in the specification and declared it insufficient to support patentability.

The questions presented are:

1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101? [Repeat of American Axle question presented]

2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent? [Repeat of American Axle question presented]

3. Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101? [New question]

In the case, the E.D.N.Y. district court dismissed the infringement lawsuit at the pleading stage — holding that the asserted claims were ineligible as a matter of law.  On appeal, the Federal Circuit affirmed with a R.36 opinion-free judgment.

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22 thoughts on “Overlap of Enablement and Eligibility”

  1. 5

    The link from US Patent No. 10,264,311 in the article actually goes to US Patent No. 7,334,720. The drawings are also from the ‘720 patent. This does not appear to be one of the patents at issue.

  2. 4

    Another easy one in my scheme. And another demonstration of “do it on a computer” obviousness.

    Is it a method? Yes. Does the method result in anything other than some species of new and useful information? No. Does the utility of the resulting information arise from human consumption of the information? No. The utility is consumed by the accounting system to which the invention is connected. The method should be eligible.

    Of course, it’s as obvious as the sunrise and court procedures should have a way to kick obvious-as-sunrise patents before discovery and experts. Alice is a useful test for “do it on a computer” obviousness that involve nothing new in the computing arts except using a computer for what it was designed to be used for.

    1. 4.1

      >except using a computer for what it was designed to be used for.

      To be slightly argumentative, the old Eibel Process case suggests that some of those inventions can still be nonobvious e.g., the spacer placed under the machine’s legs in Eibel was being ‘us[ed]…for what it was designed to be used,’ too.

      1. 4.1.1

        I agree that there can be novel and non-obvious new uses of existing computing equipment. My statement could have been more complete.

        How about:

        Alice is a useful test for “do it on a computer” obviousness that involve nothing new in the computing arts except using a computer for what it was designed to be used for when digitizing a previously known method where neither the method nor the computing are particularly improved.

        2. 4.1.1.2

          >Alice is a useful test

          I respectfully disagree, again citing Eibel Process. “Using a 2×4 to raise one end of a table” and “letting a liquid run downhill” are about as conventional as one can get.

          @Anon “Because folding in obviousness into a discussion on the propriety of folding in 112 when determining 101….”

          🙂 In fairness, that’s the Alice test.

          2. 4.1.1.2.2

            So the manifest injustice of defendants coughing up a million bucks to get to a 103 invalidity JMOL for a “do it on a computer” travesty of a patent is just collateral damage that mitigating can’t be allowed, because efficient infringement. Because the patent right supersedes all other rights, except the 2nd Amendment, of course, because Progress.

            I get it. Really, I do.

            1. 4.1.1.2.2.1

              How many logical fallacies did you want to stuff into that emotional rant of yours?

              Serious questions for you:

              Do you think anything “done on a computer” is per se obvious?

              Why would you limit such “thinking” to only the tool of a computer?

  3. 3

    Oh course the irony here is that “abstract” and enabled are incompatible with one another. In the real world claims cannot be both “abstract” and enabled.

    1. 3.1

      That depends on the definition of “is” is….

      Oh wait, wrong hearing room.

      That depends on the definition of “abstract,”….

      As you know, in the Alice case, items averred to by BOTH parties as fully satisfying the machine category (which, to your point, was also enabled), were none-the-less decreed to be: “Abstract.”

  4. 2

    Odd petition, which would have been far better off spending more time with only asking the third question.

    1. 2.1

      Odd petition, which would have been far better off spending more time with only asking the third question.
      They are hoping to piggyback on American Axle. If the Supreme Court takes on American Axle, Interactive has a chance at a GVR (grant, vacate, remand order).

      1. 2.1.1

        Thanks Wt,

        I “get” the piggyback (especially seeing how many certs simply get a “No”), but the piggyback does not really help the distinguishing 112 question, now does it?

        What would a GVR gain for the petitioner?

        1. 2.1.1.1

          “What would a GVR gain for the petitioner?”

          Time for a prayer to be answered . . . that Congress would itself abrogate Alice / Mayo?

          1. 2.1.1.1.1

            Lol – you mean the same polarized-and-yet-captured-by-dark-money-on-both-sides-of-the-aisle Congress….?

        2. 2.1.1.2

          What would a GVR gain for the petitioner?
          It would a return to the Federal Circuit with a remand to looking at this again based upon our American Axle decision — assuming again that SCOTUS takes on American Axle.

          1. 2.1.1.2.1

            Yes – but American Axle could easily be distinguished on the 112 point, so, what is the impact?

  5. 1

    Whew! Boy, oh boy, now that was close. Thank goodness that at least vehicle axles, cameras, and life-saving diagnostic inventions remain patentable.

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