Eligibility and the U.S. Solicitor General: Patenting the Scientific, Technological, and Industrial Arts

by Dennis Crouch

A decade ago, the US Supreme Court issued a pair of decisions that upended substantial aspects of patent practice. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).  These cases broadened scope of the “abstract idea” and “law of nature” exclusions in ways that largely overlap with other patent law doctrines, such as obviousness, indefiniteness, and even enablement.  But, unlike those doctrines, subject-matter eligibility jurisprudence is more of free-wheeling approach that typically does not require evidence.  In court, these cases are often decided at pleading-stage, before any evidence is introduced or considered.

Many thousands of patents have been denied or invalidated under the expanded doctrine.  Opponents of the change argue that it has created unpredictability, lack of respect for the law, and overreach that inhibits our culture of innovation historically fostered by the fuel of potential exclusive rights.

One difficulty with the law here is that it is entirely judge made.  The statute isclear that patents should be awarded to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” so long as the other requirements of patentability are met.  35 U.S.C. 101.  The Supreme Court added its admittedly atextual gloss of excluding “laws of nature, natural phenomena, and abstract ideas.”  And, although those limits have been longstanding, the court expanded their scope and simplified the procedures for invalidating patents in Mayo and Alice. A substantial number of prior petitions have asked the Supreme Court to clarify and revise its stance on Section 101 eligibility, but the Supreme Court has repeatedly denied certiorari.  We may be moving to the next step with the two pending cases discussed below.

Most recently, the Solicitor General has provided its views in two pending cases and has recommended that the court grant certiorari and revise its eligibility doctrine. “These cases would be suitable vehicles for providing much-needed clarification in this area.”

In its briefing, the SG ties itself to the idea of “technological inventions”; arguing that “quintessentially technological inventions” should be patent eligible. SG Brief. A positive SG amicus brief usually indicates a high likelihood that the Supreme Court will hear the case. The two parallel pending cases are:

  • Interactive Wearables, LLC, v. Polar Electro Oy, 21-1281.  Interactive Wearables asserts two patents covering a wearable content player connected to a screen-based remote control that permits users to view information about the song being played from the remote. U.S. Patent Nos. 9,668,016 and 10,264,311.  The district court dismissed the case with prejudice on the pleadings for lack of eligibility. On appeal, the Federal Circuit affirmed without opinion.
  • Tropp v. Travel Sentry, Inc., 22-22.  Tropp’s asserted patents claim a method of improving airline luggage inspection by selling TSA-labelled locks having a master key held by TSA authorities.  If TSA needs to open the luggage for inspection, they use their key rather than cutting the lock. U.S. Patent Nos. 7,021,537 and 7,036,728. The district court found the claims ineligible on summary judgment.  On appeal, the Federal Circuit affirmed with a non-precedential per curiam opinion. Importantly, Tropp does not claim to have created any new technology here, but rather a new process.  Of course, Section 100 of the Patent Laws defines process to “include[] a new use of a known process, machine, manufacture, composition of matter, or material.”

In its brief filed jointly in both cases, the Solicitor General distinguishes between the inventions in Interactive and in Tropp; arguing that only the first represents a patent eligible invention because it is directed to the “scientific, technological, [or] industrial arts” rather than “non-technological methods of organizing human activity.”

Properly construed, [the abstract idea] exception helps cabin Section 101’s reach to patent law’s traditional bailiwick of the scientific, technological, and industrial arts. The category of patent-ineligible abstract ideas thus does not encompass quintessentially technological inventions, like the improved content player that the patentee claimed in Interactive. By contrast, as the court of appeals correctly recognized, Section 101 excludes non-technological methods of organizing human activity like the luggage-inspection method claimed in Tropp.

SG Brief.  In looking at the court decisions, the SG also argued that the lower courts had unduly considered other doctrines such as novelty, obviousness, and enablement and overlayed them into the obviousness analysis.

A court at step two therefore should ask whether a claimed invention sufficiently transforms an abstract idea into the kind of innovation eligible for patent protection. Rather than undertake that inquiry, however, the Interactive court placed undue emphasis on considerations of novelty, obviousness, and enablement. Although those considerations may sometimes overlap with the abstract-idea inquiry, they are the purview of different statutory provisions and perform different functions. See 35 U.S.C. 102, 103, 112. By contrast, the Tropp court correctly held that nothing in the claimed method transforms it into a technological invention.

Id. Although not clear, the Supreme Court may consider whether to grant or deny certiorari in these cases as early as its May 18, 2023 conference.  Meanwhile, a third eligibility case of Avery Dennison v. ADASA is also pending and could be taken-up on the same date.

It is of some importance here that the USPTO also signed the brief – indicating that it is on board with creating a technological invention dividing line.

45 thoughts on “Eligibility and the U.S. Solicitor General: Patenting the Scientific, Technological, and Industrial Arts

  1. 10

    Thinking about this a bit more, what concerns me is how far Tropp v. Travel Sentry, Inc. are into the business method realm. They include the verb “marking” as an element of the claim.

    I think that this “organizing human behavior” is something that needs to be dissected more. Processing information and presenting to humans and being part of human behavior by actions of a machine is quite different than a method that includes direct actions by people.

    I am afraid that this case will be used to swallow all those supposedly “business methods” that are all performed on a computer but do interact with people. This is the heart of the information revolution. And is distinct from method performed without technology.

    In other words, a machine is being used. A machine.

    1. 10.1

      So, information processing on a machine where the data includes things about people is exactly the type of inventions that were meant to be encouraged and is at the heart of the information revolution.

      The attempts to limit these patents is anti-patent judicial activism.

    2. 10.2

      In other words, a machine is being used. A machine.

      I am quite certain that you are aware that claims in the Alice case — agreed to by both parties and not at Liberty for the Court to say otherwise — were accepted as claims to machines (and yet still held Abstract).

      How then do I read your exhortation?

  2. 9

    I think whether they take these largely depends on how they write the functional language enablement case.

    They clearly have a type of patent they don’t want to occur and feel obviousness is not a sufficient cure for it. Your Alices, your Hulus, your Morses, etc. If they write an expansive anti-functional case they are more likely to curtail judicial exceptions.

    1. 9.1

      They clearly have a type of patent they don’t want to occur…

      Open your eyes and see the real problem: this “they” of yours explicitly do not have that type of authority over patent law (on a Constitutional basis).

      When this “they” stick their fingers into the wax nose of patent law, the proper thing to do is to punch “them” in the face (figuratively rather than literally of course).

  3. 8

    Either Congress amends the law or else the SC should reject cert. There’s nothing in the statute allowing the Court to pencil in some “technological” requirement. Not the Court’s job to re-write the law, even if it would create certainty and would be considered good policy.

    1. 8.1

      … not the job?

      Too late.

      Time for them to UNDO what they have done – cut the Gordian Knot.

      1. 8.1.1

        But they would not UN-DO anything by the Solicitor General’s proposal. There would still be an “abstract idea” exception, but now with a wholly extra-statutory “technological” exception-to-the-exception. It would at least make sense for them to say that they are abolishing the “abstract idea” exception (they won’t), but keeping the exception and making it more complicated seems to be illegitimate.

        1. 8.1.1.1

          I am certainly not espousing the SG’s position, and nothing that I have ever written would lead one to assume so.

          My position in regards to the Supreme Court-induced morass of patent eligibility law has been rock solid for well over a decade now.

        2. 8.1.1.2

          An extra-statutory exception to an extra-statutory rule. What’s the problem.

          1. 8.1.1.2.1

            lol -yep, let’s never mind Constitutional Separation of Powers.

            What could go wrong with that? After all, do not the Ends justify the Means…?

            (/S)

    2. 8.2

      There’s nothing in the statute allowing the Court to pencil in some “technological” requirement.
      LOL. When has lack of “nothing in the statute” prevented the Court from penciling in a HUGE amount of additional requirements.

      Not the Court’s job to re-write the law, even if it would create certainty and would be considered good policy.
      Re-write the law is what they already did. You (and your clients) are likely happy they’ve rewritten it the way they did and will kick up as much dust as possible to prevent it from being rewritten in a different way.

      1. 8.2.2

        A “process” is inherently technological and always has been:

        “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.” Diehr (quoting Cochrane v. Deener (1877)).

        “An art or operation is an act or a series of acts performed by some physical agent upon some physical object, and producing in such object some change either of character or of condition.” – Robinson on Patents S159 “Art Defined” (1890).

        Thus, abstract ideas and natural phenomena are excluded not by judicial fiat but by the plain language of the Patent Act.

          1. 8.2.2.1.1

            “ The “1890” item is dicta as far as the “physical” is noted.”

            Hahahahahahaha.

        1. 8.2.2.2

          And no, the plain language does NOT support your assertion.

          They are called exceptions for a reason.

  4. 7

    >A court at step two therefore should ask whether a claimed invention sufficiently transforms an abstract idea into the kind of innovation eligible for patent protection.

    So, if we all agree all claims can be characterized by an abstract idea, then this is a technology test. They seem to be striving for the technology test in Europe.

    I do like their comments about not looking at 102, 103, and 112 in a 101 test.

    1. 7.1

      Night, you mention Europe in connection with a technology test. But Europe is also the model for keeping 102 and 103 out of the 101 enquiry.

      As you know, at the EPO they pride themselves on their rigour, keeping the eligibility enquiry clean, uncluttered with issues of novelty and obviousness. At the EPO, eligibility is rarely a stumbling block because all you need to satisfy it is that the claimed subject matter exhibits “technological character”. A formality, unless you are claiming nothing more than a pure method of doing business (for example).

      It’s do-able at the EPO only because under the EPO problem-solution regime its obviousness enquiry is so brutally clinical. Not so in the USA, right?

      1. 7.1.1

        I don’t see the point in taking pride in having kept 102 and 103 out of 101 when you’ve got 101 in your 102 and 103.

        1. 7.1.1.1

          That’s a great comment, Ben. But inventiveness, or non-obviousness, is something we encounter everywhere, not just in all the GATT-TRIPS fields of technology under the sun. So unless we are going to let people patent their life-enriching non-obvious screenplays or joke punchlines we have to filter out somehow those admirable innovations that are simply not fit for patenting. At the EPO patentability is limited to that which inventively solves a problem in technology. Forty years of experience have revealed that it isn’t that hard to distinguish technological non-obviousness from other sorts of non-obviousness.

          1. 7.1.1.1.1

            MaxDrei: we keep 102 and 103 out of our 101.

            Also MaxDrei: we have our 101 in our 102 and 103.

            (Nope, cannot see the irony there, eh?)

            ¯\_(ツ)_/¯

            Also:
            MaxDrei: anyone can see the difference between “technology” and non-technology”

            Also MaxDrei: “it is impossible to give a non-circular definition of “technology.”

            ¯\_(ツ)_/¯

            Common denominator?

            EPO Uber Alles.

  5. 6

    Does the expression “grasp the nettle” mean anything in the USA, I wonder.

    Cases put up to a Supreme Court are a minefield for the Justices. Only if the territory has been thoroughly mapped (by learned commentators, for example) can a Supreme Court contemplate with equanimity the positive act of grasping the nettle.

    Otherwise, they know that they are destined to end up with egg on their faces, their fingers severely burned. The burnt child fears the fire.

    Is the time yet right, to clarify eligibility law? Perhaps not quite yet.

    Meanwhile, at the EPO, opposition to the Tropp patent is ongoing but at an early stage. What the Tropp case has going for it is that the technology involved is simple enough to be grasped even by any 5 year old of average intelligence, so a SCOTUS riff on the case would also be understandable by any attorney at law of average intelligence.

    But perhaps that very fact explains the diffidence. If the issue is so easily understandable, it is equally easy for all those learned commentators to pick holes in the logic of any SCOTUS opinion on the matter.

  6. 5

    Rather than a bid for clarity, this smells more like a play for a general contraction of patent rights. Admittedly, I have not read the SG brief…

  7. 4

    They are releasing opinions at the slowest rate in history. They have a massive Dobbs hangover, because they know that they unleashed tectonic political forces that could yet lead to a tsunami of realignment against their favored people and causes. They have their own ideologically odd mix of so-called liberals who are conservative, conservatives who are trying to conserve, and nihilists. They know there is no particular political valence to the eligibility problem; people are all over the map on it, including themselves. I think that leads to the notion that they have no current appetite for complex arguments with major reliance interests, that offer no political value or signaling purpose, and lack case vehicles of particular distinction or interest. I’d say no cert on any of those cases.

    1. 4.1

      MS: “ They know there is no particular political valence to the eligibility problem; people are all over the map on it, including themselves.”

      This is not true. While exceptions exist on both sides, the glibertarian right is the source of 99% of the worst “EVERYTHING SHOULD BE PATENTABLE” and PTO-troll propaganda. There is zero energy on the liberal, progressive side of the aisle for “we don’t have enough patents” or “there is not enough patent litigation” positions. And ultimately that’s all this “eligibility” “controversy” comes down to: how much power do you want to give the worst attorneys and grifters ever to sue everybody else over a junk patent?

  8. 3

    DC: “ The statute is clear”

    It’s “clear” only in the sense that it’s grammatically correct and simple. On its face, however, the statute is unconstitutional because it can easily be construed to cover everything, including mental processes and information. Hence the courts coming in with exceptions to save it.

    Any attempt to “clarify” the statute without recognizing that the claims need to be compared to the prior art to determine what was actually invented (e.g., a new “technological” device, versus an old “technological” device with new content) is doomed. To its credit, the SG does appear to implicitly acknowledge this necessity but they should go much further and be crystal clear about it with specific examples

  9. 2

    “arguing that “quintessentially technological inventions” should be patent eligible.”

    So they would have us argue about whether a claim is “quintessentially technological” rather than argue whether a claim is “significantly more”? This does not seem like a meaningful change.

    And claim 1 of 10,264,311 does not appear to me as “quintessentially technological”. Perhaps aspirationally technological.

    1. 2.1

      What, you don’t think replacing the gobbledygook of “teaching, suggestion, and motivation” with “apparent reason with rational underpinning” was helpful?

  10. 1

    Nobody would be more pleased than I would to see the Court rein in the excesses of post-Alice jurisprudence, but the numbers are still against us. Alice was decided unanimously, and only four seats have been replaced since then. Five of the Alice justices—a majority, in other words—are still on the Court. Unless one of those five has had a change of heart in the last nine years—possible but unlikely—then a new case would just reaffirm the status quo.

    The Court has had plenty of opportunities to pull back in the years since Alice. If they were unmoved by Sequenom or American Axle, I am skeptical that they will be moved to take this case.

      1. 1.1.1

        The Kavanaugh Scissors are about as real and effective as Excalibur.

        The Supreme Court has shown time and time again that they do not care about the absolute mess they have created. In their eyes, the malleability of 35 USC 101 to go after anything and everything is not a bug but a feature.

        1. 1.1.1.1

          Even if the Supreme Court would agree that their precedent created a “mess” (let’s assume so for argument’s sake), the proposed “fix” (i.e., read in some sort of technological requirement) seems to be made up out of thin air. The Courts are supposed to construe statutes, not write them. And even if Alice and later cases “re-wrote” Section 101, then two wrongs would not make it right. And the Court penciling in some “technological” requirement in this case would set the precedent that judges can re-write legislation to “make it better.” In my opinion (FWIW), we have the precedent we currently have until and unless the elected branches change the law the constitutional way.

          1. 1.1.1.1.1

            (let’s assume so for argument’s sake)
            No need to make that assumption. Ask any examiner or attorney working at the USPTO or any patent attorney the following question: “What is patent eligible subject matter?” The answer would be: “I don’t know.”

            The case law is so full of contradictions that any result can be achieved so long as you have the right panel at the Federal Circuit. Case law that is clear and precise doesn’t beget so many petitions for cert.

            The Courts are supposed to construe statutes, not write them.
            That cat is already out of the bag with the “exceptions” to patentable subject matter. Once the court created those exceptions, they can refine them in any way they see fit.

            then two wrongs would not make it right
            I would love to see that argument made. ‘oh Supreme Court … you screwed up the first time by allowing these exceptions but we don’t want you to screw it up a second time by allowing these exceptions to be more easily interpreted.’ In other words … we are OK with the first wrong, but don’t commit a second wrong. Quite amusing.

            In my opinion (FWIW), we have the precedent we currently have until and unless the elected branches change the law the constitutional way.
            Again, ‘we are OK with the first wrong, but don’t commit a second wrong.’ LOL

        2. 1.1.1.2

          Their lack of caring does NOT mean that the Kavanaugh Scissors are not real.

          Do not confuse a lack of use with the item that could be used being very real indeed.

          Litig8or, no need for ‘more writing’ – and instead, the Court DOES have the power to rescind its prior ultra vires writings.

        3. 1.1.1.3

          Near as I can tell, the practical significance of the “Kavanaugh Scissors” is that the SCOTUS can—if it feels so moved—repudiate past precedents on textual grounds. Well and good, but do they feel so moved, at least when it comes to patent precedents?

          Does Justice Kavanaugh have any issues with the Court’s existing patent jurisprudence? One would be hard pressed to point to any evidence for that point.

          The only post-Alice justice who does show signs of wanting to move the law in a more patent-friendly direction is Justice Gorsuch. God bless him for that, but 1 vote against 8 cannot achieve much.

          In their eyes, the malleability of 35 USC 101 to go after anything and everything is not a bug but a feature.

          Not only is this 100% true, but the reality is even worse. If I recall correctly, one of the “blades” of the “Kavanaugh scissors” is supposed to be Justice Kavanaugh’s admonition in Henry Schein v. Archer & White that “we are not at liberty to rewrite the statute passed by Congress and signed by the President.” I know that many of us in the patent bar (myself included) chuckled at this statement and muttered to ourselves “tell that to Prometheus Labs.”

          The thing to understand, however, is that the Supreme Court (Justice Kavanaugh included, near as I can tell) does not perceive its §101 jurisprudence to be an example of re-writing the statute for policy reasons. They sincerely believe that the Mayo two-step reflects Congress’ expressed intentions when it drafted §101. I do not agree with this conclusion, but that is beside the point. The important point is that justices see it that way. Those who regard that line in Henry Schein as marking the start of a process by which the SCOTUS is going to pull back from Alice are kidding themselves.

          The current Court is not going to solve the Alice mess. Either Congress must act to correct the trajectory, or else we will need to wait for a change (likely a substantial change) in the Court’s composition.

          1. 1.1.1.3.1

            The current Court is not going to solve the Alice mess. Either Congress must act to correct the trajectory, or else we will need to wait for a change (likely a substantial change) in the Court’s composition.
            Agree 100%. The Supreme Court, at best, might clarify the law in a way that tones down some of the excesses wrought by the Federal Circuit. But in the many years since Alice, they have yet to take that initial first step (despite being asked to do so many times). Unless shown otherwise, I’m going to work under the assumption that they have no interest in this issue anymore.

            1. 1.1.1.3.1.1

              One may well consider that the tool of the Kavanaugh Scissors won’t be used.

              And certainly, it would indeed need an inspired argument to “Wake Up” the Supreme Court to their own misdeeds.

              But these sentiments are expressly different than the initial attempt at repudiating the existence of the tool that I have coined.

              Further, the (rather lackadaisical – and unfortunately dismissive) “kidding themselves” becomes a part of the problem in that those who understand the law understand WHY the use of the tool would be appropriate.

              So while certainly none of us can directly force the Court to change their ways, we CAN advocate for such. We CAN do more than merely accept p00r law.

              This is also why I have posted that high ranking members of ALL THREE BRANCHES have in fact done more than the lackadaisical and dismissive responses seen directly above.

              My arguments have been picked up and reflected by the likes of retired Chief Judge Michel, former USPTO Directors Kappos and Iancu, and even (sadly though, without too much follow-through) by members of Congress.

              The cleanest and most direct way out of the mess created by the Supreme Court (and those ‘excesses’ by the CAFC merely mirror what the Court itself has rendered – through the Fire-hosed Simians in a Cage effect) is for the Supreme Court itself to take responsibility for its own wayward actions.

              I have never stated this to be the only way, let alone the most likely way.

              But — point in fact — it IS a legally valid and accessible way.

              I have actually posted other mechanisms that I would prefer: for example, direct rebuke by Congress WITH a removal of the non-original jurisdiction over patent law from the Supreme Court and provision of that jurisdiction to a reformulated Article III Court (to both preserve Marbury, AND to reset and remove that Firehosed-Simian-In-A-Cage condition).

Comments are closed.