Eolas is seeking a writ of certiorari from the Supreme Court — hoping that the court will overturn the Federal Circuit’s decision invalidating its distributed computing (WWW) claims as ineligible under Alice Corp. and Mayo and ostensibly under 35 U.S.C. § 101. The petition presents three key questions:
- Whether claims drawn to solving specific problems restricting the usefulness of an existing computer-network technology recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
- Whether Alice’s two-step eligibility analysis under § 101 can properly subsume considerations of conventionality, functional claiming, and specificity of description—which traditionally fall under 35 U.S.C. §§ 102, 103, and 112.
- Whether the challenged claims are patent eligible. Patent No. 9,195,507.
Petition for Writ of Certiorari, Eolas Techs. Inc. v. Amazon.com, Inc., No. 23-1184 (U.S. May 1, 2024). Eolas argues that the Federal Circuit’s decision conflicts with Alice and threatens to render ineligible claims drawn to improving computer-network technology, even when those claims are directed to solving specific problems with that technology.
The ‘507 patent, which has a priority date of October 1994, discloses and claims a method for disseminating interactive content via the World Wide Web. In its decision, the Federal Circuit confirmed that the patent’s specification “describes problems specific to the World Wide Web and explains how the invention purports to solve them,” and that the patent’s claims recite the solutions as specific “configuration requirements of a World Wide Web browser, World Wide Web pages, and the World Wide Web distributed hypermedia network.” Despite these findings, the Federal Circuit concluded that the claims were not drawn to patent-eligible subject matter, stating: “Simply put, interacting with data objects on the World Wide Web is an abstraction.”
This conclusion, Eolas contends, conflicts with Alice‘s guidance that claims directed to “improv[ing] computer technology,” “improv[ing] an existing technological process,” and “solv[ing] a technological problem” are patent eligible. quoting Alice. The repeatedly quotes former USPTO Directors’ testimony that “cutting-edge fields like advanced software” are “most in need of patent protection to support their development,” and that uncertainty about whether computer-related improvements will be patent eligible has “stymied research and development, investment, and innovation, and has hurt competition and the U.S. economy.” Testimony of Hon. David Kappos & Hon. Andrei Iancu. Eolas argues that the Federal Circuit’s decision here, if left undisturbed, threatens all patents drawn to improving computer-network technology, including new AI related innovations.
Eolas also argues that the Federal Circuit’s decision violates Alice‘s caution that the “abstract idea” exception to § 101 must be construed and applied narrowly, lest it “swallow all of patent law.” The petition argues that the Federal Circuit improperly blended inquiries relating to conventionality, functional claiming, and specificity of description—the proper province of 35 U.S.C. §§ 102, 103, and 112—into the eligibility analysis under § 101. This blending is particularly striking in this case, Eolas argues, because the district court had resolved questions relating to conventionality, functional claiming, and the specificity of description in favor of the ‘507 patent claims—on a factually developed record—years before later finding, without factual support, that these same considerations rendered those same claims ineligible for patenting under § 101.
The Patent Eligibility Restoration Act of 2023 would also address these issues, but has little chance to pass this year. The bill aims to clarify and expand the scope of patent-eligible subject matter by eliminating the judicially created exceptions to § 101 and providing a more definitive list of ineligible categories. Under the proposed legislation, an invention would be considered patent-ineligible only if it falls within specific categories, such as mathematical formulas not part of a useful invention, mental processes performed solely in the human mind, unmodified human genes, unmodified natural materials, and certain economic, financial, business, social, cultural, or artistic processes.
Judges? Engaged in raw politics? Nawwww
link to lawyersgunsmoneyblog.com
And here comes a hack Texas judge, racing to the rescue of corporations of who want to keep employees bound up in non-compete clauses. Freedom!
link to lawyersgunsmoneyblog.com
I don’t know what any of you tell your clients when they ask about whether the claims will receive a 101 rejection, but I tell mine that 101 is a hot mess in the Federal Courts, and it’s even worse when you factor in 8000+ Examiners looking at 101 in 8000+ different ways.
The proposed act does not address the practical policy demands of patenting new and useful information, but allows it by not excluding it. In other words, a law that will not solve the problem but merely redistribute the injustice.
This invention is eligible in my system, I won’t bother with the test, but should be unpatentable because it’s as obvious as the sunrise.
I think we have a gap in post hoc obviousness analysis in relation to hindsight. We hear that hindsight is the giant sin, because what matters is what was obvious at the time of filing- what PHOSITA knew then, not now.
The secondary indicia already include commercial success, which is backward looking. The indicia should look too at the impact of the putative invention’s disclosure on PHOSITA. When a technology is new, there are few to zero PHOSITA existing at the time of invention. How could it be otherwise?
What you have are people skilled in nearby arts who will take up the new technology. When litigating very old claims to improvements of foundational aspects of new technologies for obviousness, how PHOSITA developed in those technologies seems very pertinent to how likely the claims were to be within the grasp of the putative inventor and not easily within the grasp of people using the technology for the first time.
If hindsight demonstrates that thousands of PHOSITA were moving in the same direction in various ways in a short amount of time, it should suggest that the claims were obvious. If a narrow set of niche experts took up the improvement as a result of the disclosure by the inventor, and that disclosure led to long term economic value, that’s hindsight that should work for the patentee.
If instead someone tried to plant stakes in the middle of a land rush, and their claims were just pi $$ in the wind at the time that meant nothing to anybody, it’s not in society’s interest to tax everyone years later to pay a people for basically doing nothing but noting that they were about to be amidst a stampede.
But that’s too obvious for our legal system, at least until another KSR makes its way up. This court hates patent cases anyway. They are too busy with politics to even care.
A powerful brief well deserving of a writ.
Which will be granted the same day h.e.l.l. freezes over.
And PERA? Would merely exchange one Pandora’s Box for another.
The real answer . . . the real way forward . . . the real restoration of American patent-protected innovation?
The just House-introduced RALIA: Restoring America’s Leadership in Innovation Act.
A powerful brief well deserving of a writ.
Which will be granted the same day h.e.l.l. freezes over.
+100
+1
PERA remains flawed (due to the insistence of certain Stakeholders) – the large (hollow) wooden horse remains.
The second sentence of the i “Questions Presented” intro makes this bold claim, that this patented invention greatly improved the nacent internet by:
“..for the first time—enabled secure and scalable “interactivity with remote objects on a client computer browser using distributed computing.” Pet. App. 12a”