SCOTUS Should Clear Up Section 101 Patent Test Confusion

In an article published on August 27, 2020 in Bloomberg Law, Michael Cicero provides insight on the recent orders issued by the Federal Circuit involving last year’s ruling on the patent eligibility test, which have only clouded the issues more.

In a July 31 order, the U.S. Court of Appeals for the Federal Circuit denied full panel review of its controversial 2019 panel decision in American Axle & Mfg. Inc. v. Neapco Holdings LLC, which had extended the doctrine of patent ineligibility under 35 U.S.C. § 101 to mechanical inventions.

Instead of granting full panel review, the Federal Circuit issued a modified 2-1 panel decision that continued to hold several of the litigated patent claims ineligible under § 101 for being directed to a “law of nature,” while remanding the case back to the district court for further analysis of another set of claims. Dissenting from that decision, Judge Kimberly A. Moore remarked: “The majority’s holding that these claims to manufacturing an automotive drive shaft are ineligible has sent shock waves through the patent community,” citing several publications, including Cicero’s December 2019 Bloomberg Law article that had discussed the original panel decision.

“The judicial acrimony generated in American Axle reflects a state of confusion that screams for U.S. Supreme Court review of the modified panel decision,” explained Cicero. “Earlier this year, the Supreme Court denied review of several cases presenting Section 101 issues, signaling reluctance to address any more Section 101 cases.”

Cicero said it’s up to the U.S. Supreme Court to review the case to end the abject uncertainty plaguing Section 101 law. Barring intervention by either the Supreme Court or Congress, abject uncertainty will continue to plague Section 101 law, and patent owners contemplating litigation will now still need to account for the possibility of a patent ineligibility defense, regardless of the type of invention embodied in the patent claims.

“Prospective patent applicants with inventions involving trial-and-error iterations should strive to both stress in the specification and to recite in the claims, all novel aspects of the invention beyond performing such iterations, so as to provide as many factual distinctions from American Axle as possible,” said Cicero.