Dissenting Federal Circuit Judge Further Exposes Need for Patent Reform Legislation

Patent eligibility law interpreting Section 101 of the Patent Act has once again come under fire, this time from a dissenting judge of the United States Court of Appeals for the Federal Circuit.

"The current law of § 101 has diverged from its historical purpose. Numerous scholars, practitioners, and Congresspeople have observed that the current law of § 101 creates uncertainty and stifles innovation." Realtime Data LLC v. Array Networks Inc. (Fed. Cir. Aug. 2, 2023) (Judge Pauline Newman, dissenting). 

Judge Newman correctly points out that the case would have been more appropriately decided under 35 U.S.C. § 112, rather than § 101. The majority opinion in Realtime Data found fault with the level of disclosure in the patents-in-suit, which is indeed an issue of enablement or written description, both requirements governed by § 112. For example, page 29 of the opinion states: "Realtime also directs us to an encoder performing compression in claim 1 of the ’458 patent. Yet neither the claim nor the specification describes specific, unconventional encoding or compression techniques."

Judge Newman's dissent underscores why Congress needs to improve upon, then pass, the Patent Eligibility Restoration Act of 2023, discussed in separate posts as Part 1 and Part 2.