Patent litigation being already being solved in the status quo.

[David, 01-23-2024, Senate Judiciary Committee, “Questions for the Record from Senator Alex Padilla Senate Judiciary Committee “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System”,” https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_qfr_responses_-_jones.pdf, date accessed, LHG]

How did Alice/Mayo impact patent litigation and how would PERA impact patent

litigation?

The U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208

(2014), has had a tremendously beneficial effect on patent litigation in the United States.

During the decade and a half before Alice, virtually any type of subject matter was

patentable under the Federal Circuit’s misguided decision in State Street Bank & Trust

Co. v. Signature Financial Grp., Inc., 149 F.3d 1368 (Fed. Cir. 1998). Alice overruled

State Street and returned the patent system to its roots. Under Alice, patents once again

can only be obtained for improvements to technology.

Thus under Alice, patents can no longer be obtained or enforced for business methods and

other human activities that have traditionally been outside the patent system. Alice has

been robustly applied over the last decade to block patents for ideas such as running a

type of business; for advertising and sales strategies; for investment schemes, ways of

structuring a transaction, or financial instruments; and for copyrighted media content,

games, and other forms of entertainment.

Alice has also restored the long-standing requirement, first articulated by the U.S.

Supreme Court in Corning v. Burden, 56 U.S. 252 (1853), and O’Reilly v. Morse, 56 U.S.

11 David O. Taylor, Patent Eligibility and Investment, 41 Cardozo Law Review 2019 (2020);

https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3340937.

12 See, e.g., Elliott Mason, Quantum patent trends update: 2022 (February 13, 2023) (listing HTIA members as three

of the top ten filers of quantum patents); https://quantumconsortium.org/blog/quantum-patent-trends-update-2022.

13 Id.

62 (1853), that a patent must claim an actual means or method for achieving a result.

Under this well-settled rule, it is improper for a patent to simply claim the result or

objective itself, and thereby claim all possible means of achieving that objective

(including those invented by others in the future). This rule prohibits, for example,

software patents that end with a claim to “a module that solves for X”—and that can then

be asserted against anyone who does the real work of figuring out the solution to problem

X.

PERA would destroy all the progress made since the Alice decision. Under PERA, any

type of subject matter—business methods, advertising techniques, legal contracts, games

and entertainment, or claims to mere objectives or results—could be claimed in a patent

so long as the invention cannot be “practically performed” without the use of a “machine

or manufacture.”

As witnesses testifying in support of PERA made clear at the January 23 Senate IP

Subcommittee hearing, the “practically performed” test would mean that any process that

requires communicating across long distances in “real time,” or that requires storage and

retrieval of large amounts of data—and thus practically requires the use of computers and

electronic communications equipment—would become patent eligible. Under PERA, a

patent would no longer need to describe and claim an improvement to technology.

Rather, to be eligible, the patent need only use technology—including off-the-shelf

technology that was developed by others.

PERA would also effectively overrule hundreds of decisions of the U.S. Court of Appeals

for the Federal Circuit that have issued over the last ten years. It is difficult to fathom

just how destabilizing PERA would be for the U.S. patent system and for the American

manufacturing and technology sectors. The result would be enormous uncertainty for a

broad spectrum of U.S. industries and billions of dollars in additional (and unnecessary)

litigation costs, most of which would be passed along to American consumers in the form

of higher prices.