Courts fail – only Congress establishes predictability

Do you agree with Judges Lourie and Newman? Does § 101 require a Congressional fix or should we let the courts continue to work things out?

I agree that the law of patent eligibility needs clarification by Congress. The current uncertainty in patent eligibility is the result of exceptions solely created by the Supreme Court. The uncertainty has existed for decades, with the scope of what is and is not patent eligible ebbing and flowing and tests for eligibility appearing and disappearing. The courts have on many occasions sought to devise a test for patent eligibility of computer implemented inventions. But even after all that time and effort, as the Federal Circuit noted, there is no “single, universal definition of ‘abstract idea.’” See Amdocs Ltd. v. Openet Telecom, 120 U.S.P.Q.2D 1527, 1531 (Fed. Cir. 2016).

A recent example of the confusion in the courts and the unworkability of the Supreme Court’s test is the decision in ChargePoint v. SemaConnect, Inc., App. No. 2018-1739, 2019 U.S. App. LEXIS 9191 (Fed. Cir. March 28, 2019). In this case, the issue was the eligibility of an invention relating to a distributed network of charging stations for electronic vehicles. The claims recited various hardware elements (such as electric supplies, electric vehicles, transceivers, servers, wide area networks, etc.). After evaluating the conventionality of claim elements, parsing the claims to their gist, and searching for inventive concepts, the Federal Circuit found these network claims ineligible because they were somehow directed to an abstract idea and did not contain an “inventive concept”. The patent owner was forced to spend time and money litigating (unsuccessfully) the eligibility of claims that most observers considered to be statutory subject matter.

Another illustration of the confusion is the contrast between the district court and Federal Circuit decisions in Cellspin Soft v. Fitbit, App. No. 2018-1817, 2019 U.S. App. LEXIS 18853 (Fed. Cir. June 25, 2019). The district court granted a motion to dismiss the case after finding the claims ineligible. The claims related to connecting a data capture device, such as a digital camera, to a mobile device so that a user can automatically publish content to a website. The district court also held that ineligibility was so clear as to make the plaintiff’s case “exceptionally meritless,” and the court ordered the plaintiff to pay $380,000 in attorney fees. The Federal Circuit vacated the dismissal and the attorney fees, because the claims recited a “plausibly inventive way of arranging devices and using protocols rather than the general idea of capturing, transferring, and publishing data.” Id. at *28.

These cases are very recent. That courts could still be so confused about patent eligibility, including such varied opinions in the same case, shows a degree of uncertainty that undermines the patent system. Meanwhile, since Alice v. CLS Bank was decided, the Supreme Court has denied certiorari in dozens of cases that might clarify patent eligibility. Even if the Supreme Court eventually grants certiorari, the doctrine of stare decisis would force the Supreme Court to rehash this unworkable jurisprudence. Furthermore, courts are not institutionally equipped to make significant policy decisions such as drawing the bounds of patentable subject matter. “Individual cases, whether heard by [the Federal Circuit] or the Supreme Court, are imperfect vehicles for enunciating broad principles because they are limited to the facts presented.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Lourie, J.) (concurring in denial of petition for rehearing en banc). Only action by Congress – as outlined in the draft patent eligibility and disclosure bill text – can establish clarity.