DOJ Urges SCOTUS to Take Up Patent Eligibility

101 patent patent eligible subject matter

On May 24, 2022, the U.S. Solicitor General filed the government’s views on patent subject matter-eligibility as requested by the U.S. Supreme Court way back in May 2021.  The Solicitor General requested that the U.S. Supreme Court grant the petition for certiorari in American Axle & Manuf., Inc. v. Neapco Holdings LLC.[1]  The Solicitor General opined that analysis of Section 101 patent eligibility should be based on review of all elements of the claimed invention, and not the additional elements as required by the Alice/Mayo test,[2] noting that Supreme Court patent eligibility precedence “did not question the long-settled understanding that patent-eligibility of a process claim turns on the ‘process as a whole,’ and that ‘an application of a law of nature or mathematical formula’ may be patent-eligible even if the law or formula is applied to a ‘known structure or process.’”[3]

An application of a law of nature or mathematical formula may be patent-eligible even if the law or formula is applied to a “known structure or process.”

U.S. Solicitor General, brief of U.S. as Amicus Curiae

The Federal Circuit, in a split 2-1 decision, had first found the subject patent, U.S. Patent No. 7,774,911 (‘911), was patent subject matter-ineligible because it was directed to Hooke’s Law, a principle in physics and an otherwise ineligible law of nature for which a patent cannot be issued.  Upon rehearing for en banc consideration, the Fed Circuit denied the petition, with an even more convoluted split 6-6 panel of circuit judges, and eliciting a chaotic three separate opinions in favor of denying en banc rehearing, and three additional opinions in dissent.  The issue of §101 patent subject matter-eligibility has been a bane for patent practitioners since the first series of eligibility cases were decided by the Supreme Court: Alice Corp. v. CLS Bank Int’l,[4] which found software claims ineligible as abstract ideas; Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,[5] which found certain medical diagnostic claims were ineligible; and Mayo Collaborative Servs. v. Prometheus Labs., Inc.,[6] which found certain therapeutic claims ineligible.  Jurisprudential clarity from the Supreme Court would assist practitioners in predictability and stability in the patent eligibility case law.

We will continue to update the blog when the Supreme Court decides whether or not to grant certiorari in American Axle.

[1] 939 F.3d 1355 (Fed. Cir. 2019), aff’g Am. Axle & Manuf., Inc. v. Neapco Hldgs. LLC, No. 15-01168 (D.Del. Aug. 11, 2017), ECF No. 160, reh’g en banc denied, 966 F.3d 1347, 1348 (Fed. Cir. 2020), aff’g-in-part & vacating-in-part, 967 F.3d 1285, 1304 (Fed. Cir. 2020).  A very good summary of the American Axle procedural case history can be found in Judge Leonard Stark’s memorandum order

[2] See 35 U.S.C. §101; see also M.P.E.P. 2106.

[3] See Diamond v. Diehr, 450 U.S. 175, 187 (1981) (“the respondents here do not seek to patent a mathematical formula. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation.  Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.”).

[4] 573 U.S. 208 (2014).

[5] 569 U.S. 576 (2013).

[6] 566 U.S. 66 (2012).