By Procopio Partners Miku H. Mehta and Robert H. Sloss

Intending to bring more clarity and consistency to the patent examination process, the U.S. Patent and Trademark Office (USPTO) has been issuing new examiner guidelines over the last year focused on 35 USC 101. These include the so-called Berkheimer memo of April 19, 2018 (relating to step 2B analysis) and new subject matter eligibility guidelines announced on January 4, 2019 (relating to step 2A analysis). A Procopio colleague recently wrote that these actions could make the process of obtaining a patent more simple and straightforward, and may also result in a decrease in rejections under Section 101.

However, some recent U.S. Federal Circuit decisions may result in a more difficult path for many patent applicants, and the U.S. Congress remains a wild card. We break down these developments below and offer tips on how patent applicants should adjust to this changing landscape.

Two recent Federal Circuit decisions cast some doubt on the ultimate effectiveness of recent USPTO Section 101 guidance.  The underlying message from these cases is that following the guidance may enable applicants to overcome (or avoid entirely) a 101 rejection at the USPTO, but the resulting patent may prove to be unenforceable in court, and have a diminished value in licensing activities.

ChargePoint, Inc. v. SemaConnect, Inc.

Consider ChargePoint, Inc. v. SemaConnect, Inc., which involved several patents claiming inventions generally related to network-connected charging stations for electric vehicles. An illustrative claim of one of the patents involved an apparatus comprising a control device to turn an electrical supply on and off, a transceiver to communicate requests, and a controller coupled with the device and the transceiver that received instructions from a remote server.

The Federal Circuit on March 28, 2019, affirmed the district court’s grant of a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) on the ground that the claims did not recite patent-eligible subject matter under section 101. (Because motions to dismiss under Rule 12(b)(6) are brought at the beginning of a case, the grant of such a motion, before claim construction, is the court’s way of saying that the plaintiff cannot prove its case under any circumstances.) The Court held that “the specification suggests that claim 1 is directed to the abstract idea of communications over a network to interact with a device connected to a network” and that the claims did not contain an inventive concept, thus failing the test for patent eligibility set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).

This decision could easily be seen as troubling if you believe the patent claims invalidated by the Court recite physical electrical components that would seem to go well beyond mere abstraction, and would almost certainly meet the USPTO’s Section 101 guidance. Accordingly, although the ChargePoint opinion does not say a single word about that guidance, some may view it as an implicit repudiation of it.

Cleveland Clinic Foundation v. True Health Diagnostics LLC

In contrast to the ChargePoint decision, a different panel of the Federal Circuit said unambiguously four days later in Cleveland Clinic Foundation v. True Health Diagnostics LLC that the Court has no obligation to follow or give deference to USPTO guidance in ruling on whether particular claims are patent eligible under Section 101. In other words, the Federal Circuit is free to reach its own conclusions on patentability.

The patents at issue in Cleveland Clinic Foundation related to diagnostic tests for use in determining whether a person has a higher or lower risk of developing cardiovascular disease.  Specifically, the patents disclosed methods of measuring the level of myeloperoxidase (a marker for coronary artery disease) in a patient’s blood.

In a non-controversial decision given the current trend toward invalidating diagnostic patents, as well as the fact that the subject patents in this case were continuation applications of a patent that had previously been held invalid under 35 USC 101 by the Federal Circuit the Federal Circuit panel affirmed the district court’s dismissal of the case (also under Rule 12(b)(6)) because the claims were directed to “the natural law that blood MPO levels correlate with atherosclerotic [disease]” and contained “no additional inventive concept.”

What stood out in the opinion was the Court’s pointed rejection of Cleveland Clinic’s argument that the district court failed to give the appropriate deference to an applicable USPTO guidance on section 101 eligibility.  In reaching that result, the Court stated:

While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.

Congress Takes a Look

Given the ongoing activity at the USPTO and the Federal Circuit, several members of Congress are seeking input from stakeholders on whether 35 USC 101 needs to be amended. On April 17, 2019, a bipartisan group of Senators and House members announced a framework for new legislation building on feedback they have collected formally and informally in recent months.

This proposed framework includes the following key points:

• Maintain the four current statutory categories for patentable subject matter (i.e., process, machine, manufacture, composition of matter and improvements thereof);
• Delete “new and useful” from the language of the statute of 35 USC 101 (the purpose of this proposal seems to be related to the commingling of patentable subject matter with novelty and obviousness determinations, as manifested in the “significantly more” portion of the 35 USC 101 Mayo-Alice framework);
• Clarifying that eligibility under 35 USC 101 is independent of 35 USC 102, 103 and 112, and requires consideration of each and every element of the claim as a whole;
• Explicitly codifying categories of non-patentable subject matter that would replace the judicially created exceptions (e.g., fundamental principles of science, pure mathematical formulas, mental activities, principles of economics/commerce, articles of nature); and
• Ensuring that for claims that would otherwise not be eligible for patentability, generic technical or functional language cannot be used to save the claims

A Patent Application Strategy Going Forward

Based on these recent decisions of the Federal Circuit as well as other decisions, and the fact that the USPTO has issued several guidelines under 35 USC 101 based on the recent court decisions, patent applicants may want to consider one or more of the following strategies:

• When amending or arguing against rejections under 35 USC 101, avoid citing to a specific guideline or USPTO guidelines in a written response, and liberally use interview practice to discuss issues under 35 USC 101 with Examiners, to ensure that there is a proper understanding of the claim scope, rejections and how the Examiner is implementing the guidelines.
• For technologies that are particularly close to a Federal Circuit decision in terms of claim scope, fact pattern or the like (particularly precedential decisions), review the claim scope and arguments against those decisions, to ensure that the claim would be patent eligible not only under the USPTO guidelines, but also under the most proximal court decision in terms of the technical subject matter and the legal issues.
• Prior to citing a specific Federal Circuit decision during patent prosecution for a specific patent application, carefully consider whether such a citation is aligned with the legal arguments and positions that are being taken by the applicant in unrelated post grant proceedings.
• During drafting, review the specification and drawings to ensure that there is a clear explanation of structures and algorithms that are being used, and how those structures and algorithms are implemented. To the extent that USPTO guidelines and court decisions require certain explanations of patentable subject matter, carefully review the specification to make sure there is support for future claim amendments and arguments that may need to be made, either in the USPTO or post grant negotiation or litigation. For example, consider providing an explanation as to how the technique is not previously known.
• For graphical user interfaces, consider the possible benefit of using design patents as an alternative or parallel approach to utility patents; where utility patents are used, provide as much explanation as possible about how the claims are directed to a technological solution in the context of the user experience.

Of course, the most important step—one that we at Procopio are taking daily—is to continue monitoring developments at the USPTO, in the federal courts and in Congress. Calling the current state of play fluid is an understatement, but much is at stake for both patent applicants and owners, now and in the future.