Top Section 101 Patent Eligibility Stories of 2023 | Holland & Knight LLP
Fire up some hot cocoa, turn up the Perry Como Christmas album and settle in to read this year’s Top Section 101 Patent Eligibility Stories.
But, as always, this season is about gathering with family and friends, watching some mediocre (and some great!) movies, and enjoying good food and drink. So let’s start with the yearly holiday notes.
The Holiday Movies. Everyone has their list of can’t-miss holiday movies. Here is mine from each major streaming service:
- Netflix: “Feast of the Seven Fishes” (lots of heart); “Love Actually” (instructed to avoid hot takes), Klaus
- Hulu: “National Lampoon’s Christmas Vacation,” “Elf”
- Max (f/k/a HBO): “Four Christmases” (sorry), “You’ve Got Mail” (it’s a Christmas movie in our house)
- Apple+: “A Charlie Brown Christmas”
- Starz: “Die Hard” (yes, you read that right)
- Disney: “Home Alone,” “The Santa Clause”
- Hopefully You Already Own It: “The Holiday,” “The Snowman” (1982)
- Movies I Am Purposefully Excluding: “A Christmas Story” (not good), “It’s a Wonderful Life” (neither good nor a holiday movie), “Scrooged” (a rare Bill Murray miss), “Rudolph the Red-Nosed Reindeer” (1964) (prepare your toddler for nightmares)
The Holiday Food. And here’s what I have been and will continue eating and drinking:
- Panettone: You must keep a sweet bread on the counter for the holidays. This year, we’re opting to go with a blood orange and dark chocolate panettone from Sicily. We bought it at Eataly, and this is the closest I found online.
- Lucia Buns: Eaten in Sweden for the celebration of Saint Lucia, this bun is saffron-infused, easy to make and great to eat all winter. Here’s a recipe.
- Glogg: Marcus Samuelsson says that “seemingly every single meal during the month of December begins (and ends) with a glass (or three) of this warm ruby red mulled wine.” That’s a bit much for us, but we make it on Christmas Day. Here is Marcus Samuelsson’s recipe. Skål.
- Feast of the Seven Fishes: My parents host Christmas Eve, and my mom prepares the Feast. Last year’s Feast included cod, calamari, smelts, eel, anchovies, clams and octopus. Bon Appétit runs down a proposed coursing, but there are no hard-and-fast rules. If it sounds ridiculous to cook this at home, try a restaurant. Here’s a favorite in Chicago: Testaccio
Now onto the Top Section 101 stories of the year.
No. 3: The Supreme Court and Patent Eligibility – Not Going to Happen (Right?)
Petitioners continue to ask the U.S. Supreme Court to address Section 101 patent eligibility, and the Court keeps saying no thanks despite 1) the U.S. Solicitor General suggesting the Supreme Court review patent eligibility and 2) at least Justice Brett Kavanaugh wanting a patent eligibility case.
Earlier this year, the Supreme Court declined to hear patent eligibility despite the Solicitor General and the U.S. Patent and Trademark Office urging the justices to hear two patent eligibility decisions: 1) Tropp v. Travel Sentry et al. and 2) Interactive Wearables v. Polar Electro Oy, et al. (Disclaimer: Holland & Knight, including the author, represented the respondent in Interactive Wearables v. Polar Electro.) If you’re paying attention, it should be unsurprising that I wrote that the Supreme Court made the right decision, at least in the Interactive Wearables case.
After the American Axle denial in 2022 and a number of additional denials this year, it is time to stop expecting the Supreme Court to address patent eligibility.
No. 2: Patent Eligibility Reform – Going to Happen (Right?)
The Supreme Court will not address patent eligibility (according to me), so what about patent reform? As I wrote way back in May, “if you are someone who wants to see patent eligibility constrained, narrowed, or just reassessed, your best bet is likely with patent eligibility reform.” And the good news for you is that Sens. Chris Coons (D-Del.) and Thom Tillis (R-N.C.), along with Rep. Hank Johnson (D-Ga.), have all expressed “optimism” for patent eligibility reform. That said, I have also expressed skepticism on whether patent eligibility reform actually goes anywhere in the near future.
Just a month later, Tillis and Coons on June 22, 2023, introduced the Patent Eligibility Restoration Act of 2023. My comments on the proposed legislation are here, but here is my key takeaway:
That said, there is a major caveat in the proposed legislation related to processes that are “substantially economic, financial, business, social, cultural, or artistic.” Those processes “shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture” (emphasis added). If there were any question, the commentary to the legislation makes clear that a computer qualifies as a machine.
So, if my reading of the proposed legislation is correct, a business method that practically must be performed by a computer would be patent-eligible. This would be a big change and completely change the patent eligibility landscape.
Despite the optimism from Coons, Tillis and Johnson, I remain skeptical – but not as skeptical as I am about the Supreme Court taking a patent eligibility case in 2024.
No. 1: Patent Eligibility – The People Keep Writing
There has been a lot of interesting writing on patent eligibility, and I thought this would be a good place to highlight it. So here we go:
- My colleagues James B. Coughlan, Amy E. Simpson and Terry J. Wikberg co-authored a Law360 article discussing the treatment of Section 101 at the U.S. International Trade Commission (ITC), along with worthwhile tips for patent prosecutors and litigators. If you’re interested in patent litigation at the ITC, the article is worth your time.
- Drill bits as an abstract idea? Jeffrey Lefstin, a law professor at UC Law San Francisco, had a guest post on Patently-O where he discussed a recent ITC decision finding patent claims directed to diamond composite used in drill bits to be an ineligible abstract idea.
- My colleague Charles Weiss wrote about something new: PTAB Tackling Section 101 Patent Eligibility.
- Jason Rantanen and Nikola Datzov, writing for Patently-O, authored “The Predictability of the May/Alice Framework – A New Empirical Analysis.” They discuss the rhetoric of Section 101 being unpredictable but found that Section 101 proved to be more predictable than other areas of law over the past decade. I found this analysis very interesting. (Their conclusions, admittedly, aligned with my priors.) Chris Holman, also writing for Patently-O, provided some further thoughts on patent eligibility and predictability in response to the initial piece. (I intend to have a separate full post on this analysis, at some point.)
- I discuss the Patent Eligibility Restoration Act above, and Burman (Bud) Mathis, writing for IP Watchdog, asked whether the Supreme Court would find the Patent Eligibility Restoration Act unconstitutional.
- And since ChatGPT and artificial intelligence (AI) drive clicks, here is my post from earlier this year on AI weighing in on patent eligibility. tl;dr: Do not trust the outputs.
Did I miss a story? Do you hate my taste in movies? Let me know.
Have a great holiday! And let’s catch up in 2024.
