35 U.S.C. § 101 states, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
Recently, the interpretation of this statute has been a highly debated subject. (See, e.g., Congress’ Section 101 Fix Would Create a 112(f) Problem, Legislative Changes to Eligibility, and also As Stakeholders Await New 101 Bill, Responses to Tillis Underscore Need for Movement). Despite the debates, a framework does exist for determining when an innovation encompasses patent eligible subject matter. The Patent Office summarizes this framework in a flowchart available in MPEP § 2106(III). Nevertheless, courts are not required to follow these guidelines. Thus, without a legislative reformatting of 35 U.S.C. § 101, these guidelines may be abused, ignored, or sidestepped. For example, courts might effectively invalidate patents under a simplified 'wolf in sheep's clothing' subject matter analysis, while sidestepping key portions of the framework or a full-scale obviousness analysis.
In Chamberlain Group, Inc., v. Techtronic Industries Co., No. 2018-2103 (Fed. Cir. Aug. 21, 2019), the Federal Circuit does just this, and makes an obviousness decision under the guise of the subject matter eligibility framework. The claimed invention in the case is for a moveable barrier, such as a garage door, fitted with a wireless transmitter for communicating an operational status and unique identifier to an operator. The premise of the § 101 portion of the decision is that the subject matter of the patent is ineligible for protection because "...communicating information wirelessly, without more, is an abstract idea." (Chamberlin Group, Inc., No. 2018-2103 at 6). I think Alexander Graham Bell and Samuel F.B. Morse are turning in their graves.
For example, while not exactly scholarly support, Wikipedia says that wireless communication is "...the transfer of information or power between two or more points that are not connected by an electrical conductor." If you add in the electrical conductor, what you get is a type of communication that is nearly identical to the patentable communication created and occurring in The Telephone Cases (Dolbear v. American Bell Telephone Company, 126 U.S. 1 (1888)) and in O'Reilly v. Morse, 56 U.S. 62 (1854). The Federal Circuit's determination that wireless communication is an abstract idea appears to be wholly unsupported, and the subject matter is likely more closely related to transmitting symbols or vocal sounds telegraphically.
To be fair, the decision that wireless communication is an abstract idea may be an attempt by the Federal Circuit to pay homage to In re Nuijten, 500 F.3d 1346, 1357 (2007), which held that a transitory, propogating signal is patent ineligible subject matter. However, it is significant to note that the subject matter claimed in In re Nuijten was directed to a "signal". Wireless communication, especially when integrated with the practical application of communicating an operational status of a garage door, encompasses more than merely a transitory signal. Furthermore, whether or not claim elements are tangible or intangible is supposed to be immaterial to subject matter eligibility determinations. (See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2358-59 (2014), and also, ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)). Hence, the subject matter of this case was not ineligible subject matter, however obvious it may have been.
The Federal Circuit more clearly indicates that this decision should have been decided under an obviousness analysis when it states, "The specification admits the act of transmitting data wirelessly is 'well understood in the art,' and no other changes to the generically claimed moveable barrier operator are recited in the asserted claims or described in the specification." (Chamberlin Group, Inc., No. 2018-2103 at 7). In other words, the Federal Circuit is saying that nothing new is presented in the specification, and therefore the subject matter is ineligible. The better conclusion for this line of reasoning is that the specification includes nothing new in the art, so the invention is obvious. The problem with the Federal Circuit's conclusion is that innovators wanting to further improve wireless communication will have a much more difficult time achieving that goal if the entire technical field is preempted as ineligible subject matter.
Not only does the Federal Circuit abuse the § 101 framework in order to sidestep an obviousness analysis, it ignores a key aspect of the second step of that framework. The second step of the "Alice two-step" is determining whether an inventive concept is present in the claims. (See, Step 2B and pathway (C) in the flowchart in MPEP § 2106(III)). In considering the alleged ordered combination in its Step 2B analysis, the Federal Circuit states that one of the proper inquiries is "whether all of the steps 'as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately.'" (Chamberlin Group, Inc., No. 2018-2103 at 9-10). The Federal Circuit fails to say whether or not its inquiry looked at the steps of the alleged ordered combination "as a whole". Looking at the steps as a whole as opposed to looking at the steps separately is critical because even known process steps may be arranged in a unique way to represent patentable subject matter. (See, Rapid Litigation Management Ltd. v. CellzDirect, 827 F.3d 1042, 1051 (Fed. Cir. 2016), stating in dicta, "That each of the claims' individual steps (freezing, thawing, and separating) were known independently in the art does not make the claim unpatentable.").
In order to prevent courts from further abusing, ignoring, or sidestepping the 35 U.S.C. § 101 framework for determining patentable subject matter, legislative reform is necessary. Current proposed amendments to § 101 include removing the word "new" from the text of the statute. This may help prevent courts from substituting an in-depth obviousness analysis with the gate-keeping function of the § 101 inquiry.
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