Patent Eligibility – Navigating the Pitfalls of 35 USC § 101
Could Albert Einstein have patented the equation, E=mc2 under current United States patent law? The short answer is: no. Even though the equation might have been new, the equation is not patent eligible subject matter. What about a process that utilizes E=mc2 to generate electricity? The short answer is: it would depend on the specific wording of the patent claim.
In the United States, there are three primary legal requirements that must be satisfied to obtain a patent. First, the claimed invention must be new (i.e. it must meet the novelty requirement of 35 U.S.C. § 102). A patent claim that does nothing more than recite an old and well known device or process will not satisfy the novelty requirement. Second, according to 35 U.S.C. § 103, one cannot patent an invention if differences between the claimed invention and prior art devices or processes are obvious. Third, pursuant to 35 U.S.C. § 101, patent claims must recite patent eligible subject matter.
According to 35 U.S.C. § 101, “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.”
If an inventor were able to obtain a patent on a law of nature, then the public could be viewed as infringing upon the inventor’s patent by simply performing normal day-to-day tasks within the environment they live in. However, courts have held that claims to certain categories of inventions are not patent eligible under § 101, even if the claim recites a process, machine, manufacture, or composition of matter. Examples of these categories include abstract ideas and laws of nature. However, can an abstract idea or law of nature be transformed or used in some way to venture out of patent ineligible subject matter and into patent eligible subject matter?
In Diamond v. Diehr, 450 U.S. 175 (1981) the United States Supreme Court held that a claim that included a mathematical formula in a process of molding rubber recited patent eligible subject matter under § 101. The court noted that algorithms, mathematical formulas, and laws of nature cannot (by themselves) be the subject of a patent. However, the court stated that “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012), the United States Supreme Court laid out a two part test for determining whether an applicant is seeking to patent a judicial exception itself, or a patent eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.
How likely an inventor is to succeed in obtaining patent protection for an invention can be dependent upon just how new the innovation is, what similarities the invention has with existing items within the same field, and various factors that are specific to the situation. Even if a patent claim recites “something” that is both new and not obvious, the claimed invention will nevertheless not be patent eligible if it does not meet the subject matter requirements of 35 U.S.C. § 101 as construed by the courts.
In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. Oct. 3, 2019), the Federal Circuit affirmed the district court’s grant of summary judgement, in a 2-1 decision, finding American Axle’s claims covering “a method of manufacturing a shaft assembly of a driveline system” patent ineligible under 35 U.S.C. § 101.
At issue was whether American Axle’s claims amounted to a utilization of a natural law in a particular context or whether American Axle’s claims included inventive concepts that were not conventional or routine. Accordingly, the two-step test set forth in Mayo and Alice was applied. At step one, the Federal Circuit held that “the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law.” American Axle argued that the inventive concept to which the claims were directed was the tuning of a liner in order to produce frequencies that dampen shell mode and bending mode vibrations simultaneously. The Federal Circuit rejected this argument, finding that neither the claims nor the specification described how to achieve such tuning. At step two, the Federal Circuit held that “nothing in the claims qualifies as an ‘inventive concept’ to transform the claims into patent eligible matter.”
Judge Moore dissented. Judge Moore stated that the majority reduced the Alice/Mayo two-part test to a single inquiry: “If the claims are directed to a law of nature…then the claims are ineligible and all evidence of non-conventionality will be disregarded or just plain ignored.” Judge Moore believed the majority’s concerns with the claims had “nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled.”
In Thales Visionix Inc. v. United States, Appeal No. 2015-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit held that transformation from one reference coordinate system to another was patent eligible. In Thales, the court stated, “[t]hat a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction.” Judge Moore penned the majority opinion in Thales. In that opinion, Judge Moore cited the Supreme Court in Diehr, stating, “claims are patent eligible under § 101 ‘when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect.’” Judge Moore concluded in the Thales decision, “[f]ar from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. As such, these claims are not directed to an abstract idea and thus the claims survive Alice step one.”
Navigating the various requirements of § 101, § 102, and § 103 of 35 USC can be difficult. We have many well trained and highly experienced professionals to help guide you through the process of pursuing patent protection. Contact us today, we’d be happy to discuss how we can be creative advocates for your innovation.
This post was authored by Dr. Ryan J. Flaherty, a patent agent of Price Heneveld LLP. Learn more about Ryan’s practice and contact him here.