Here’s the latest.

What’s Eligible for a Patent? The Section 101 Muddle Explained

Reported By Perry Cooper on BloombergLaw

Section 101 of the Patent Act has become a dominant and divisive issue in patent law over the past decade. Despite the Supreme Court’s attempts to define the bounds of the three exceptions to eligibility it created, the line between patentable and unpatentable subject matter remains unclear. As Perry Cooper emphasizes, the Supreme Court’s language for laws of nature, natural phenomena, and abstract ideas, has created uncertainty and disarray in litigation.

The subjective nature of those inquiries means that results vary depending on the person reviewing the patent. Software inventions are vulnerable to challenges that they are abstract unless they improve the functionality of a computer or network platform. Diagnostic medical tests often get thrown out as ineligible, while method of treatment claims fare better.

Bitterly split decisions in the Federal Circuit has caused many legal scholars and lawyers to look to the Supreme Court to provide clarity on the issue. However, Perry states that the high court may be looking to Congress to resolve the confusion.  

In 2019, lawmakers unveiled the text of a draft bill that would have rolled back certain Supreme Court decisions, including Alice. Efforts to introduce a legislative proposal stalled amid disagreement among industry representatives about the scope of the problem and potential solutions. Any momentum the legislation had going into 2020 was derailed by the pandemic.

Fed. Circ. Agrees Fax Machine Patents Are Indefinite

Reported By Dani Kass on Law360

In December 2012, Infinity Computer Products Inc. accused Oki Data Americas Inc. of patent infringement. The patents at issue involved the use of a fax machine as a computer printer or scanner. The Federal Circuit affirmed a lower court ruling that held two terms in Infinity’s patents as indefinite. The first term at issue was “passive link,” which refers to the connection between a fax machine and a computer. The second term the court found to be indefinite was “computer” itself. Dani Kass describes the court’s conclusion.

The Federal Circuit fully affirmed Judge Stark’s decision, which namely faulted Infinity for using different definitions of “passive link” when trying to get past initial rejections of its patent application and when defending its patent in the reexamination proceedings. Judge Stark had said the differences made it impossible to figure out where the passive link ended and the computer began, according to Wednesday’s opinion.

Counsel for Oki Data expressed the importance of the Federal Circuit’s decision on not only the indefiniteness standard in patent law but also on the “effect of inconsistent statements in the prosecution history.”

Afghan’s Land Takings Claim Against U.S. Army Rejected on Appeal

Reported By Daniel Seiden on BloombergLaw

In Sharifi v. United States, the Federal Circuit ruled that an inheritance agreement between plaintiff and his siblings was inadequate to establish ownership under Afghanistan law. Plaintiff Sharifi claimed that the U.S. Army took his property without compensation in violation of the Fifth Amendment when it demolished houses and trees to build a combat outpost. According to Sharifi, the land belonged to his grandfather. The land then passed to Sharifi and his siblings who then subdivided the land. As Daniel Seiden explains, the Federal Circuit found that Sharifi failed to show ownership of the land.

Under Afghan law, several types of documents may serve as proof of ownership, such as documents from a legal court, a decree issued by the emirate and the prime ministry, and tax receipts, among others, the court said.

Sharifi’s letters between him and his grandfather, however, were insufficient to prove ownership of the land. Thus, the Federal Circuit ruled that the suit was properly dismissed by the U.S. Court of Federal Claims.