Bongiorno v. Hirshfeld

Question(s) Presented

“Section 101 of the Patent Act provides that ‘[w]hoever 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 therefore, subject to the conditions and requirements of this title.’ The decision in Alice Corp. Pty. Ltd. v. CLS Bank Inti, 573 U.S. 208, 212, 221, and 226 (2014), found a method of ‘mitigating “settlement risk”‘ to be a patent-ineligible ‘abstract idea implemented on a generic computer.’ However, since that decision did not need to ‘delimit the precise contours of the “abstract ideas” category,’ the bounds of the category have expanded unabated, vacating rights afforded by section 101 for a new and improved machine. The questions presented are:”

1. “Whether a new and non-obvious ‘dedicated electronic unit‘ with new hardware structures including a plurality of ‘special function buttons [to] enable the user to more easily navigate through the software’ (App. 73a), which ‘increase its usefulness,’ and its ‘effectiveness,’ is a patentable ‘machine’ in accordance with Cantrell v. Wallick, 117 U.S. 689, 694 (1886).”
2. “Whether presumptive patent-eligibly of a ‘new and useful improvement’ to a ‘machine’ under section 101 is eviscerated because the analog of the mechanical functionality provided by the physical ‘machine’ components (e.g., the ‘function buttons’) and the corresponding software functionality of the ‘dedicated electronic unit‘ can be programmed to operate in a similar manner using the touch screen of a ‘generic computer.’”

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