Eppenauer Explores Court Decisions that Help Define Patent Eligibility

Shook, Hardy & Bacon Seattle Managing Partner Bart Eppenauer discusses two recent Federal Circuit judgments that may help clarify patent eligibility standards in a July 11 IAM blog post, “Patent Eligibility in the US is Trending Upward with Two Federal Circuit Decisions.”

While many are disappointed at the U.S. Supreme Court’s decision to not hear Sequenom Inc. v Ariosa Diagnostics Inc., which had the potential to clarify uncertainties around Section 101 of the U.S. patent statute, Eppenauer notes, “the Federal Circuit issued two more positive decisions that indicate we may be turning the corner on patent eligibility.”

The first case Eppenauer cites is BASCOM Global Services Internet Inc. v AT&T Mobility LLC, which focuses on a system with customizable Internet filtering features.  Eppenauer explains the first key takeaway from this case is that “the decision adopts the view expressed in Enfish that practical improvements to the functioning of a computer are a key consideration in determining the eligibility of software claims.” Second, this decision “admonishes district courts that: ‘The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.’” Eppenauer adds, “As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The second case Eppenauer highlights is Rapid Litigation Management Ltd. v CellzDirect Inc., which examines a patent for a method that produces multi-cryopreserved hepatocytes for testing and treatment on liver biology. Eppenauer explains, “the Federal Circuit vacated and remanded the district court’s conclusion that the patent at issue was directed to a patent-ineligible law of nature,” and elaborates, “Similar to the Enfish decision, the Federal Circuit squarely focused on what the patent claim is ‘directed to’ under step one of the Mayo/Alice test.”

Eppenauer concludes, “I believe Enfish, BASCOM and Rapid Litigation represent a move toward restoring more balance to the Section 101 landscape. Patent owners should seize on the guidance in these cases and push hard on district court judges to construe facts and positions in their favor when addressing Section 101 inquiries, particularly with regard to the ‘directed to’ inquiry at step one of Mayo/Alice, and ‘inventive concept’ determinations under step two.”