The U.S. Supreme Court (“SCOTUS”) has pending petitions for writ of certiorari in patent cases involving questions of Section 101 patent eligibility jurisprudence post-Alice Corp. v. CLS Bank International in 2014. Alice, a unanimous decision, shook the patent world’s foundations in 2014, leaving computer program inventors and the patent legal community in turmoil regarding the patentability of computer-implemented inventions. Now, SCOTUS has the ability to provide some context or clarification to that ruling. This blog will follow these cases as new developments arise in each one.

American Axle v. Neapco

American Axle & Manufacturing v. Neapco Holdings poses a question to the Court regarding Section 101 “abstract idea” jurisprudence that has been a cornerstone of patent law since Alice. In October 2019, a Federal Circuit panel majority ruled that American Axle’s method for manufacturing propshafts was directed to an abstract idea because of its application of Hooke’s Law to lessen vibrations in the propshaft. One Circuit Judge authored a dissent calling the majority’s ruling “validity goulash” arguing that “Section 101 should not be this sweeping and manipulatable.”

Since American Axle filed its petition for cert in December 2020, many amicus briefs have been filed arguing that the Supreme Court should grant the petition to clarify Section 101 eligibility, including one brief signed by former USPTO Director David Kappos arguing that “Section 101 is gravely damaging our country’s ability to succeed in the race for global innovation leadership.” On May 3, 2021, the Supreme Court invited the U.S. Solicitor General to file a brief on the issues raised by American Axle’s cert petition. One has yet to be filed.

Other Cases of Interest:

Ameranth, Inc. v. Olo, Inc. and Spireon, Inc. v. Procon Analytics, LLC

As of May 25, 2022, briefs on Petition for Cert have been filed in the Ameranth case, and Procon has filed their response brief to Spireon’s Petition for Cert on May 23, 2022. These cases present similar issues that directly concern Alice and clarifications on 1) the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one (1) of the Alice two (2)-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101; and 2) whether patent eligibility (at each step of the Court’s two-step framework) is a question of law for the court, based on the scope of the claims alone or a question of fact based on the state of art at the time of the invention.

The IP team at Houston Harbaugh will continue to monitor these potentially pivotal cases and provide updates to our clients and readers. If you have any questions or concerns regarding patent-related legal issues, please contact Attorney Bauer at bauerca@hh-law.com.

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