You may have noticed that I haven’t been posting since November. I feel like IP law has hunkered down and I find spats over jurisdiction and even the appeal urging the S. Ct. to validate IPR judgeships to be less than inspiring topics for a pharma/biotech blog. But I have remained some hope that either the Supremes or Congress will do something to mend s. 101 that has led to Judge Moore’s conclusion that the Fed. Cir. is “bitterly divided” over the requirements for patent eligibility. Before you read any further, please go back and re-read the posts I did on the earlier panel decision and the opinions accompanying the 6/6 split that denied rehearing en banc. These posts are dated August 3, 10, 11 and 14, 2020.

The Petition is dated December 28^th and authored by Steptoe and Johnson. It is 39 pages long.

The only claim reproduced in the Petition is claim 22 of U.S. Pat. No. 7,774,911. It is directed to a way to reduce unwanted driveshaft vibrations by inserting “liners” into the hollow driveshaft that attenuate shell mode vibrations and bending mode vibrations. Petitioner argues both that this method met a long-felt need in the auto industry and that defendant Neapco simply copied the invention. Dissecting the first Fed. Cir. panel opinion, the petitioner (“AA”) argues that even though claim 22 does not recite Hooke’s Law or its simple application to reduce two modes of vibration in a driveshaft, but rather: “[W]hat mattered to the majority was that the claims allegedly failed to teach how to make and use a tuned liner, even though Section 112 already requires the specification teach how to make and use the invention.”

The panel went on to find that there was no inventive concept, even though the method of making the modified driveshafts met a long-felt need in the industry, and then was simply copied by Neapco. The petition pointed out that Judge Moore argued that importing s. 112 factors into a 101 inquiry raises questions of fact which should have precluded summary judgment. In footnote 3, AA noted that the district court, Neapco and the panel articulated 5 different “ineligible concept[s] to which the claims are allegedly directed” including that the method is an “abstract idea” and two different natural laws – Hooke’s law and friction damping.

But back to the s. 112 issue. To shoehorn this case into the broad patent claims ruled ineligible in O’Reilly v. Morse, the Fed. Cir. majority wrote:

“The claim itself…must go beyond stating a functional result; it must identify ‘how’ that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim or to concrete action in the case of a method claim.”

There is no footnote here but I would note that the majority is indirectly affirming that methods of medical treatment involve “concrete action” while claims to a diagnostic method based on the recognition of the utility of a naturally occurring correlation do not. Of course, invalidating a claim to a method to make an auto part—I don’t care if the part is improved or not—expands the reach of s. 101 far beyond the judicial exceptions articulated in Chakrabarty. As Judge Moore noted: “This blended 101/112 defense [that she called the ‘nothing more test’ driven by ‘Enablement on Steroids’] is confusing, converts fact questions into legal ones and eliminates the knowledge of a skilled artisan[and ultimately will lead to insanity]”. Here’s how AA summed up the majority’s arguments:

“According to the Federal Circuit, patent claims alone must sufficiently teach how to make and use the claimed invention. If a patent claim does not satisfy these ‘how to’ requirements and, instead ‘invokes a [patent ineligible concept], and nothing more to achieve the claimed result,’ the claim is ‘directed to’ a patent ineligible concept….Under the new expansion , whether a patent claim ‘invokes a [patent ineligible concept], and nothing more’ is for a district court to decide as a matter of law and for the Fed. Cir. to review and decide de novo.”

A list of questions of fact in the present case follows that AA argues should preclude summary judgment: As Judge Moore explained “the majority’s ‘Nothing More test’ leaves the science to the appellate judges to decide de novo.”

Well, I have only reached page 27 of the Petition and will stop, for now, at the title of the next section: “III. The entire patent system is calling for guidance from the Court. A. The Federal Circuit is ‘bitterly divided’ on Section 101, but unanimous in its cries for help.” In the next post, I will skip over all the pleas from the Fed. Cir., industry leaders, scholars, current and former leaders of the PTO and the Solicitor General and review the AA’s arguments that “This case presents the ideal vehicle for the Court to provide much needed guidance on Section 101.”