This isn’t precisely breaking information, and different commentators have mentioned it, however I believe that the Solicitor General’s Amicus Brief urging the Supreme Courtroom to grant cert. in American Axle v. Neapco Holdings, Enchantment No. 20-891 (Could 2022) incorporates language that might be useful to any inventor confronted with a ruling that an invention will not be patent-eligible as a result of it’s an try to monopolize a pure legislation. If the information of this case have turn into hazy, please re-read my posts of January 13th and 11th, 2021, on the proceedings under. American Axle petitioned for cert. after shedding at the Fed. Cir. degree and the Supreme Courtroom requested the Solicitor Basic to present her opinion on the query of “[w]hether claim 22 of petitioner’s patent, which claims a process for manufacturing an automobile driveshaft that simultaneously reduces two types of driveshaft variation, is patent eligible under Section 101.” The Solicitor Basic’s transient stated that it needs to be patent eligible.
This place is well-known by now, however two points of the transient deserve some consideration. The first is that the Temporary gingerly dances round the Mayo determination, making an attempt to justify it whereas not expressing a lot in the approach of approval: “The Mayo Court concluded that the various steps of the particular claimed process before it, ‘when viewed as a whole, add[ed] nothing significant beyond the sum of the parts taken separately’”. Extra importantly, the Temporary urges the Courtroom to see that “Holistic consideration of a claim at the second step [of the Mayo/Alice analysis] is incompatible with an approach that ignores individual claim elements that are conventional in isolation.” The transient goes on to urge:
“Clarification of this point is especially important because the question that a court addresses at step two of the Mayo/Alice framework—i.e., whether the elements of a disputed patent claim ‘are sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the concept itself’…is coextensive with the ultimate question of patent-eligibility in many cases where a court reaches that step…step-two analysis should be performed in accordance with the longstanding principle that a combination of claim elements may reflect a patent-eligible invention even though each individual element was part of the prior art.”
This sounds routine, however what’s “novel” in my view is how the Temporary goes on to counsel how the step 1/step 2 evaluation needs to be carried out:
“Under that approach to step two, the step one determination whether a particular claim is ‘directed to’ a natural law can simply serve as an initial screen, identifying claims that warrant further scrutiny to ascertain whether they claim patent-eligible applications of laws of nature or instead effectively claim the natural laws themselves. By contrast, if the court at step two were foreclosed from considering claim elements that have traditionally been viewed as relevant to patent-eligibility, consideration of these elements would need to be incorporated in some fashion into the step-one inquiry.”
In different phrases, if the 1st step identifies a pure legislation in a declare at the 1st step in order that it has a foundation to proceed to step two, the claims shouldn’t be routinely doomed if the remaining declare parts, seen holistically, and never in isolation, make manifest a patent-eligible Part one class of invention. Or, as the Temporary frames the query: “[I]n applying Section 101 to the more traditional industrial manufacturing method at issue here, the Court can more readily draw on historic practice and precedent to clarify the governing principles, which can then be transferred to other contexts.”
This quantities to urging the Courtroom to grant cert. as a result of this invention is simple to perceive, and never a kind of messy software program or medical evaluation claims. Even when the Courtroom denies cert., the strategy proposed in this Temporary might change the minds of at the least a few of the Fed. Cir. judges which have steadfastly voted in opposition to rehearings en banc that may put Part 101 again in its place.