Perhaps the most apt characterization of the current state of the law on patent-eligible subject matter under 35 U.S.C. § 101 is attributable (albeit perhaps apocryphally) to the ancient Greek philosopher Heraclitus: everything flows. (Everything, ebbs, too.) Recent activity in the courts as well as in the USPTO’s Patent Trial and Appeal Board (PTAB) certainly bears this out.
Consider: a Federal Circuit panel recently found claims patent-eligible in the recent Ultramercial case, this decision coming after a vacation and remand from the Supreme Court of an earlier Federal Circuit holding that claims there recited patent-eligible subject matter. Moreover, Ultramercial came mere weeks after a deeply divided en banc Federal Circuit held claims not patent-eligible, albeit without reaching a majority, in the CLS Bank case. The PTAB has begun to hold claims unpatentable under Section 101, the first such case being reported here, and a series of such cases being conveniently summarized on the PatentlyO blog. Furthermore, one District Court recently held claims directed to parsing data packets not patent-eligible in the wake of CLS Bank. However, two more recent cases, one decided the day before Ultramercial, and one five days after, have held claims patent eligible under 35 U.S.C. § 101.
In DDR Holdings, LLC v. Hotels.com, L.P., No. 2:06-cv-42-JRG (E.D. Texas. June 20, 2013), the court held claims patent-eligible in the context of defendants’ motions for judgment as a matter of law. Claims of U.S. Patent Nos. 6,993,572 and U.S. 7,818,399 were directed to an e-commerce system, including outsourcing the provision of webpages. A defendant argued that “the claims disclose the business method of making two e-commerce web pages look alike; the method is no more than an abstract idea that is not dependent on computer components.” The court disagreed, concluding that the claims were “not ‘so manifestly’ abstract as to override the statutory language of § 101.”
The court explained that the claims required “physical linkages,” e.g., “coupling between the data store and the processor, the data store storing a look and feel description associated with a host web page and the processor programmed in certain ways to serve a composite web page.” Further, the claims passed the machine-or-transformation test. The fact that the inventor had used the word “idea” in testimony describing his invention was not dispositive; all inventions involve ideas at some level.
In Oleksy v. General Electric Co., No. 06 C 02145 (N.D. Ill. June 26, 2013), claims of U.S. Patent No. 6,449,529, directed to a “method for determining machining instructions to cut the root sections of turbine blades” were held patent-eligible. The court explained that the patent’s independent claim “describes a process for an application of a normally unpatentable mathematical formula, the ‘trigonometric analysis.’” The court therefore looked to whether the claims recited an additional, patentable, “inventive step.” In reaching its conclusion that the claims did so, the court relied heavily on Diamond v. Diehr, in which the Supreme Court held patent-eligible claims directed to a method of curing rubber.
Like the method in Diamond, “Oleksy’s process is patentable despite its reliance on mathematical equation because of the way the equation is integrated into a process that also uses steps that are not obvious, already in use or purely conventional.” Specifically, Oleksy’s claim, after reciting a trigonometric analysis, recited a novel last step of “use of a convex tool path combined with simultaneously rotating the work piece.” Consequently, “Oleksy did not patent a mathematical formula, he patented a unique process of milling a root section of a turbine blade that happened to include the use of a mathematical formula as part of the process.” Accordingly, the court denied GE’s motion for summary judgment on the Section 101 issue, and granted Oleksy’s.