Novelty is not relevant in determining subject matter eligibility, but claim scope is.

In the aftermath of the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, there was a fear that the Supreme Court had brought the issue of novelty into the determination of patent eligibility under 35 U.S.C. § 101. This fear is not entirely unjustified as the second step of the Alice § 101 analysis calls for determining if the claims contain an “inventive concept” sufficient to make the claimed abstract idea patent eligible. Whether or not the fear was real depends on how courts interpret the Alice case. The district court in Peter Wolf v. Capstone Photography, Inc.cacd-2-13-cv-09573-49 (C.D. Cal. Oct. 28, 2014) confirms that novelty is not relevant to subject matter eligibility, yet illustrates why the fear is real.

The defendant in Peter Wolf v. Capstone Photography moved for judgment on the pleadings based on invalidity under § 101. The plaintiff patent owner opposed the defendant’s motion arguing that the claimed process is not abstract because it is distinct from prior art methods. The district court rejected the plaintiff’s argument noting that the novelty of any element or step in a process is of no relevance in determining whether the subject matter of a claim is patent eligible under § 101 citing Diamond v. Diehr, 450 U.S. 175 (1981).

The district court found however that the scope of the claims is relevant to the § 101 analysis under the second step of the Alice test. The district court found the patents did not claim an “inventive concept” because the claims were insufficiently “narrow” to claim something “significantly more” than the claimed abstract idea itself.

Essentially, the court in the Peter Wolf case found that novelty is not relevant in the first step of the Alice test, but it is relevant in the second step of the Alice test. By analyzing the scope of the claims in applying the second step of the Alice test, the court did make novelty relevant to subject matter eligibility; maybe not for analysis in litigation, but for a practitioner drafting claims.

Patent practitioners adjust the scope of the claims they draft to be as broad as possible, yet sufficiently narrow to meet the novelty requirement. The court in the Peter Wolf v. Capstone Photography case requires practitioners to adjust the scope of their claims to be sufficiently narrow to meet the subject matter eligibility requirement. The problem for patent practitioners is that any change to the scope of a claim affects how the claim is compared to the prior art. Adjusting the claim scope to meet these two different requirements creates a risk of giving otherwise patentable subject matter up to the public domain.

It will be interesting to see how other courts, the Federal Circuit in particular, address the relevance of claim scope in analyzing whether a claim recites an inventive concept sufficient to confer patent eligibility. Hopefully, the Peter Wolf case does not signal a trend.

Guidance for determining subject matter eligibility of claims involving laws of nature expected soon.

On March 4, 2014, the USPTO published a guidance memorandum titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance).   The new guidelines express the Office’s approach to examining claims under 35 U.S.C. §101 in the wake of court decisions in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___ and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.___.

The felt and expected impact to the pharmaceutical industry was well expressed by Ms. Sherry Knowles and summarized in the article of the link below:

On September 17, 2014 at the biotechnology/chemical/pharmaceutical (BCP) customer partnership meeting, Ms. June Cohan, legal Advisor with the USPTO’s Office of Patent Legal Administration, publicly stated that a revised guidance would be released.  For more details follow the link below.