Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. A renewed effort to move forward the bipartisan, anti-counterfeiting “Shop Safe Act” bill is afoot. The bill focuses on incentivizing e-commerce platforms to take steps, among other things, to verify sellers’ identities, and to remove sellers and their products where there are repeat violations, as well as requiring sellers to validate the authenticity of their goods. An abbreviated one-page summary of the bill can be found here. While the “devil is in the details,” this would be a step in the right direction as far as stemming counterfeit sales online goes.
2. In a recent opinion from the Federal Circuit Court of Appeals, which is deserving of a double-takeaway, the Court affirmed the grant of a motion to dismiss by the Northern District of California that invalidated a patent as being directed to an abstract idea under Section 101/Alice. While that conclusion alone is not surprising (because patents are invalidated under Section 101 quite often), the fact that the patent asserted in the case was directed to an improvement in digital camera technology potentially makes the outcome more surprising. When one considers that the patent claims were directed to “an improved digital camera” using multiple sensors (for color and plane) in conjunction with multiple lenses to generate higher resolution and more vividly colored images, the outcome may seem even more surprising. When one considers that the district judge in the case found the abstract idea to be “taking two pictures and using those pictures to enhance each other in some way,” and noted that, “photographers have been using multiple pictures to enhance each other for over a century,” one may begin scratching his or her head and asking, “isn’t the district court’s statement of the abstract idea itself abstract and essentially irrelevant?” Digital cameras have not been around “for over a century.” Essentially, the district court defined the abstract idea at such a high level of irrelevant abstraction that the technology in the asserted patent had to be abstract. The Northern District of California is a court that is very well-respected and well-versed in patent law. So, at least to this writer, the outcome is pretty extreme in terms of Section 101/Alice and what constitutes patent eligible subject matter.
That the Federal Circuit agreed and is now allowing Section 101/Alice to knock out clearly non-abstract inventions only exacerbates the concern many have already had about how for Section 101/Alice is being taken in terms of invalidating mechanical-type patents. The Federal Circuit’s reasoning seems quite circular when it accepts the very high level of abstraction in the district court’s description of what constitutes the abstract idea (“taking two pictures and using those pictures to enhance each other in some way”), references issues with low photo resolution and lack of vivid colors, and then says, “claim 1’s solution to those problems is the abstract idea itself – to take one image and ‘enhance’ it with another.” Slip Op. at 7. That said, the Federal Circuit found that the claim was directed to an abstract idea, that there was nothing inventive about the invention referenced in the claim, and to the extent there was anything inventive, it was accomplished by generic components performed their predicted functions. As such, the invalidation of an improved digital camera patent was upheld.
Circuit Judge Pauline Newman, who is still going strong at age 94, who has been on the Federal Circuit for 37 years, and who is generally believed to be pro-patent, filed a scathing dissent stating, “This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” She also stated, “From the court’s further enlargement of Section 101 to deny access to patenting, and further obfuscation of the statute, I respectfully dissent.”
In an extended quote from the end of her dissent, Judge Newman also said:
“In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.
The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received.
The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.
I respectfully dissent.”
There you have it – the Section 101/Alice conundrum rages on. The story, however, will not end there. A petition for certiorari will ultimately be filed.