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Should We Analogize Patent Eligibility Claims Or Not?

Thurgood Marshall Courthouse

Federal Circuit on a tear

There is rarely a dull day when it comes to patent eligibility. In Trading Technologies International, Inc. v. I.B.G. Interactive Brokers, L.L.C., the court struck down the claims for being ineligible. In a precedential decision, the court took the surprising approach of not analogizing claims to other Federal Circuit decisions. The court went further and denied that such analogies were required and implied they were not useful: “We are not bound by non-precedential decisions at all, much less ones to different patents, different specifications, or different claims. Each panel must evaluate the claims presented to it.” Slip op. 19. This decision is interesting because it flies in the face of USPTO guidance that suggests the opposite. And it contradicts past Federal Circuit decisions. Indeed, in Cleveland Clinic Foundation v. True Health Diagnostics L.L.C., the Federal Circuit doubled down on analogizing claims to claims previously found to be ineligible. In this opinion, the court noted that the patent eligibility claims were “strikingly similar” to claims once found to be ineligible. The court also declined to follow the USPTO guidance.

Contradictory Guidance

So, what have we learned? The Federal Circuit suggests we should not analogize to previous cases. But it also indicates that this is okay if the claims are “strikingly similar”. Which begs the question, what if the claims are somewhat or mostly similar but not strikingly similar? The answer, like all answers to patent eligibility questions, is who knows. There is no clarity. In other patent eligibility news, and as well reported by I.P. Watch Dog, there are rumblings that some members of Congress have proposed a framework to fix patent eligibility issues. There is some doubt whether this will be good enough, with some saying it will perpetuate the current chaos. Additionally, Bloomberg notes the widening divide and proposes some potential Congressional solutions. It’ll be interesting to see if Congress does anything. Meanwhile, there is a debate brewing about a need for a § 101 exception for prior art ideas over at Patently-O. Jeremy Doerre argues that § 101 “should “be narrowly construed to not apply for prior art ideas because 35 U.S.C. § 103….” Professor Sarnoff argues the opposite because 35 U.S.C. § 103 does a poor job of “excluding uncreative applications of ineligible discoveries.” Both are worth a read. If you need a second set of eyes for clarification regarding patent eligibility, Teak IP Services is happy to help.

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