Key Takeaways:

• On May 15, 2023, the U.S. Supreme Court denied two highly watched petitions for certiorari, refusing to hear cases that dealt with the patent eligible subject matter requirement of 35 U.S.C. § 101.
• The Supreme Court’s decision to pass on these cases marks the second time in less than a year that the Court has declined to take up cases dealing with patent eligibility despite a recommendation from the U.S. Solicitor General to grant certiorari for the purpose of providing clarification on this area of the law.
• Now, the focus of those advocating for reform of 35 U.S.C. § 101 will likely return to Congress and the bipartisan efforts of Republican Senator Tillis (N.C.) and Democratic Senator Coons (Del.).

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Background and Discussion 

On May 15, 2023, the Supreme Court denied certiorari petitions in two separate cases that invalidated patents pursuant to 35 U.S.C. § 101 despite the U.S. Solicitor General urging the Court to take both cases. 

The first case, Interactive Wearables, LLC v. Polar Electro Oy, dealt with patent claims directed to a media “content player” with a “remote control” that displays information associated with the played content.[1] The District Court invalidated these claims under § 101 applying the two-part framework from the Supreme Court’s 2014 Alice v. CLS Bank decision: determining first whether the claims were directed to an abstract idea (Step 1) and, if so, whether there is an inventive concept beyond the abstract idea that saves the claims (Step 2).[2] Applying the Alice test, the District Court found the claims ineligible, reasoning that they are directed to the abstract idea of “providing information in conjunction with media content” (Step 1) on “components … defined entirely in terms of generic preexisting technology” (Step 2). The Federal Circuit subsequently issued a Rule 36 affirmance, and Interactive Wearables sought certiorari.

The second case, Tropp v. Travel Sentry, Inc., concerned patent claims directed to a method of “improving airline luggage inspection” that includes the use of “dual-access [luggage] locks” wherein the Transportation Security Agency (TSA) would have a “master key” and the lock would have an “identification structure” signaling to the TSA agent to use a “master key.”[3] The District Court invalidated these claims under § 101, finding that they are directed to the abstract idea of applying “dual-access locks to airport luggage inspection” (Step 1) while using only “generic technology” to implement that idea (Step 2).[4] Following a per curiam decision by the Federal Circuit upholding the District Court’s decision, Tropp sought certiorari.[5]

On April 5, 2023, in response to the Supreme Court’s request for the Government’s views, the Solicitor General filed a combined brief recommending that the Court take both cases to provide “much needed clarification” on § 101’s patent eligibility requirement.[6] The Solicitor General argued that the Supreme Court should clarify that “quintessentially technological inventions,” such as the content player claimed by Interactive Wearables, are patent eligible in contrast to non-technological methods of organizing human activity, like the luggage-inspection method claimed by Tropp.[7] Next, the Solicitor General urged the Supreme Court to clarify that “[a] court at step two … should ask whether the claimed invention sufficiently transforms an abstract idea into the kind of invention eligible for patent protection,” i.e., when it is a “technological application of that idea.”[8] Finally, the Solicitor General recommended that the Supreme Court take these cases to caution lower courts not to place undue emphasis on “different statutory provisions,” e.g., novelty, obviousness and enablement, that “perform[] different functions” than § 101.[9]

On May 15, 2023, the Supreme Court declined to take up either Interactive Wearables or Tropp. This is the second time in less than a year that the Court has declined the opportunity to provide further clarity on 35 U.S.C. § 101 contrary to the recommendation of the Solicitor General. Last year, the Court surprised many by failing to take up the fractured Federal Circuit opinion in American Axle & Manufacturing Inc. v. Neapco Holdings LLC despite pleas from the Solicitor General as well as the Federal Circuit, industry organizations, and various bar associations for the Court to provide “much-needed guidance” on the proper application of § 101 in various areas. 

Now that the Supreme Court has again refused to provide additional guidance on 35 U.S.C. § 101’s patent eligibility requirement, the focus of those advocating for reform of § 101 will likely shift to Congress, particularly in light of the appointment of Democratic Senator Coons (Del.) as chairman and Republican Senator Tillis (N.C.) as ranking member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property.[10] In August 2022, Senator Tillis introduced the Patent Eligibility Restoration Act of 2022, and in September 2022, Senator Coons announced he would sign on to the bill as co-sponsor, making the legislation bipartisan.[11] As compared to the “judicial exceptions” in existing § 101 jurisprudence, the bill as currently drafted would create narrower exceptions to eligibility, including “mathematical formula[e],” certain “nontechnical . . . process[es],” “mental process[es] performed solely in the human mind,” processes that “occur[] in nature wholly independent of, and prior to, any human activity,” “[a]n unmodified human gene, as that gene exists in the human body,” and “[a]n unmodified natural material, as that material exists in nature.”[12]

[1]Interactive Wearables, LLC v. Polar Electro Oy, 501 F. Supp. 3d 162, 167 (E.D.N.Y. 2020)
[2]Id.at 168 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216-17 (2014)).
[3]Travel Sentry, Inc. v. Tropp, 527 F. Supp. 3d 256, 261 (E.D.N.Y. 2021).
[4]Id. at 265-267.
[5]Travel Sentry, Inc. v. Tropp, Nos. 2021-1908, 2021-1909, 2022 U.S. App. LEXIS 3906, at *2 (Fed. Cir. Feb. 14, 2022).
[6]Case Nos. 21-1281 and 22-22, Brief for the United States as Amicus Curiae at 11 (Apr. 5, 2023).
[7]Id. at 10-11.
[8]Id. at 11.
[9]Id.
[10]https://www.law360.com/articles/1577196/coons-tillis-tapped-to-lead-senate-ip-subcommittee.
[11]https://ipwatchdog.com/2022/09/28/coons-announces-he-will-co-sponsor-tillis-patent-eligibility-restoration-act/id=151766/.
[12]https://www.congress.gov/bill/117th-congress/senate-bill/4734/text.