Practitioners’ hopes (or fears) that the Supreme Court would clarify what constitutes patent-eligible subject matter under 35 U.S.C. § 101 were dashed in May when the Supreme Court denied certiorari in Interactive Wearables, LLC v. Polar Electro, Inc. and Tropp v. Travel Sentry, Inc. While the Supreme Court has seemingly little interest in taking up § 101 related cases, lessons learned from these cases’ lower court opinions can allow practitioners to adapt their patent application drafting strategies to better prepare patent applications for future challenges under 35 U.S.C. § 101.

Back in 2022, the Supreme Court denied certiorari in American Axle & Manufacturing Inc. v. Neapco Holdings LLC, leaving practitioners with significant questions about what constitutes patent eligible subject matter and how such an eligibility analysis should be performed. American Axle was directed to the concept of a liner that functions as a vibration absorber being installed within a propeller shaft, or “propshaft,” of a driveline system. During use, propshafts experience multi-modal vibrations. While existing liners were tuned to attenuate a particular mode of vibration, American Axle’s at-issue patent was focused on the innovation of a liner being tuned to attenuate two vibration modes. What set off alarm bells with patent practitioners was that the claims recited specific physical components but were still found patent ineligible under §101. Taking claim 22 as an example, the claimed method explicitly invoked the use of a hollow shaft member and a liner. While practitioners expect the claiming of generic computer hardware to trigger a §101 subject matter eligibility analysis, the claiming of physical components used to accomplish a specific goal, such as transmitting torque using a shaft in American Axle’s claimed arrangement, forestalled any questions related to subject matter eligibility.

The Federal Circuit’s panel decision in American Axle involved repeated instances of an enablement analysis of the application’s specification bleeding into the subject matter eligibility analysis of the claims. Judge Moore dissented and highlighted the majority’s errant focus on enablement while ostensibly ruling on subject matter eligibility, noting that, in both the majority’s opinion and during oral arguments, the majority focused on how the tuning of the liner was to be accomplished. Judge Moore also pointed out that specific variations claimed in dependent claims were given no weight for patent eligibility, such as the use of a specific material, cardboard, as the liner. Both a request for rehearing en banc by the Federal Circuit and a request for certiorari by Supreme Court were denied. Applicants and practitioners were left with significant questions as far as how subject matter eligibility would be evaluated in the future.

Hope remained for clarity being provided in multiple other cases awaiting a decision on certiorari for subject matter eligibility before the Supreme Court. Interactive Wearables, LLC v. Polar Electro, Inc. provided an appealing option for Supreme Court review. While most subject eligibility analyses, like that in Interactive Wearables, involve a subject matter eligibility analysis that involves determining whether an “abstract idea” is present, American Axle invoked the less common “law of nature” exception to subject matter eligibility.

The claims of Interactive Wearables were directed to a content player system in which a remote control device was used to present information about audio content being output by a playing device. The hardware arrangements of the claims and the specification were largely generic, reciting components such as a receiver, processor, and wireless remote control device. Again here, an enablement analysis bled into the subject matter eligibility analysis of the court. The district court’s decision outright admitted that enablement of the specification was factored in as part of the subject matter eligibility analysis of the claims: “the specification goes to great lengths to avoid any specifics in describing the components” and “other than the purported abstract idea, nothing else is described in the specification as the invention.” In addition to letting enablement of the specification be factored into claim eligibility, the claims’ use of “configured to” language was explicitly factored into the district court’s decision finding a lack of subject matter eligibility.

Interactive Wearables did not prove to be too tempting to the Supreme Court with certiorari denied in May 2023. In view of American Axle and Interactive Wearables, practitioners need to accept that, for the foreseeable future, when a court performs a subject matter eligibility analysis, the specification could play a significant role in determining the court’s decision. While an applicant may have no intent of ever trying to claim specific technical details of their invention, inclusion of such details in the specification are worthwhile.

Another cautionary tale practitioners should take from Interactive Wearables is that the use of result-oriented claiming may tip a court toward a finding of subject matter ineligibility. Result-oriented claiming uses phrasing such as “configured to” in order to broadly claim many possible ways of achieving a given outcome. For example, claim 32 of Interactive Wearables claimed a “wireless remote control device . . . configured to provide the user . . . information associated with content.” The claims and specification fail to disclose how such providing is performed. Result-oriented claiming can be a double-edged sword: providing claim breadth but increasing the risk of a negative subject matter eligibility finding. To decrease the likelihood of such result-oriented language pushing a court toward a finding of ineligibility, a practitioner should ensure that the specification does not rely on similar result-oriented language but describes how the result is achieved.

Dependent claims should be used to flesh out the structure used to accomplish the result of result-oriented independent claims. As noted in Judge Moore’s dissent in American Axle, however, courts may provide less weight to details added via dependent claims and focus their analyses on the eligibility of the independent claims. If a practitioner relies on result-oriented claiming language in one independent claim, a second independent claim could be used to capture the explicit structure used to accomplish the result. While the result-oriented claim may be broader, the independent claim with the explicit structure may be more likely to survive a court’s §101 analysis. Alternatively, a continuation application that avoids result-oriented claiming could be an attractive option. Using this avenue eliminates the possibility of restriction occurring compared to using the multiple independent claim option. While these options may feel like overkill if a patent examiner does not make a subject matter eligibility rejection, courts will continue to apply a higher bar under 35 U.S.C. 101. For an applicant’s most important inventions, these additional claiming strategies may be worth pursuing.

On the same day that certiorari was denied in Interactive Wearables, the Supreme Court further reaffirmed its desire to avoid §101 issues by also denying certiorari in Tropp v. Travel Sentry, Inc. In Tropp, the Federal Circuit affirmed the district court’s decision that all at-issue claims in Tropp’s two patents were directed to ineligible subject matter. Tropp’s claims were all methods that involved the use of a special-purpose lock that included a combination lock and a key lock along with how the lock was marketed to consumers. The key lock portion could be unlocked by the TSA using a master key in order to inspect luggage, while the end consumer could make use of the combination portion of the lock.

The Solicitor General was invited by the Supreme Court to brief Interactive Wearables and Tropp. In the United States’ amicus curiae brief, Tropp served as the foil to Interactive Wearables. While the Solicitor General agreed that Tropp’s claimed methods that involved the use of a generic dual-access lock were ineligible subject matter, the Solicitor General prodded the Supreme Court to grant certiorari in each case to clarify what constitutes eligible subject matter.

In the end, despite the Supreme Court historically following the Solicitor General’s recommendation on certiorari about 80% of the time, only Justice Kavanaugh was willing to grant certiorari in Interactive Wearables and Tropp. For the foreseeable future, applicants are left with the guidance that can be gleaned from these cases to future-proof their applications against any subject matter eligibility challenge, which can now be expected to include a quasi-enablement analysis. Applicants would do well to devote extra resources to improving the depth of detail in their specifications and ensuring at least some claims avoid result-oriented claim language to improve the likelihood of a favorable finding of subject matter eligibility.