Advanced Patent Sect. 101 Eligibility: Latest Federal Circuit Decisions, PTAB Cases, and USPTO Guidelines

The Federal Circuit has included some surprises when developing its Section 101 jurisprudence after the Supreme Court's 2014 Alice decision. For example, before that decision, it would have been almost unimaginable for a mechanical invention to fail to satisfy Section 101. However, the Federal Circuit in Yu v. Apple Inc., et al. (Fed. Cir. 2021) did exactly that by using Section 101 to strike down a mechanical invention. Also, the Federal Circuit in Universal Secure Registry LLC, v. Apple Inc., et al. (Fed. Cir. 2021) used unexpected results—a concept related to a Section 103 secondary consideration analysis—as part of a Section 101 inquiry.

In 2019, the USPTO announced revised guidance for subject matter eligibility under Section 101. These guidelines revise the procedures for determining whether a patent claim is directed to a judicial exception. But, in Cleveland Clinic Foundation et al. v. True Health Diagnostics L.L.C. (Fed. Cir. 2019), the Federal Circuit held that just because a patent satisfies the USPTO's guidelines during prosecution does not mean that the Federal Circuit won't strike it down. In Cleveland Clinic, the Federal Circuit ignored and, in fact, criticized the USPTO's guidelines.

These decisions, among others, serve as a reminder that patent owners must not only consider USPTO guidance when drafting patent applications, they should also keep in mind that case law supersedes agency guidance. And patent applications should satisfy both Federal Circuit case law and agency guidance.

Listen as our authoritative panel of patent attorneys examines recent Federal Circuit decisions and the 2019 revised guidelines. The panel will discuss the importance of satisfying both USPTO guidance on Section 101 and Federal Circuit Section 101 case law. The panel will offer their perspectives on handling both to get an invention patented.