{"id":6388,"date":"2017-12-06T17:25:53","date_gmt":"2017-12-06T17:25:53","guid":{"rendered":"https:\/\/cpip.gmu.edu\/?p=6388"},"modified":"2026-02-03T20:50:34","modified_gmt":"2026-02-03T20:50:34","slug":"cpip-scholars-file-amicus-brief-urging-supreme-court-to-fix-section-101","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2017\/12\/06\/cpip-scholars-file-amicus-brief-urging-supreme-court-to-fix-section-101\/","title":{"rendered":"[Archived Post] CPIP Scholars File Amicus Brief Urging Supreme Court to Fix Section 101"},"content":{"rendered":"

\"dictionaryOn December 4, 2017, CPIP Founder Adam Mossoff<\/a> and CPIP John F. Witherspoon Legal Fellow David Lund<\/a> filed an amicus brief<\/a> urging the Supreme Court to grant certiorari in RecogniCorp. v. Nintendo<\/em>. The amicus brief was joined by several law professors, including Richard Epstein and Michael Risch, as well as CPIP Senior Scholars Chris Holman, Kristen Osenga, Mark Schultz, and Ted Sichelman. Bob Sachs of Robert R. Sachs P.C. served as counsel of record.<\/p>\n

The technology at issue involves a method of encoding and decoding composite facial images on a computer. The invention solved the problem of decreased image quality when such images are transmitted digitally. RecogniCorp sued Nintendo for patent infringement, and Nintendo challenged the eligibility of the patent under Section 101. Applying the Mayo-Alice<\/em> framework, the district court held that invention was ineligible subject matter because it was directed to an abstract idea and lacked an inventive concept. Agreeing with that analysis, the Federal Circuit affirmed<\/a>.<\/p>\n

The amici argue<\/a> that the Supreme Court should grant certiorari in this case in order to correct the continued misapplication of the Mayo-Alice<\/em> test by the Federal Circuit, the district courts, and the Patent & Trademark Office. By breaking down claims into individual elements and then generalizing them in broad terms, the lower courts and the PTO are failing to properly consider the claimed invention as a whole.<\/p>\n

The Summary of Argument is copied below:<\/p>\n

SUMMARY OF ARGUMENT<\/p>\n

This Court has repeatedly reminded the Court of Appeals for the Federal Circuit, district courts, and the United States Patent & Trademark Office (\u201cPTO\u201d) that \u00a7 101 of the Patent Act is a key requirement in assessing the validity of both patent applications and issued patents. In doing so, this Court set forth a two-part test for assessing whether an invention is patentable subject matter (the \u201cMayo-Alice<\/em> test\u201d). See Alice Corp. Pty. v. CLS Bank Int\u2019l<\/em>, 134 S. Ct. 2347 (2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc.<\/em>, 132 S. Ct. 1289 (2012). These cases build upon prior cases such as Diamond v. Diehr<\/em>, 450 U.S. 175 (1981), which held that a software-based method for operating a rubber mold is patent eligible under \u00a7 101.<\/p>\n

Unfortunately, the lower courts and the PTO have misunderstood how to apply the Mayo-Alice<\/em> test. Specifically, the lower courts and the PTO have adopted an indeterminate<\/em> and overly restrictive<\/em> approach, invalidating legitimate patented innovation under \u00a7 101 with little predictability for inventors or patent attorneys. This frustrates the constitutional function of the patent system in promoting the \u201cProgress of . . . useful Arts.\u201d U.S. Const. art. 1, \u00a7 8, cl. 8.<\/p>\n

This case exemplifies both of these fundamental problems\u2014indeterminacy and over-restrictiveness\u2014because the lower courts held that a claim is patent ineligible<\/em> as an \u201cabstract idea\u201d merely because the process was implemented through the use of computer software. These problems undermine inventors\u2019 ability to use the patent system to protect computer-mediated processes that are exactly the kind of innovation that the patent system is designed to promote.<\/p>\n

Petitioner details the substantial confusion in the application of the Mayo-Alice<\/em> test in this case, as well as at the PTO and in the lower courts. Amici<\/em> here identify a further key insight: when lower courts and the PTO apply the Mayo-Alice<\/em> test to only individualized elements of a claim, generalizing these elements into a broad, categorical description and not evaluating the claimed invention as a whole, they are using a methodological approach that conflicts with this Court\u2019s existing precedents on determining patent eligibility under \u00a7 101.<\/p>\n

In this case, the Federal Circuit held that a software-based method of producing images of faces on a computer screen is an \u201cabstract idea.\u201d RecogniCorp, LLC v Nintendo Co.<\/em>, 855 F.3d 1322, 1327 (Fed. Cir. 2017). It reached this conclusion by dissecting the claim into its separate elements and ignoring other key elements, ultimately finding the claimed invention is ineligible under \u00a7 101. By reducing the claim to \u201cencoding and decoding data,\u201d the court ignored the invention as a whole that improves the way computers generate digital representations of faces for display.<\/p>\n

This Court can easily remedy this problem by (1) recognizing the role of the patent system in protecting computer-implemented innovation, a key driver of modern technological progress, and (2) providing further instructions to lower courts and to the PTO that they should apply the Mayo-Alice<\/em> test only to the claimed invention as a whole<\/em>. This is a predicate legal requirement in assessing novelty under \u00a7 102 and in assessing nonobviousness under \u00a7 103 of the Patent Act. It is also a fundamental legal requirement for asserting patents for both literal and equivalents infringement under \u00a7 271. In all of these other patent doctrines, this Court has maintained the basic requirement of assessing patentability or limiting assertion of patents to the claimed invention as a whole<\/em>, as this avoids the same policy problems of indeterminacy and over-restrictiveness (or over-inclusiveness, depending on the perspective) in these other patent doctrines. Thus, this Court should grant the petition for certiorari<\/em>, reverse the Federal Circuit, and provide further instructions for applying the Mayo-Alic<\/em>e test only to the \u201cclaimed invention as a whole.\u201d<\/p>\n

To read the amicus brief, please click here<\/a>.<\/p>\n","protected":false},"excerpt":{"rendered":"

On December 4, 2017, CPIP Founder Adam Mossoff and CPIP John F. Witherspoon Legal Fellow David Lund filed an amicus brief urging the Supreme Court to grant certiorari in RecogniCorp. v. Nintendo. The amicus brief was joined by several law professors, including Richard Epstein and Michael Risch, as well as CPIP Senior Scholars Chris Holman, […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[26,35],"tags":[83,112,402,551,939,1071,1304],"class_list":["post-6388","post","type-post","status-publish","format-standard","hentry","category-innovation-2","category-patent-law","tag-adam-mossoff","tag-alice","tag-david-lund","tag-federal-circuit","tag-mayo","tag-patent-eligibility","tag-section-101"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/6388","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=6388"}],"version-history":[{"count":1,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/6388\/revisions"}],"predecessor-version":[{"id":15768,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/6388\/revisions\/15768"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=6388"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=6388"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=6388"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}