“Unlike many of the patents struck down on Section 101 grounds, the patent at issue has already withstood extensive challenges at the U.S. Patent and Trademark Office’s Central Reexamination Unit, Patent Trial and Appeal Board, and in the Federal Circuit.”

On March 8, Foster Pepper filed a petition for certiorari with the Supreme Court, case number 18-1199, challenging the Federal Circuit’s emerging “physical realm” test as part of its Alice/Section 101 analysis. Amicus briefs in support of our cert petition are most welcome to assist the Court’s understanding of why it is important to grant cert and clarify the correct patent eligibility test for computer-implemented inventions. We are also seeking amicus brief writers for the many amici we have already secured. These efforts will help clear up the uncertainty innovators and patent holders face in cutting-edge fields of our modern economy and, as a result, help drive innovation forward.

The case addresses recent Supreme Court, Federal Circuit, and trial court decisions interpreting Section 101 of the Patent Act in a manner that invalidates any computer-implemented patents based on the conclusion that computer-implemented inventions involve patent-ineligible “abstract ideas.” The Federal Circuit held that the patent of our client, InvestPic, was an “abstract idea” because it did not involve “physical realm” innovation. The patent otherwise met all the statutory criteria of novelty, utility, non-obviousness, and written description.

The past several years’ worth of rulings on Section 101 have created uncertainty about whether innovation in computer-reliant fields is eligible for patenting. The current trend in the courts appears to be against allowing patents for computer-implemented technology, which could jeopardize the patent portfolios of individuals, companies, and institutions that innovate in the computer-implemented technology sector. This case presents an opportunity for the Court to clarify how its patent-eligibility test applies to computer-implemented inventions. Clarification, whether in favor of our client or not, will provide much-needed certainty for innovators and patent owners.

A Solid Test Case

This case also warrants review because the Federal Circuit used the case to impose its own “physical realm” test, which is not based on any precedent under our patent system. The “physical realm” test, which would require inventions to be in the “physical realm” as opposed to the “digital realm,” in order to be patentable, would categorically exclude computer-implemented technology from patentability. Such a test or exclusion has never been endorsed by the Supreme Court. Regardless of whether the Supreme Court ultimately approves or rejects this test, input from the Court would be invaluable to inventors and patent owners working in computer-implemented technology fields. Congress may need to provide additional solutions related to Section 101 of the Patent Act, but the Court can offer needed clarity on this new “physical realm” test now.

Finally, this case is an appropriate test case for the Supreme Court because of the significant prior scrutiny of the invention and patent at issue. This case concerns an invention that meets all the statutory qualifications for patentability. Unlike many of the patents struck down on Section 101 grounds, the patent at issue has already withstood extensive challenges at the U.S. Patent and Trademark Office’s Central Reexamination Unit, Patent Trial and Appeal Board, and in the Federal Circuit. Additionally, the Federal Circuit and many notable experts agree that the invention is highly innovative. Our client InvestPic and one of its principals, Dr. Samir Varma, created a breakthrough data science system for investment analysis. The 2001 Nobel Laureate economist Michael Spence described the InvestPic system as a brilliant and very significant advance in data science technology.

On its second trip to the Federal Circuit (after having been upheld the first time around), the patent was declared ineligible. The Federal Circuit concluded that the inventive components of the invention took place on a computer and determined that the invention was therefore an “abstract idea” because it was not in the “physical realm.” See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding the patent invalid because “the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results”). In doing so, the Federal Circuit departed from controlling Supreme Court case law to impose its own eligibility requirements.

Help Us to Fix 101

The Federal Circuit’s “physical realm” requirement will have severely negative consequences for those who represent innovators in fields such as software, quantum computing, artificial intelligence, data science, robotics, finance, cybersecurity, medical diagnostics, computer engineering, or biotechnology. Under this emerging test, all patents that require computer implementation are in danger of invalidation.

We believe that this case is well-positioned to capture the Supreme Court’s interest. The InvestPic patent has narrow and detailed claims directed to a specific and difficult technical solution to a serious problem, unlike some of the notoriously broad patent claims that Section 101 has been used to invalidate. (See, e.g., claims 32-40). Most importantly, the decision below is particularly vulnerable to challenge given its unprecedented expansion of the “abstract idea” doctrine into a “physicality” inquiry.

The deadline for amicus briefs is April 15, and the deadline for requesting permission from opposing counsel is April 5. We have secured the support of several innovators, venture-backed startups, companies, academics, associations, and organizations, and would greatly appreciate additional amicus assistance, including with writing briefs for amici we have already secured.

Please contact Brooks Lindsay, Bill Abrams, or Rich Black at Foster Pepper if you would like to write a brief or join/sign one (brooks.lindsay@foster.com, bill.abrams@foster.com, rich.black@foster.com).