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Recent Patent-Eligibility Cases Leave Unanswered Questions

Law360
03/12/18

In a series of recent decisions, the Federal Circuit has upheld patents and found that they do not claim patent-ineligible abstract ideas or laws of nature, but the rulings have left attorneys pining for more guidance about where the court will draw the line on patent eligibility in future cases.

Three times in the past month, most recently in a Wednesday decision involving forehead thermometers, the appeals court has held that the inventions at issue are patent-eligible because they are not "well-understood, routine and conventional," a phrase from a 2012 U.S. Supreme Court decision.

Following a slew of rulings in recent years invalidating patents for claiming only abstract ideas, the new decisions appear to provide ways for patent owners to push back against eligibility challenges. But attorneys say it's far from clear what makes something well-understood, routine and conventional, and dissenting opinions show the court is divided on the issue.

The recent rulings have drawn parallels between analyzing patent eligibility and analyzing whether a patent is invalid as obvious. However, that doesn't provide much clarity and "is creating some uncertainty for district courts about how to apply this," said Asim Bhansali of Keker, Van Nest & Peters. 

Whatever happens next, attorneys expect the courts to flesh out this area beyond the Federal Circuit's recent rulings.

"I'm not sure that what has come out of these three decisions is necessarily going to be the law," Bhansali said. "There's uncertainty about how the second step of the test will ultimately develop."

Read the full report here.