Bass, Berry & Sims attorneys Michael Kiklis and Matthew Zapadka authored an article in Law360 discussing legal inconsistencies related to whether consideration of prior-art-based arguments, such as novelty, belong in a patent-eligibility inquiry under Section 101 of the U.S. Patent Act. The Supreme Court embraced doing so in Mayo Collaborative Services v. Prometheus Laboratories Inc., but the treatment of prior-art-based arguments during a Section 101 analysis by U.S. Court of Appeals to the Federal Circuit has since been inconsistent.
To provide some clarity amid these inconsistencies, Michael and Matthew discuss various circumstances under which the Federal Circuit and district courts will consider prior-art-based arguments and the open questions the Federal Circuit has not yet addressed. Guided by this analysis, the authors also provide practical advice for practitioners on what to do to satisfy Section 101 when drafting patents or when involved in an adversarial proceeding.
In Mayo, the Supreme Court announced a two-step Section 101 inquiry that seemingly resurrected the “point-of-novelty” test for eligibility. Since then, at step one, the Federal Circuit has considered whether the claims reflect an improvement over the prior art, and at step two, Federal Circuit has considered prior-art-based arguments when deciding whether the claims recite elements that are well-understood, routine and conventional.
Some key takeaways the authors discuss for the consideration of prior-art in patent eligibility include:
- The Federal Circuit will consider prior-art-based arguments at both step one and two of the Mayo/Alice Section 101 test, and the court has been primarily swayed by statements in the patent’s specification and, to a more limited extent, the patent prosecution’s history.
- The Federal Circuit should clarify when and how it will consider prior-art-based arguments during a Section 101 inquiry because treatment to date has not been entirely clear and, in fact, has been contradictory.
- In the meantime, practitioners should explain how the invention improves over prior-art systems when drafting patent specifications and ensure that the claims reflect that improvement.
- Patent owners in an adversarial proceeding should leverage any statements in the patent specification or file history for how the invention improves over prior art at both step one and two.
- Challengers in an adversarial proceeding should argue at both steps that the claimed invention does not improve over the prior art and is merely conventional – or that any advantages are not technological.
The full article, “Using Prior Art In Patentability Args Amid Fed. Circ. Confusion,” was published by Law360 on November 18 and is available online.