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No Bite on Parties’ Unenforceable Agreement to Agree to Sell Apple Trees

by Paul Devinsky | Sep 9, 2020 | Food, Beverage & Agribusiness

The US Court of Appeals for the Federal Circuit affirmed a grant of summary judgment, finding that the option provision in the parties’ contract was an unenforceable agreement to agree. Phytelligence, Inc. v. Wash. State Univ., Case No. 2019-2216 (Fed. Cir. Aug. 27, 2020) (Reyna, J.).

Phytelligence is an agricultural biotechnology company that used tissue culture to grow trees for sale to nurseries and growers. In 2012, Phytelligence and Washington State University (WSU) began discussing an arrangement to grow WA 38 apple trees, a new apple cultivar that WSU developed and patented. The parties executed a propagation agreement, which included a provision that granted Phytelligence an option to participate as a provider and/or seller. If WSU’s cultivar became available for licensing, Phytelligence would need to sign a separate contract with WSU or WSU’s agent to exercise the option to become a provider and/or seller.

WSU eventually began requesting proposals from companies interested in commercializing WA 38. Phytelligence did not submit a proposal. In 2014, WSU accepted a proposal from Proprietary Variety Management (PVM) and entered into a management contract granting PVM an exclusive license to propagate and sell WA 38. Three years after WSU entered into this management contract, Phytelligence notified WSU that it wanted to exercise its option to participate as a provider and/or seller under the propagation agreement. WSU responded that under the propagation agreement, Phytelligence had to sign a separate contract with WSU to exercise the option and directed Phytelligence to PVM. Phytelligence rejected all of PVM and WSU’s options for selling WA 38, and the agreement between the parties was terminated.

Phytelligence sued WSU, alleging breach of the propagation agreement and seeking damages and specific performance. WSU moved for summary judgment, arguing that the option provision of the propagation agreement was an unenforceable “agreement to agree.” The district court agreed and granted WSU’s motion. Phytelligence appealed.

The Federal Circuit affirmed the dismissal. The Court stated that an agreement to agree was an agreement to do something that requires a further meeting of the minds, and without such a meeting, the agreement would not be complete. The Court found that an agreement to agree is unenforceable because courts are unable to fix the liability of parties based on agreements that are too indefinite and uncertain. Turning to the agreement between Phytelligence and WSU, the Court explained that the plain language of the propagation agreement required the parties to sign a separate contract to exercise the option, thus rendering the provision an unenforceable agreement to agree. The Court also rejected Phytelligence’s argument that the extrinsic evidence supported its theory that the option was an enforceable contract with open terms. The Court instead found that the communications between the parties revealed that WSU did not commit to any definite terms for a future license with Phytelligence.

Structural Limitations Are Not Met by Imaginary Demarcation Lines

by Amol Parikh | Sep 9, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly from the end plate” that required a demarcation between the protrusion and end plate. The Federal Circuit therefore prohibited an infringement theory premised on an end plate being inside the accused product and a protrusion that was not demarcated from the end plate. Neville v. Foundation Constructors, Inc., Case No. 20-1132 (Fed. Cir. Aug. 27, 2020) (Chen, J.).

Neville owns patents directed to foundation piles, which are tubular structures placed into the ground to provide stability for the foundations built over them. One set of claims requires an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile.” Another set of claims requires “at least one protrusion extending outwardly from the end plate.”

Neville filed a lawsuit alleging that Foundation Constructors’ pile tips infringed the patents. The district court granted summary judgment of non-infringement, reasoning that the plain meaning of “end plate having a substantially flat surface” did not encompass “an interior surface facing into the rest of the pile tip.” Examining the intrinsic record, the district court concluded that “the patent applicant intended the ‘substantially flat surface’ of the end plate to refer to the side of the end plate facing outward.” The court found that the accused products did not have such an “end plate.” As to claims requiring a protrusion extending outwardly from the end plate, the court reasoned that “[b]ecause the end piece of the accused pile tip is a single, conically-shaped piece, there is not a demarcation of where an ‘end plate’ should end and the ‘protrusion’ should begin,” and non-infringement was therefore appropriate. Neville appealed.

Neville argued that the district court’s ruling of non-infringement was based on an incorrect claim construction and should therefore be overturned. The Federal Circuit rejected Neville’s arguments and affirmed summary judgment.

The Federal Circuit agreed with the district court that the phrase “substantially flat surface disposed perpendicular to the centerline of the tubular pile” did not refer to any interior-facing surface. Starting with the language of the claim, the Court found that the word “end” suggested that the relevant surface of the end plate is the external one at the second end of the pile tip. The Court found that the specification reinforced the view that the invention was directed to the exterior surface of the end plate as being “substantially flat,” and through this end plate the pile tip applies force to the underlying soil. Neville argued that the specification implicitly taught that an end plate having a substantially flat surface perpendicular to the tubular pile could be fully interior to another portion of the pile tip because the specification disclosed that the pile tip, including the end plate, “could be cast as a single unit.” The Court rejected Neville’s argument, finding that under Neville’s logic, the [...]

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Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals

by Paul Devinsky | Sep 2, 2020 | America Invents Act, Patents

Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions. Security People, Inc. v. Iancu, Case No. 2019-2118 (Fed. Cir. Aug. 20, 2020) (Hughes, J.).

Security People’s patent was challenged in an IPR, and the Board issued a final written decision invalidating all challenged claims. Security People appealed the Board’s decision to the Federal Circuit, which affirmed. The Supreme Court then denied Security People’s petition for certiorari. After the Supreme Court denied certiorari, Security People filed a lawsuit in the Northern District of California, challenging the Board’s final written decision as unconstitutional. The district court dismissed Security People’s claim because it lacked subject matter jurisdiction, citing the America Invents Act’s (AIA) provision giving the Federal Circuit jurisdiction over appeals from Board decisions in IPRs. Security People appealed.

Security People argued that because the Board lacks authority to consider constitutional claims, only a district court can hear factual issues underlying a constitutional challenge. Security People also argued that its constitutional challenge was not ripe until the Federal Circuit finally resolved the Board’s decision, and that it had to exhaust its claims on the merits before raising its constitutional claims.

The Federal Circuit disagreed. The Court found that in the rare instances where fact finding would be necessary for resolving a constitutional challenge, the Federal Circuit had authority to decide those factual issues through judicial notice. The Court explained that “finality” of the agency’s decision did not require the merits appeals to fully conclude before addressing constitutional issues, because the Board’s decision-making is complete when it issues a final written decision. In short, Security People was required to bring its constitutional challenge at the same time it challenged merits of the Board’s decision. The Court found its reasoning supported by the text, structure and history of the AIA, which gave the Federal Circuit wide authority to review Board decisions without any exception for constitutional challenges. The Court also reasoned that the Administrative Procedures Act’s (APA) general authorization to review agency action in the district courts does not override the specific framework in the AIA providing judicial review to the Federal Circuit. Indeed, there is no need to look to the APA’s general authorization in this regard, because the Federal Circuit is an adequate forum to resolve any issues challenged with respect to the Board’s final written decisions.

Res Judicata on Procedural Grounds Precludes Similar Claims Arising After Prior Judgment

by Cecilia Choy, Ph.D. | Sep 2, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision that res judicata can apply to dismissals on procedural grounds and to claims arising after a prior judgment. Sowinski v. California Air Resources Board, Case No. 19-1558 (Fed. Cir. Aug. 21, 2020) (Newman, J.)

Richard Sowinski is the inventor of a patent directed to an “electronic method and apparatus for validating and trading consumer pollution-control tax credits.” In a first set of lawsuits starting in 2015, Sowinski sued the California Air Resources Board (CARB) in state court, alleging infringement by CARB’s Cap-and-Trade Program. CARB removed the case to district court and filed several motions to dismiss. The district court dismissed the complaint after Sowinski failed to respond to these motions before the deadline. The dismissal was upheld on appeal.

As part of a second round of lawsuits starting in 2018, Sowinski filed a complaint in federal court that was “substantially identical” to the 2015 case, except the 2018 complaint sought infringement damages arising after the 2015 case decision. CARB moved to dismiss, arguing that the claim was barred based on the doctrine of res judicata, which prevents a civil claim from being tried if it arises out of the “same transaction or common nucleus of operative facts” of a prior case where the merits were adjudicated. The district court agreed and granted CARB’s motion to dismiss. Sowinski appealed.

Sowinski argued that res judicata did not apply to his case because the prior suit was resolved on procedural grounds, not the merits of infringement, and because the current complaint sought infringement damages occurring after the conclusion of his last lawsuit. For res judicata on what Sowinski called a “technicality,” the Federal Circuit applied Ninth Circuit procedural law. Under Ninth Circuit law, preclusion applies when a prior suit involved the same claim as the later suit, reached a final judgment on the merits and involved identical parties. The Court also noted that for preclusion purposes, dismissal for failure to prosecute is an adjudication on the merits. Applying these factors, the Federal Circuit affirmed the district court’s decision, explaining that res judicata generally applies when “a patentee seeks to assert the same patent against the same party and the same subject matter.”

The Federal Circuit found that preclusion can also apply to claims arising after the prior judgment, explaining that one cannot challenge the repetition of an act in a subsequent suit if the act was judged not wrongful. The Court explained that preclusion applies when the accused products or methods are essentially the same. Here, CARB activity was held not to be infringing in the 2015 case because of Sowinski’s failure to respond, and Sowinski’s 2018 complaint described CARB’s ongoing activities as the same as those in the 2015 case. The Federal Circuit therefore affirmed the district court’s decision, explaining that Sowinski alleged no different conduct or acts against the same defendant.

Standard Essentiality Is a Question for the Fact Finder

by Amol Parikh | Aug 20, 2020 | Patents

Affirming a jury verdict of infringement, the US Court of Appeals for the Federal Circuit concluded that the question of whether patent claims are essential to all implementations of an industry standard should be resolved by the trier of fact. Godo Kaisha IP Bridge 1 v. TCL Comm. Tech. Holdings Ltd., Case No. 19-2215 (Fed. Cir. Aug. 4, 2020) (O’Malley, J.).

IP Bridge owns patents that it contends are essential to the Long-Term Evolution (LTE) standard, and accused TCL of infringing the patents based on the sale of LTE-compliant mobile phones and tablets. Relying on the Federal Circuit’s 2010 decision in Fujitsu Ltd. v. Netgear Inc., IP Bridge presented evidence at trial that (1) the asserted claims are essential to mandatory sections of the LTE standard and (2) the accused products comply with the LTE standard. TCL did not present any evidence to counter that showing. The jury found that TCL was liable for infringement of the asserted claims and awarded damages. Following the verdict, TCL filed a motion for judgment as matter of law, contending that IP Bridge could not rely on the methodology approved in Fujitsu because Fujitsu only approved that methodology in circumstances where the patent owner asks the district court to assess essentiality in the context of construing the claims of the asserted patents. The district court rejected TCL’s argument and concluded that substantial evidence supported the jury’s verdict. TCL appealed.

The Federal Circuit affirmed the district court’s rulings but explained that it was writing to refute TCL’s contention that whether a patent is essential to a standard is a question of law to be resolved in the context of claim construction. TCL argued that while standard compliance may be used to prove infringement, a district court must make a threshold determination as part of claim construction that all implementations of a standard infringe the claims. TCL argued that since IP Bridge never asked the district court to conduct such an analysis, the question should not have gone to the jury. IP Bridge responded by arguing that whether a patent is essential to a standard is a classic fact issue and is in the province of the factfinder.

The Federal Circuit agreed with IP Bridge and found that TCL’s appeal rested on a misreading of Fujitsu. In Fujitsu, the Court noted that if a district court finds that the claims cover any device that practices a standard, then comparing the claims to that standard is the same as the traditional infringement analysis of comparing the claims to the accused product. The Court explained that the passing reference to claim construction is a recognition that the first step in any infringement analysis is claim construction; it is not a statement that the district court must determine whether the claim covers every implementation of the standard. The Court also explained that determining standard essentiality of patent claims during claim construction does not make sense from a practical perspective because essentiality is a question about whether the claim elements [...]

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Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out

by Thomas DaMario | Aug 13, 2020 | America Invents Act, Patents

Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those advanced for the corresponding and invalid independent claim, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s ruling and found no APA violation. FanDuel, Inc. v. Interactive Games LLC, Case No. 19-1393 (Fed. Cir. July 29, 2020) (Hughes, J.) (Dyk, J. concurring in part and dissenting in part).

Interactive Games owns a patent directed to a method for allowing users to gamble remotely via a mobile device, according to certain game configurations. Specifically, the independent claim is directed to altering a user’s game outcome based on the gaming configuration associated with the location of a user’s mobile gaming device. A dependent claim adds the additional limitation of “accessing a lookup table which contains an ordered list of locations and associated game configurations.”

FanDuel petitioned for inter partes review (IPR) of the patent as obvious based on three references. The first reference (Carter) disclosed a mobile wagering system capable of determining a gambler’s location and restricting access based on the location. Carter’s system used a database that correlated various locations with applicable access levels. Importantly, the reference generally indicated that the system may employ various components such as “memory elements, processing elements, logic elements, look-up tables, and the like.” The second reference (Walker) disclosed enabling or disabling certain features on a mobile gaming device based on a user’s location. And the third reference (the webpage) included a list of slot payouts by casino, city and state, alphabetically organized by state. FanDuel also submitted an expert declaration that the use of look-up tables was well known in the art and that it would have been an obvious design choice to store Carter’s jurisdictional information in an “ordered list” similar to the webpage.

In its Preliminary Patent Owner Response, Interactive incorporated its validity arguments for the independent claim into its arguments for the dependent claim, but did not otherwise advance any substantive arguments specific to the dependent claim. The PTAB instituted IPR for all challenged claims. Following institution, Interactive submitted a patent owner response, which again did not advance any substantive arguments specific to the dependent claim. While Interactive did submit an expert declaration, the statements made by FanDuel’s expert specific to the dependent claim were uncontested. Ultimately, the PTAB found the independent claim invalid, but found the dependent claim valid. FanDuel appealed.

FanDuel argued that the PTAB’s decision with respect to the dependent claim violated the APA because the PTAB changed its obviousness theory midstream. FanDuel alleged that no further record development was presented regarding the dependent claim after institution, and therefore a finding of validity in light of the PTAB’s decision to institute amounted to a changed position by the PTAB, to which FanDuel was entitled notice and an opportunity to respond.

The Federal Circuit disagreed and affirmed the PTAB’s decision. In finding [...]

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Explain Yourself: “Untethered” Obviousness Determination Reversed

by Paul Devinsky | Aug 13, 2020 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit vacated in part and remanded a Patent Trial and Appeal Board (Board) determination of unpatentability because the Board did not adequately support its reasoning as to certain claims. Alacritech, Inc. v. Intel Corp., Case No. 19-1467 (Fed. Cir. July 31, 2020) (Stoll, J.).

Intel petitioned for inter parties review (IPR) of a patent owned by Alacritech that is directed to performing network processes on a dedicated network card (INIC) instead of on a computer’s central processing unit (CPU). Intel asserted that the claims would have been obvious over prior art Thia in view of Tanenbaum. The Board agreed, finding claims of the patent were obvious. Alacritech appealed.

Addressing the standard of review as set forth in the Administrative Procedure Act, the Federal Circuit explained that the Board is obligated to provide a record which shows the evidence on which its findings are based, as well as its reasoning in reaching its conclusions. While “perfect explanations” are not required, it must be sufficient for the Court to see that the agency has “done its job.” The Court found that the Board’s analysis as to three claims in the patent did not meet this standard.

The Court explained that the Board, after only briefly reciting the parties’ arguments, “merely concluded” that the relevant claim limitation was present in the subject claims and the prior art, and in so doing “misapprehend[ed] both the scope of the claims and the parties’ arguments.” The Court went on to explain that the crux of the dispute was where the claim limitation at issue took place—in the CPU (as in the prior art), or in the INIC (as required by the claims). The Court found that the Board’s analysis did not acknowledge this aspect of the parties’ dispute or explain how the prior art taught such a limitation. Without an explanation of its reasoning, the Court could not reasonably discern whether the Board followed the proper path in making its determination.

Intel argued that, while the Board did not itself expound on its reasoning, it did sufficiently support its position by citation to and adoption of Intel’s arguments. While the Federal Circuit noted that it has upheld Board determinations that flowed from the rejection or adoption of a party’s arguments, in this case the Board’s decision was “untethered from either party’s position.” Specifically, both parties focused their arguments on the Thia reference, while the Board relied on Tanenbaum to support its findings. Thus the Court was unable to infer the Board’s argument from those founded on a different basis.

The Federal Circuit also rejected as “fundamentally incorrect” Intel’s assertion that any evidentiary support in the record—even if not cited to by the Board—is sufficient to support the Board’s determination. The Court retorted that Intel’s sole citation to a footnote in a 2002 case was at odds with the clear precedent confining the Court’s review to the actual grounds on which the Board relied. Accordingly, the Court vacated the [...]

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Check Step One: It’s Not Ova until the Court Compares Claims

by McDermott Will & Schulte | Aug 13, 2020 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s decision finding a patent directed to a method of sorting particles using flow cytometry technology ineligible under 35 U.S.C. § 101. The Federal Circuit also vacated the district court’s conclusion that the patent owner was precluded from asserting certain patents based on claim preclusion. XY, LLC v. Trans Ova Genetics, LC, Case No. 19-1789 (Fed. Cir. July 31, 2020) (Stoll, J.).

XY, Beckman Coulter and Inguran (collectively, XY) sued Trans Ova in 2016 for infringement of seven patents relating to technology for sex selection of non-human mammals. Trans Ova filed a motion for judgment on the pleadings, arguing that the asserted claims of one of the patents are ineligible under 35 U.S.C. § 101. Applying the Supreme Court’s two-step Alice framework for determining patent eligibility, the district court determined that the claims are ineligible under § 101. At Alice step one, the district court found that the patent’s sole independent claim was directed to the abstract idea of a “mathematical equation that permits rotating multi-dimensional data.” At Alice step two, the district court found that the asserted claims lacked an inventive concept because XY admitted that each claim element was known in the art.

Trans Ova also filed a motion to dismiss, arguing that the district court should hold XY’s infringement allegations barred by claim preclusion. The argument was based on XY’s 2012 lawsuit against Trans Ova on infringement of different patents directed to similar technology (which was pending on appeal when the 2016 case was filed). The district court granted Trans Ova’s motion to dismiss infringement allegations of three patents cited in the 2016 suit, and stayed proceedings on XY’s remaining causes of action pending the outcome of the 2016 suit’s appeal. XY appealed the district court’s dismissal decision.

On appeal, the Federal Circuit found that the district court erred in finding that the claims are directed to a mathematical equation under Alice step one. The Court concluded that the asserted claims are directed to a patent-eligible improvement of a method of sorting particles using flow cytometry technology, not to an abstract idea. XY’s claim described detailed improvements to a physical technique, a step-by-step method for a laboratory process, which is patent eligible.

As to the issue of claim preclusion, the parties’ only dispute was whether the district court properly concluded that XY’s 2012 and 2016 lawsuits present the same cause of action. A cause of action is defined based on the transactional facts from which it arises, which in a patent case include both the asserted patents and the accused activity. Claim preclusion will be triggered by different patents only if the scope of the asserted patent claims in the two suits is essentially the same.

XY argued that the district court erred by failing to compare the currently asserted patent claims to the previously asserted patent claims to determine whether the causes of action in the two lawsuits are essentially the same. The Federal Circuit [...]

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Unlikely to Succeed: Preliminary Injunction Denied Despite Stipulation to Irreparable Harm

by Paul Devinsky | Aug 13, 2020 | Patents

In a dispute over the terms of a settlement agreement, the US Court of Appeals for the Federal Circuit found that a patent owner was not entitled to a preliminary injunction despite a stipulation that it would be irreparably harmed if the accused infringer breached certain provisions of the agreement. Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals, Inc., Case Nos. 20-1407, -1417 (Fed. Cir. July 31, 2020).

Takeda originally sued Mylan to prevent Mylan’s launch of a generic version of Takeda’s branded drug Colcrys. The parties ultimately settled under terms set forth in a settlement/license agreement, including a provision in Section 1.2(d) stating that Mylan would be entitled to launch a generic product after a Final Court Decision holding that all unexpired claims of the licensed patents that were asserted and adjudicated against a third party were either (i) not infringed or (ii) any combination of not infringed and invalid or unenforceable. The licensed patents included 17 Orange-Book-listed patents that Takeda had asserted against Mylan. The parties further agreed that a breach of this provision “would cause Takeda irreparable harm.”

While Takeda and Mylan were negotiating the settlement, another patent litigation that involved some of the licensed patents was ongoing (the West-Ward litigation). The West-Ward litigation involved a different party and a different drug product. Takeda did not assert all 17 patents in the West-Ward litigation. It only asserted eight and ultimately dismissed five with prejudice. On summary judgment, the district court in the West-Ward litigation found that the asserted claims of the remaining three patents were not infringed.

Mylan informed Takeda that it would launch its generic product, arguing that summary judgment in the West-Ward litigation triggered Section 1.2(d), allowing it to launch its generic product because all of the asserted claims remaining in the suit had been found not infringed. In response, Takeda filed a complaint alleging breach of contract and patent infringement, and sought a preliminary injunction to enjoin Mylan from its launch. The preliminary injunction motion was denied. Takeda appealed.

A plaintiff seeking a preliminary injunction must show (i) that it is likely to succeed on the merits, (ii) that it will suffer irreparable harm in the absence of preliminary relief, (iii) that the balance of equities tips in its favor, and (iv) that an injunction is in the public interest. The Federal Circuit’s decision focused on the first two factors: likelihood of success and irreparable harm.

The Federal Circuit’s analysis of the likelihood of success prong turned on the meaning of Section 1.2(d). Takeda argued that Section 1.2(d) had not been triggered because not all unexpired claims that were asserted in the West-Ward litigation had been found not infringed, specifically the asserted claims of the five withdrawn patents. Mylan argued that triggering Section 1.2(d) only required that all unexpired claims that had been asserted and adjudicated to be found not infringed or invalid, and because the asserted claims of the five dismissed patents were not adjudicated, it was not necessary that the dismissed claims be [...]

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Hooked on Precedent or Something New

by McDermott Will & Schulte | Aug 13, 2020 | Patents

Highlighting internal disagreement regarding patent eligibility under § 101, a divided panel of the US Court of Appeals for the Federal Circuit issued a series of opinions revising and reissuing a previous opinion on § 101 patent eligibility for a mechanical invention and, in an even split, denied a petition for en banc review. American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Case No. 18-1763 D.I. 134 (Fed. Cir. Oct. 3, 2019) (Dyk, J.) (Moore, J., dissenting); id. D.I. 133 (denying en banc by a 6–6 vote).

In October 2019, a divided Federal Circuit panel in American Axle v. Neapco affirmed a district court finding that method claims for a mechanical invention were invalid under 35 U.S.C. § 101. The majority specifically found that the claimed invention was nothing more than a recitation of Hooke’s law, which undoubtedly is a law of nature. Judge Moore dissented, arguing that the majority improperly expanded the § 101 eligibility inquiry beyond its statutory gatekeeping function and distorted patent eligibility under § 101 and enablement under § 112.

Neapco filed a petition for rehearing and a petition for rehearing en banc. Several amicus briefs were also filed. Notably, retired Judge Paul R. Michel, formerly the chief judge of the Federal Circuit, filed an amicus brief in support of the en banc petition because he believed the panel’s original decision “conflicts with the Supreme Court’s and [Federal Circuit’s] precedent.”

In view of the petition for rehearing, the original panel modified and reissued its opinion. The Court affirmed its original decision that two of the three independent claims were invalid under § 101 (patent claims 22 and 36); however, the Court reversed its original decision invalidating claim 1. Regarding claims 22 and 36, the majority reiterated that the claims were merely an application of Hooke’s law and that it was simply applying Supreme Court and Federal Circuit precedent, analogizing this case to the Supreme Court’s 1853 O’Reilly v. Morse decision where the Supreme Court determined the patentability of claims directed to a natural law of using electromagnetic force to transmit messages. When responding to the dissent, the majority reiterated that it was not departing from prior precedent, and that its “holding is limited to the situation where a patent claim on its face and as construed clearly invokes a natural law, and nothing else, to accomplish a desired result.”

Regarding claim 1, the majority reversed its original decision because the claim had an additional limitation that could cause the claim to not merely be an application of Hooke’s law. Because the district court did not address this limitation, the majority remanded the case so the district court could address this issue in the first instance.

Judge Moore maintained her dissent, arguing that the majority was announcing a new patentability test: the “Nothing More” test. She argued that the decision created a new test for instances when claims are directed to a natural law even though no natural law is specifically recited in the claims. Judge Moore further reiterated [...]

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