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Recommendations for Evolving Patent Eligibility of Hardware
Regardless of whether a patent practitioner's clients favor a stricter or more lenient eligibility regime, patent eligibility decisions continue to evolve. Patent practitioners have been seeking updated guidance since 2014's Alice Corp. Pty. v. CLS Bank Int'l, 573, U.S. 208 (2014) decision, and we may see some from American Axle & Mfg. v. Neapco Holdings, LLC, 967 F.3d 1285 (Fed. Cir. 2020). We are still waiting for a response to last year's invitation from the Supreme Court to the Solicitor General seeking guidance on granting certiorari in American Axle. Some practitioners have wondered why American Axle should be the subject of such long-awaited guidance. Indeed, practitioners filing an amicus brief in Interactive Wearables, LLC v. Polar Electro Oy, stated their preference for an application surrounding an "intuitive technology" over American Axle's "highly technical subject matter." Interactive Wearables, LLC v. Polar Electro Oy, et al., No. 21-1281, Brief of the Chicago Patent Attorneys as Amici Curiae in Support of Petitioner at 4 (U.S. April 21, 2022). However, it can be argued that the level of technicality is indeed what makes it the right case: We need a line drawn for what practitioners expect to be clearer. Hardware inventions are facing patent eligibility challenges that would have seemed more likely in software inventions. Recent court decisions have shown that what once made a hardware invention eligible may no longer fly.
Practitioners can no longer rely on arguments for their hardware patent applications that worked in the years immediately after Alice. Practitioners must be aware of the evolving eligibility decisions on hardware applications before the realization of an alternate world where a practitioner asks themselves how they can get their hardware application out of art unit 3600, the USPTO epicenter of rejections based on subject matter ineligibility. This article provides recommendations for practitioners to create more robust hardware patent applications that would stand against the developing subjectivity around patent eligibility with hardware patents.
Older Eligibility Decisions
In 2017, the Federal Circuit decided that a particular arrangement of inertial sensors in Thales Visionix, Inc. v. United States, 122 Fed. Cl. 245 (2015), rev'd and remanded, 850 F.3d 1343 (Fed. Cir. 2017) lent itself to patent eligibility under Step One of the Alice Test, which looks to whether a patent claim is "directed to" a patent ineligible concept. In an opinion authored by Judge Moore and joined by Judges Wallach and Stoll, the Federal Circuit referenced the "unconventional utilization of inertial sensors," citing to multiple areas of the specification of Thales Visionix's U.S. Patent No. 6,474,159 (the '159 patent). See, Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348 (Fed. Cir. 2017). Furthermore, the Federal Circuit saw the claims in Thales Visionix Inc. to be "nearly indistinguishable" from the claims in Diamond v. Diehr, 450 U.S. 175 (1981) which were patent eligible for being directed to a rubber curing process rather than a law of nature. See, Thales Visionix, 850 F.3d at 1348.
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