Kaminski_Jeffri_LRJeffri A. Kaminski, Partner, Venable LLP, with Ryan T. Ward, Associate, Venable LLP. Mr. Ward was a Judge K.K. Legett Fellow at the Washington Legal Foundation in the summer of 2009 prior to his third year at Texas Tech School of Law.

The Federal Circuit continues to struggle with determinations of patentability under 35 U.S.C. § 101 in the wake of the Supreme Court’s Alice decision (Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)).  The most recent decision, Intellectual Ventures, LLC. v. Symantec Corp., (Intellectual Ventures) indicates a developing schism between the newer members of the court and the old guard.

The patents in Intellectual Ventures concern shifting anti-virus protection from a personal computer where virus screening was done locally to a cloud-computing environment.  The patents shift the screening to servers before the messages are delivered to the personal computers.  The district court held the claims ineligible under 35 U.S.C. § 101.  The Federal Circuit largely upheld the district court, ruling that the process of filtering content in the cloud as claimed was not substantively different from looking at an envelope and “discarding letters, without opening them, from sources from which [the receiving entity] did not wish to receive mail based on characteristics of the mail.”

However, it was the concurring opinion by Circuit Judge Mayer that raised national eyebrows.  Specifically, Judge Mayer states, “Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.”

Opinions differ on what constitutes a “software patent.”  However, 35 U.S.C. § 101 allows patents on novel “processes,” and the Supreme Court used multiple pages of the Alice decision explaining that improvements to “existing technological processes” are patentable.  Moreover, given the increasing importance of software to society, the idea that improvements to software processes should not receive patent protection seems unlikely.  The Court does, however, makes clear that an existing technological process or concept simply applied to a generic computer is not patent eligible.

Judge Mayer’s statement reflects a rift in the Federal Circuit between new appointees to the Federal Circuit and longer serving judges.  Consider the following: since the Alice decision, most of the Federal Circuit decisions determining patentability have invalidated the patents under review.  The few Federal Circuit decisions since Alice that have upheld patentability (Bascom, Enfish, and DDR Holdings v. Hotels.com, respectively), as well as the dissent in Intellectual Ventures, have each been written by judges that have joined the Federal Circuit since the Court decided Alice.

For example, Judge Chen (author of Bascom and DDR Holdings), nominated to the court in 2013, has a Bachelor of Science in Electrical Engineering, and has worked with patents throughout his career.  Judge Stoll (author of the dissent in Intellectual Ventures), has served just over a year, also has a Bachelor of Science in Electrical Engineering, and has spent over 16 years as a patent litigator.  Judge Hughes (author of Enfish) also took the bench in 2013, and has a Bachelor of Arts degree with a background in commercial litigation before joining the Department of Justice.  By contrast, Judge Mayer (author of the Intellectual Ventures concurrence) and Judge Dyk (author of the Intellectual Ventures decision) are two of the longer-serving judges on the Federal Circuit, at 29 and 16 years, respectively.

Every judge in any type of case is going to have their particular preferences and bring a slightly different spin to their analysis.  The variety of analyses helps ensure that all viewpoints are heard, and ideally results in a more robust judicial system and body of caselaw.  However, at present it appears the Federal Circuit’s § 101 jurisprudence is becoming very panel dependent.