IPO published the following announcement on April 1st:

Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took the action sua sponte without the filing of any motion by either party. After determining that the U.S. Constitution vests within the U.S. Supreme Court the power to change its own final judgment after five years, the Court explained the defect in its original opinion. “The repeated use of the term ‘abstract idea’ in the original opinion doesn’t make sense. Every idea is abstract! And every invention makes use of some idea, right?” It remanded the case to the Federal Circuit to devise a clearer test for patent eligibility.

Editor’s note: Happy April Fool’s Day!

We could only wish. Several 101 related decisions have recently been issued by the Federal Circuit, one in particular baffling many readers.

The baffling case in which the patent in suit was found ineligible was ChargePoint, where the patents were directed to electric vehicle charging stations that connected to a network. The claims included “An apparatus, comprising … a control device …; a transceiver … ; and a controller.” Apparently this was not enough to keep it from a 101 challenge and invalidation as the Federal Circuit stated “[b]ut network control is the abstract idea itself” and “a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”

Around this same time three cases found subject matter to be eligible: Endo, Natural Alternatives, and SRI. And, one additional case did not: Trading Technologies.

Perhaps most troubling to patent practitioners was reasoning in some of these cases that was contradictory to the USPTO’s recently released guidelines on this same issue. The USPTO guidelines indicated it was summarizing and compiling the Federal Circuit precedent.

Given the continued murky situation around subject matter eligibility, it looks like we will all be in for more ‘wait and see.’ Meanwhile, several members of Congress also appear ready to take up this issue.

This article appeared in the April 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.