{"id":1734,"date":"2017-08-28T07:42:17","date_gmt":"2017-08-28T11:42:17","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1734"},"modified":"2017-09-03T07:45:04","modified_gmt":"2017-09-03T11:45:04","slug":"preemption-is-part-and-parcel-of-the-%c2%a7101-but-lack-of-preemption-does-not-necessarily-establish-patentability","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1734","title":{"rendered":"Preemption is “Part and Parcel” of the \u00a7101; But Lack of Preemption Does Not Necessarily Establish Patentability"},"content":{"rendered":"

In Return Mail, Inc. v. United States Postal Service<\/a>, [2016-1502] (August 28, 2017), the Federal Circuit affirmed the PTAB’s decision that the US Postal Service had standing to challenge Return Mails patents in an CBMR, and that as a result of that challenge the patents were not patentable subject matter under 35 USC \u00a7101.<\/p>\n

The Federal Circuit held that it had authority to review the standing issue,\u00a0concluding that Cuozzo<\/em> and\u00a0Achates<\/em> are distinguishable and do not dictate the availability\u00a0of judicial review in this case. \u00a0The Federal Circuit distinguished Cuozzo<\/em>, finding that\u00a0whether a party is statutorily allowed\u00a0to petition for CBM review does not amount to \u201clittle more\u00a0than a challenge to the [PTO\u2019s] conclusion\u201d about the\u00a0petition\u2019s likelihood of success on the merits. \u00a0The Federal Circuit distinguished\u00a0Achates based on differences in the\u00a0statutory framework for IPR and CBM review, CBM review being reserved only to parties who have have been sued\u00a0for or charged with infringement of the underlying patent. \u00a0The Federal Circuit further noted that\u00a0unlike the IPR time bar at issue in Achates,\u00a0<\/em>which is simply a procedural requirement that rights\u00a0be exercised in a timely manner, \u00a7 18(a)(1)(B) relates to a\u00a0party\u2019s right to seek CBM review in the first instance. \u00a0The Federal Circuit held\u00a0that \u00a7 324(e) does\u00a0not bar judicial review of the Board\u2019s decision that a party\u00a0satisfies \u00a7 18(a)(1)(B)\u2019s requirements to petition for CBM\u00a0review.<\/p>\n

On the standing issue, the Federal Circuit found that Return Mail made several cogent arguments why a\u00a0\u00a71498(a) suit is not one for \u201cinfringement,\u201d but despite the important\u00a0differences between \u00a71498(a) suits against the government\u00a0and suits for infringement against private parties,\u00a0these differences, along with Return Mail\u2019s other arguments,
\nwere insufficient to compel a conclusion that Congress\u00a0intended to exclude a government-related party\u00a0sued under \u00a7 1498(a) from being able to petition for CBM\u00a0review.<\/p>\n

On the patentable subject matter issue under 35 USC 101, Return Mail argued that the claims\u00a0may involve<\/em> the abstract idea of \u201crelaying mailing
\naddress data\u201d but are not directed<\/em> to such an abstract\u00a0idea. \u00a0Return Mail first argued that the claims do not preempt other systems\u00a0for relaying mailing address data; and second, that the claims are\u00a0directed to a specific improvement to technology for\u00a0relaying mailing address data. \u00a0The Federal Circuit disagreed, finding that the claims were directed to an abstract idea, much like the claims in\u00a0Content Extraction\u00a0<\/em>and \u00a0FairWarning<\/em>. \u00a0The Federal Circuit further found the argument that the claims were directed to a specific improvement was also unavailing, noting that limiting the abstract idea to a particular environment such as a mail processing system with generic\u00a0computing technology, \u201cdoes not make the claims any less\u00a0abstract for the Alice Step 1 analysis.<\/p>\n

On the Alice Step 2 analysis, the Federal Circuit said that\u00a0the
\nclaims at issue were not analogous to claims \u201cdirected to a\u00a0specific implementation of a solution to a problem in the\u00a0software arts,\u201d which it has held not to be directed to\u00a0an abstract idea. \u00a0The Federal Circuit found that the claims\u00a0only recite routine, conventional activities such as identifying\u00a0undeliverable mail items, decoding data on those\u00a0mail items, and creating output data.<\/p>\n

At Return Mail’s instance, the Federal Circuit expounded on the role of preemption in the \u00a0\u00a7101 analysis. \u00a0The Federal Circuit noted that preemption is the underlying concern that\u00a0drives the \u00a7101 analysis. \u00a0The Federal Circuit said that\u00a0monopolization of the basic tools of scientific and
\ntechnological work \u00a0would thwart the primary object of\u00a0the patent laws to promote future innovation, concluding that “[p]reemption is therefore part and parcel with the \u00a7101\u00a0inquiry.” \u00a0The Federal Circuit noted that\u00a0while it has often cited the lack of\u00a0preemption concerns to support a determination that a\u00a0claim is patent-eligible under \u00a7 101, it has consistently held that claims that are\u00a0otherwise directed to patent-ineligible subject matter\u00a0cannot be saved by arguing the absence of complete\u00a0preemption.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Return Mail, Inc. v. United States Postal Service, [2016-1502] (August 28, 2017), the Federal Circuit affirmed the PTAB’s decision that the US Postal Service had standing to challenge Return Mails patents in an CBMR, and that as a result … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15,39],"tags":[],"class_list":["post-1734","post","type-post","status-publish","format-standard","hentry","category-15","category-cbmr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1734","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1734"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1734\/revisions"}],"predecessor-version":[{"id":1737,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1734\/revisions\/1737"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1734"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1734"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1734"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}