One facet of the Section 101 patent-eligibility analysis looks at preemption. The preemption analysis goes back decades to Supreme Court jurisprudence and excludes from patentable subject matter a claim that recites an abstract idea that preempts substantially all uses of that idea in the claim’s technical field.
This Amici brief, filed October 26, 2016, seeks full-court review of McRO to avoid confusion arising from the McRO decision, specifically on the meaning and role of “preemption” in a Section 101 patent-eligibility analysis. The panel held that the claims were directed to using particular “mathematical rules.” It approved the claims primarily because they did not preempt “alternative discoveries” or “alternative rules-based methods.”
Amici argue that the standard “preemption” analysis does not ask about “alternatives”; the standard “preemption” analysis asks whether these claims foreclose (preempt) substantially all uses (implementations), in this technical field, of the specific mathematical algorithm they claim — not alternatives to that idea. “Instead of asking whether the public can use the claim’s idea without infringing the claim, the panel asked whether the public could find some alternative idea to use. This entirely different test clothed in the same standard ‘preemption’ label is bound to confuse judges and examiners.”
Link to the Brief.