Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge

Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge

USPTO Clarifies Stance on 101 Challenges Before the PTAB

Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter (35 U.S.C. § 101). Under the discussed theories, a 101 challenge is not a statutory basis for invalidity, and, as such, is necessarily excluded from the available grounds to initiate Post Grant Review (PGR) and the Covered Business Method (CBM) Challenge. I, for one, never quite followed the logic of this argument as it seemed to ignore the reality of the controlling case law on point (if not the explicit legislative history of the AIA).

This past Monday, USPTO Director Kappos explained (quite correctly in my opinion) that PTAB patentability challenges embrace 101 grounds (here).

The Director explains that:

As we described in our final rules implementing post-grant review and covered business method review in the Federal Register, in our view the "grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement." 77 Fed. Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the relevant case law and the legislative history.
Both the Supreme Court and the Federal Circuit have concluded that § 101 is a condition for patentability. In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966) [enhanced version available to subscribers], the Supreme Court stated that the 1952 Patent Act "sets out the conditions of patentability in three sections," citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court has also addressed invalidity under § 101 when it was raised as a defense to an infringement claim under § 282. See Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012) [enhanced version available to subscribers].

If that were not clear enough, the Federal Circuit expressly rejected the argument - raised by the dissenting judge in the case - that § 101 is not a "condition for patentability" under § 282, stating that "the defenses provided in the statute, § 282, include not only the conditions of patentability in §§ 102 and 103, but also those in § 101." Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012) [enhanced version available to subscribers] (internal quotation marks omitted) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008) [enhanced version available to subscribers]).

The Federal Circuit in Dealertrack also made clear that the use of the term "Conditions for patentability" in the titles of §§ 102 and 103, but not § 101, did not change the result, relying on the Supreme Court's pronouncement in Pennsylvania Department of Corrections v. Yeskey, 524 U.S. 206, 212 (1998) [enhanced version available to subscribers] (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947) [enhanced version available to subscribers]), that a statute's title "is of use only when it sheds light on some ambiguous word or phrase" in the statute and that it "cannot limit the plain meaning of the text." Id. (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947) [enhanced version available to subscribers]).

The legislative history of the AIA also makes clear that Congress intended the PTAB to consider challenges brought under § 101 in post-grant reviews. For example, a key House Committee Report states that "the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282." H.R. Rep. No.112-98, at 47 (2011). On the Senate side, Senator Kyl also included "section 101 invention issues" among those "that can be raised in post-grant review." 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
So, the courts and Congress have indicated quite clearly, in our view, that the PTAB should consider patentability challenges brought under § 101 in post-grant and covered business method reviews. Unless the courts or Congress tell us otherwise, we will do so.

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