This spring Tabet DiVito & Rothstein submitted a brief on behalf of the Intellectual Property Law Association of Chicago (IPLAC) as amicus curiae, in support of a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit, in Synopsys, Inc. v. Mentor Graphics Corp., No. 16-1288 (2017).
IPLAC’s brief supports Synopsys’s request for certiorari on yet another Federal Circuit decision that has further muddied the waters about Section 101 patent eligibility.
The brief recognizes that the U.S. district courts’ wide-ranging application of the two-step Alice test has eroded the necessary predictability in the law about what types of inventions remain patent-eligible.
The current lack of a settled rubric for determining patent eligibility under §101 means that some decisions on eligibility are based on analogies extrinsic to the claim language, while others, such as that in Synopsys v. Mentor Graphics, fail to credit anything but the claim language.
Our innovation economy cannot long endure a system that interprets claim language extrinsically only or intrinsically only on a whim. A continuing lack of settled law will result in an insurmountable barrier to patentees seeking protection for patent-eligible inventions.
Tabet DiVito & Rothstein filed IPLAC’s brief in support of the petition for certiorari on May 31, 2017.