VoIP-Pal.com, Inc. v. Apple, Inc., et al.

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), this Court warned that shifting the patent-eligibility inquiry under 35 U.S.C. §101 to later sections of the Patent Act (35 U.S.C. §§102, 103, and 112) risks creating significant legal uncertainty. Despite this warning, lower courts have allowed §101 jurisprudence to drift far from its statutory mooring and subsume the inquiries prescribed by these later sections. This disregard for Congress’s carefully crafted framework has created legal chaos, destabilized the U.S. patent system, and disincentivized U.S. innovation. The district court opinion in this case invalidating the claims of four patents represents an egregious example of the failure to heed this Court’s warning. The questions presented are:

1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. §101?

2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

3. Is it improper to apply 35 U.S.C. §112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. §101?