No. 21-6050

James Bongiorno v. Drew Hirshfeld, Acting Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office

Lower Court: Federal Circuit
Docketed: 2021-10-21
Status: Denied
Type: IFP
Response WaivedRelisted (2)IFP
Tags: abstract-idea cantrell-v-wallick electronic-unit functional-improvement hardware-structures machine machine-patent patent-eligibility section-101
Latest Conference: 2022-01-14 (distributed 2 times)
Question Presented (from Petition)

Section 101 of the Patent Act provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." The decision in Alice Corp. Pty. Ltd. v. CLS Bank Inti, 573 U.S. 208, 212, 221, and 226 (2014), found a method of "mitigating 'settlement risk'" to be a patent-ineligible "abstract idea implemented on a generic computer." However, since that decision did not need to "delimit the precise contours of the 'abstract ideas' category," the bounds of the category have expanded unabated, vacating rights afforded by section 101 for a new and improved machine. The questions presented are:

1. Whether a new and non-obvious "dedicated electronic unit" with new hardware structures including a plurality of "special function buttons [to] enable the user to more easily navigate through the software" (App. 73a), which "increase its usefulness," and its "effectiveness," is a patentable "machine" in accordance with Cantrell v. Wallick, 117 U.S. 689, 694 (1886).

2. Whether presumptive patent-eligibility of a "new and useful improvement" to a "machine" under section 101 is eviscerated because the analog of the mechanical functionality provided by the physical "machine" components (e.g., the "function buttons") and the corresponding software functionality of the "dedicated electronic unit" can be programmed to operate in a similar manner using the touch screen of a "generic computer."

Question Presented (AI Summary)

Whether a new and non-obvious 'dedicated electronic unit' with new hardware structures including a plurality of 'special function buttons' is a patentable 'machine'

Docket Entries

2022-01-18
Petition DENIED.
2021-12-30
DISTRIBUTED for Conference of 1/14/2022.
2021-12-27
Petitioner complied with order of December 6, 2021.
2021-12-06
The motion of petitioner for leave to proceed in forma pauperis is denied. Petitioner is allowed until December 27, 2021, within which to pay the docketing fee required by Rule 38(a) and to submit a petition in compliance with Rule 33.1 of the Rules of this Court.
2021-11-17
DISTRIBUTED for Conference of 12/3/2021.
2021-11-15
Waiver of right of respondent Hirshfeld, Drew to respond filed.
2021-11-05
Blanket Consent filed by Petitioner, James Bongiorno
2021-10-19
Petition for a writ of certiorari and motion for leave to proceed in forma pauperis filed. (Response due November 22, 2021)

Attorneys

Hirshfeld, Drew
Elizabeth B. PrelogarSolicitor General, Respondent
James Bongiorno
James Bongiorno — Petitioner