Last week, CPIP Senior Scholar Adam Mossoff and I filed an amicus brief on behalf of 15 law professors, including CPIP’s Devlin Hartline, Chris Holman, Sean O’Connor, Kristen Osenga, and Mark Schultz. We urge the Supreme Court to grant certiorari in TDE Petroleum v. AKM Enterprise and reaffirm that any analysis of an invention must be of the claimed invention as a whole.

Unfortunately, lower courts and the Patent & Trademark Office have been applying a test of patent eligibility that allows breaking up an invention into parts and then analyzing the parts separately. Sometimes, as in the case here, a court will completely ignore an element of the invention. This needs to be fixed. Any invention is defined by its entirety, not by its isolated parts.

As I discussed before, TDE Petroleum’s patent claims a method of operating an oil rig. Part of the method uses software. But as the claim discussed in our brief makes clear, the end result of the method is control of a physical well with a drill running inside the earth. However, the courts that have looked at this patent so far have only considered the function of certain software elements and pretend the oil rig is not important. Such unimpeded dissection of claims makes it easy to invalidate important patented innovation notwithstanding the contribution to the field.

The full amicus brief can be found here. In addition to showing that the claimed invention is a method of operating an oil rig, we show why the claim precisely parallels a claim to a method of molding rubber found patent eligible by the Supreme Court 36 years ago.