Foley Hoag recently filed an amicus brief on behalf of The American Intellectual Property Law Association with the Supreme Court in USAA v. PNC Bank, N.A. in support of USAA's petition for certiorari. The brief urges the Court to provide much-needed guidance to address the unpredictable and overly broad application of the judicial exceptions to patent-eligible subject matter under 35 U.S.C. § 101, particularly the "abstract idea" exception.

AIPLA argues that since the Supreme Court's 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, the jurisprudence surrounding the "abstract idea" exception has diverged from Congress's express intent as reflected in the framework of the 1952 Patent Act. The brief explains how courts historically commingled patent eligibility and patentability analyses, giving rise to a subjective and inconsistent "inventive concept" inquiry for determining what qualifies as a patentable invention.

AIPLA contends that Congress sought to remedy this uncertainty through the 1952 Patent Act, which established a clear framework separating patent eligibility under § 101 from the distinct requirements of patentability under §§ 102, 103, and 112. However, the Federal Circuit's current application of the Alice/Mayo two-step eligibility test has once again conflated these inquiries and substantially narrowed the scope of patent eligibility.

The brief further argues that without the Court's intervention, the continued expansion of judicial exceptions under § 101 will stifle U.S. innovation, deter the investments necessary to accelerate technological progress, and cede American technological leadership to foreign competitors.

The Foley Hoag team was led by Barbara Fiacco and included Valerie Orellana.