Finding the limits of ineligibility

by Dennis Crouch

It is safe to say that hundreds of thousands of U.S. patents rely upon the manipulation of information or laws of nature as fundamental aspects of their respective inventions. Many of these patents rest on shaky ground following the Supreme Court’s recent decision in Alice Corp. v. CLS Bank (2014).  Alice Corp.  has the potential of being broadly interpreted, but a major problem with the opinion is that it offers few limiting principles for the definitions of ‘abstract idea’ and ‘law of nature.’  Federal District Court Judge Wu most recently pessimistically described the new test as “I know it when I see it.”  As such, patent attorneys working in the software and biotechnology fields wonder if the sky is falling.  Although storm-clouds have gathered for some, the sky is not falling for the patent system. And, the new scope of eligibility is more well defined than many think.

The critical step for understanding Alice Corp. is to recognize that the case was not decided in a vacuum. Rather, the Supreme Court has a long and multi-generational history of wrestling with concepts of patent eligibility.  Alice Corp. fits within that precedent as an incremental addition, but without rejecting or even modifying the Supreme Court’s own prior precedent.  Rather, what Alice Corp. has rejected is the prior analysis of the Federal Circuit and US Patent Office that seemingly allowed for the patenting of systems and processes whose inventors relied upon only an iota of hardware to separate the patented invention from an underlying abstract idea or law of nature. The new cohort of Alice Corp. (2014),  Myriad (2013), Mayo (2012) and Bilski (2010) collectively wipe-away thirty years of Federal Circuit precedent on eligibility, but at the same time, revive 150-years of Supreme Court doctrine on the topic. Although somewhat cyclic, throughout this time inventors have continually been able to obtain new patents to cover their inventions and enforce those patents against would-be free-riders.  This has been the situation for decade upon decade and will continue.  As Chisum writes, the patent laws “have been interpreted so as to cover most of the new technologies that evolved during the last 200 years.” Chisum on Patents Section 1-1 (2014).

Moving forward a key approach is to look again for the limiting principles of the last cohort of eligibility cases — Diamond v. Diehr, 450 U.S. 175 (1981); Diamond v. Chakrabarty, 447 U.S. 303 (1980), Parker v. Flook, 437 U.S. 584 (1978); and Gottschalk v. Benson, 409 U.S. 63 (1972).  Of course, these cases were decided in a different technological age – before even the birth of many contemporary inventors and need to be understood and given credence in a way that fits with the direction of technological innovation. However, care should be taken not to simply whitewash their holdings.  And, although these pre-CAFC decisions by the court appear historical, they are relatively new when compared with the Supreme Court’s body of eligibility decisions.  The principles laid down by the Supreme Court’s Pre-CAFC decisions were already known and discussed in dozens of prior cases.  As you read these old cases, the language and patterns become repetitive and more predictable, if also nuanced.  See, e.g., Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1852); Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863); O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112-20 0853); Cochrane v. Deener, 94 U.S. 780 (1876); Munson v. Mayor of New York City; Kewanee Oil v. Bicron Corp., 416 U.S. 470, 483 (1974);  Jacobs v. Baker, 74 U.S. (7 Wall.) 295, 19 L. Ed. 200 (1869); Corning v. Burden, 56 U.S. 252, 267 (1853); Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68, 72-73 (1895); Am. Wood-Paper Co. v. Fibre Disintegrating Co., 90 U.S. 566, 593-96 (1874); Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311-12 (1884); Smith v. Snow, 294 U.S. 1, 5-6 (1935); Waxham v. Smith, 294 U.S. 20, 22 (1935); J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 130 (2001); Mackay Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 (1939); Rubber-Tip Pencil v. Howard, 87 U.S. 498, 507 (1874); Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); etc.

As Bilski suggests, the historic cases offer clues to understanding our revived approach to patent eligibility.  For some, the answers uncovered from will be frustrating because we are far from the pithy expanse of “anything under the sun made by man” that has – at times – been supported by the Federal Circuit.  And certainly, a number of patents will be invalidated. However, this policy shift does not foretell the death of our system and likewise, it does not offer a free-for-all to invalidate any patent on a whim.  Of course, in order to avoid those results, the next steps need to be re-identifying and categorizing our years of precedent with an eye to applying them today and tomorrow.

109 thoughts on “Finding the limits of ineligibility

  1. 14

    This, Dennis, is putting the proverbial lipstick on a pig. The underlying issue is a judiciary that refuses to adhere to the standard it applies to all attorneys appearing before it: becoming competent in the subject matter of the controversy at bar. Until judges either become technically and scientifically literate, or avail themselves of the use of court-appointed experts and special masters who are, the system will continue to be, as Judge Wu recently stated, the standard is, “I know it when I see it.”

    1. 14.1

      It is worse than that – this weakness is actively exploited in order to “enjoy” the ease of changing law outside of the legislative process – so that “policy”/opinion of the judiciary over rides the words of Congress.

      Common law supplanting statutory law – in the direct face of the history of the 1952 Act and the very rebuke of “inventive gist” that pervades the actions of the Supreme Court – and the CAFC (which bears repeating: had been a proxy for Congress in its charter).

      Judge Rich understood this role as proxy and “final word” on patent law in order to bring about clarity to patent law. Such was what enabled him to brush aside the rampant dicta in cases like Benson.

      Dicta that is now embraced as re-writing hard law. Once again, it is ironic that of all people to provide a source on the danger of using dicta to supplant law, that being one Ned Heller, we have RAMPANT idolization of dicta and judicial common law being attempted to be treated as legitimate re-writing of the actual words of Congress. And NO ONE seems to care to note the very real differences in legal regimes between common law and statutory law (well, other than Prof. Hricik perhaps).

      This – stressing the very real differences in type of legal development – is NOT idle academic navel gazing. Our constitution is very very very clear where the authority to write patent law rests – and such is not a shared designation. The legislature can share that authority (and has in limited ways – again see 35 USC 282 as an example). 35 USC 101 simply does not share that authority. And this was made abundantly clear when 35 USC 103 was carved out of the words that became 35 USC 101. Please do not buy into the distraction that the words of Frederico offer in that the scope of 101 and eligibility was not changed. Note the words of 103 that reflect that judicial decisions of wide use were deemed errant by Congress. To ASSUME that all judicial decisions prior to 1952 were blessed by Congress is to grossly misunderstand history.

      Will this snarkless comment see the light of day?

      Perhaps.

      But the better question is: will any further discussion be framed in the proper historical context?

      Or will this proper context suffer the internet version of being shouted down by repeated posts that simply ignore what should not be ignored.

    2. 14.2

      Thanks Lawrence, I can understand where you are coming from — especially if you only read Alice Corp v. CLS Bank and Mayo v. Prometheus and without considering their full context. Elsewhere in this thread, I offered one response to Judge Wu’s comment.

    3. 14.3

      Mr. Husick, may I respectfully suggest that Alice is entirely consistent with the cases on patentable subject matter going back to Le Roy v. Tatham. To the extent that you are unwilling to understand the principles of these cases is not the fault of the judiciary.

  2. 13

    Has anyone heard of any layoffs attributable to Alice? It seems to me that if the sky were falling that our colleagues who draft software patents would be getting starved for work. Any rumblings on that front?

    1. 13.1

      Simply too early to tell. Folks are waiting for updated guidelines from the USPTO on Alice for one thing. Next, there will be a period of time where practitioners attempt to adjust to the new rules (if not clearly unworkable). The USPTO will answer most of your questions with how they examine applications. If software patents become next to impossible to obtain, clients will stop filing them. If that happens, it’s only a natural consequence that people practicing in those areas will start to be pruned. The same will occur at the USPTO. Some art units will disappear all together.

  3. 12

    “anything under the sun MADE by man”. unfortunately, too many computer implemented inventions claim functions, results, the experience of a user operating a computer, etc. they do not claim what the inventor/programmer MADE, and so these patents should be invalidated.

    1. 12.1

      So if you are right, the question is how? A principled way applying law or rouge judges looking at something and determining whether they feel it deserves to be invalidated or not?

  4. 11

    Dennis, I’m far from convinced that *any* of your cited precedent before Benson refers to the abstract idea exception. Arguably, Benson created the abstract idea exception. All of the other cases (e.g., pre-1952 cases) refers to doctrines that are conceptually distinct: obviousness, indefiniteness, non-enablement, anticipation. Wegner argues that Rubber Tip Pencil and similar 19th century cases had nothing to do with subject matter eligibility, and instead related to anticipation.

    Of course, the SCOTUS cites 19th century case law in justifying the abstract idea exception in Benson. SCOTUS does lots of things, including ignoring inconvenient parts of Diehr and reinterpreting it beyond all recognition.

    1. 11.1

      Kip, there is some truth in what Wegner argues in that the Supreme Court did not distinguish carefully between statutes (101, 102) in holding claims unpatentable prior to 1952, probably for the reason that in that that time there were no separate statutes for patentable subject matter and prior art. Thus in the Rubber-Tip case, the claim was to a piece of rubber for attachment to the tip of a pencil or the like. Essentially the court held that the idea of attaching the piece of rubber to a tip without more was merely an idea, and the piece of rubber itself was old, along with its known ability to attach to other objects because of its elasticity.

      The court suggested, of course, that the claim would have been patentable had the claim required the attachment of the rubber to the tip was some new mechanism.

      But the principle of the case has been followed consistently. An idea by itself, as in the Rubber-Tip case, is not patentable as such. But this is true not only of the idea of attaching a piece a rubber to the tip of a pencil, but to any so-called principal in the abstract. It must be applied to produce some useful end, and that end must, in the words of Diehr, must be something the patent laws were designed to protect. And if you think about that phrase, you will instantly see that the patent laws were intended to protect new and improved, useful, machines, manufactures and compositions of matter.

      1. 11.1.1

        Ned that is such muddled thinking. That is the same sort of circle nonsense that Benson is based on.

        Break it down: eraser + pencil. No particularly novel structure in the attachment. One could say that if you functional claimed the eraser plus pencil that one skilled in the art could figure out the various solutions.

        So, it isn’t really an idea is it? It is a structure. Attach an eraser plus a pencil. Structure. That structure is novel. But is it obvious? That was the real question here. The SCOTUS basically said that the structure was obvious.

        The same thing could be said of fiber optic cable. In fact Ned compare and contrast the two. Fiber optic cable is just an idea like rubber tip pencil. ISN’T IT? Now no running away from this one Ned. Don’t ignore this and run like you do.

        Think. Fiber optic cable is exactly like rubber tip pencil. The only difference is that in former it is held non-obvious and in the latter it is held obvious with a strange label to it of “an idea in of itself.” What a mess they made with that phrase. So, what did that mean now Ned? Now face reality here. It means that the structure was just apply it like it was in fiber optic cable, but that COMBINATION of the eraser plus pencil was obvious.

        Geez, you anti people are just outrageous at your bizarre interpretations of simple case law.

        1. 11.1.1.1

          Just shameful the bizarre way you and Stern have interpreted these cases.

          1. 11.1.1.1.1

            I think it would a lot easier to be civil if I believed that the anti crowd was being intellectually honest about their analyses. But I do not. I think this functional claiming movement is nonsense. And, I think the interpretation of the old cases in Benson is outrageous and based on believing that information processing by humans is not based on using our brains.

            1. 11.1.1.1.1.1

              What do you mean by anti-crowd? I am strongly pro-patent, and you know that.

              I think what is going on here regarding functional claiming is that the Supreme Court is requiring that the claims be confined to the invention, and not broadly claim results.

              Regarding business methods, the courts clearly understand that the invention is not in the computers or in purported software.

              1. 11.1.1.1.1.1.1

                >I think what is going on here regarding functional claiming is >that the Supreme Court is requiring that the claims be >confined to the invention, and not broadly claim results.

                What is going on here is Lemley is pushing for not interpreting the claims in view of one skilled in the art. And pushing for ignoring the plain language of 112 enablement. That is what is going on. Lemley has said flatly in writing that this is a way to get rid of software patents.

              2. 11.1.1.1.1.1.2

                OK Ned. I will call you an anti-information processing person. How is that?

                1. Being anti business method is the same as being anti patent because all patents at their core are business methods. Inventors invent and file patents on inventions because they want to start and/or make money off business and industry. Indeed the patent clause giving congress the power to promote the progress of the useful arts is all about promoting business and industry. Unlike literary or performance arts the useful arts in the constitution are business methods. When the patent clause was written no one was mixing potash for leisure or artistic purposes. It was for business, to make money, to make a profit. And a new, faster, more efficient method for doing it was the subject of the first patent in our country. Only a socialist, or those with pro socialist leanings would be anti patent and especially anti business method patents. Software is indeed a business method because it helps a business run more efficiently and produce faster which means higher profits. Those against patents and business method patents in particular only need look to North Korea to see where their ultimate dream would lead.

        2. 11.1.1.2

          Well Night, there is some truth in thinking about the Rubber-Tip case that the claim was for attachment of the rubber Tip to the pencil without specifying any particular means for attachment, just shaping the rubber Tip in order that it might attach to the pencil through elasticity. But that quality of rubber was known and its ability to attach to tips of various kinds also was known. Therefore you can view the case as a form of obviousness.

          However, the form of attachment was unspecified. If somebody were to come along with some novel and improved attachment structure, the claim would cover it. In fact, most pencils today have rubber tips attached using some kind of attachment mechanism, not simply pieces a rubber fit to the tip of the pencil and held there by the elasticity of the rubber itself.

          This goes back again to cases like Wyeth v. Stone which held that the suggestion to use any mechanism or means, any machine, that could cut ice in blocks was unpatentable. One could say that the idea was expressed at too high level of abstraction and more detail had to be in the claim. But the problem really, again, was that the scope of the claim was far too broad, far too abstract, far too encompassing to be tolerated.

          1. 11.1.1.2.1

            LizardTech is the proper way to police claim scope.

            Now you are really going in 112.

  5. 10

    To Ned, let’s see what Rich said about HOtel Security

    Even the case frequently cited as establishing the business method exception to statutory subject matter, Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir.1908), did not rely on the exception to strike the patent.[15] In that case, the patent was found invalid for lack of novelty and “invention,” not because it was improper subject matter for a patent. The court stated “the fundamental principle of the system is as old as the art of bookkeeping, i.e., charging the goods of the employer to the agent who takes them.” Id. at 469. “If at the time of [the patent] application, there had been no system of bookkeeping of any kind in restaurants, we would be confronted with the question whether a new and useful system of cash registering and account checking is such an art as is patentable under the statute.” Id. at 472

      1. 10.1.1

        Night, Rich was making the point that the observation about patentable subject matter was dicta in that case. However, he failed to note Hotel Security was soon followed by other courts, for example Guthrie v. Curlett, which base their holdings on Hotel security’s dicta. Guthrie was also cited by Stevens in Bilski, and was the basis for the CCPA’s holding in In re Russell that printer matter was nonstatutory invention had to be in the statutory part of the claim.

        In other words, Rich created a strawman and knocked it down because it is quite irrelevant whether the dicta about patentable subject matter was the holding of that case because it was followed in numerous other cases.

        1. 10.1.1.1

          So you are admitting then that Hotel Security is not a case to cite for patentable subject matter?

          1. 10.1.1.1.1

            Night, Hotel Security actually is citable, for its dicta was followed.

            This is somewhat like the CCPA case of In re Bernhardt that suggested in dicta that a programmed computer recited a new machine because it circuits were structurally modified with a program. Subsequent cases actually based there “holding” on Bernhardt, including Alappat. This does not mean that Bernhard is not authority because it’s dicta was not there its holding.

            1. 10.1.1.1.1.1

              Well it does mean that. Dicta does not become a holding when it is cited in another case.

              1. 10.1.1.1.1.1.1

                Night, but you do not dispute that holding is a holding even if it’s only authority is dicta based on a prior case.

                1. The holding is the holding. If it wasn’t overturned then it can be cited. But you can’t cite dicta (properly) just because another case got away with it. You have to cite the other case.

  6. 7

    Just like I was first to state on this blog, “Integration” is the key to determining statutory subject matter, especially for a process invention.

    And while there is no machine, transformation or technology requirement for statutory subject matter, “Integrating” a process, (be it economic or otherwise) with a machine and or any technology improves the utility of the process, and makes the “process” statutory. This was established as controlling case law in Diehr, explicitly upheld in Prometheus, and was not overturned in Alice.

    Furthermore, any celebration of the overturning of software patents by the lower courts is vastly misplaced and will be short lived. As those cases are processes that can be performed independently of the technology of which they are being used on or by. Thus they are not ‘legally’ integrated. However as we speak, astute Patent Attorneys and their clients are already filing new process inventions that are fully integrated with technology be it a pencil and paper, nail and hammer, or a complex information process system. This new crop of patent applications are untouchable at 101, ( although all will rise and fall on the merits of novelty and obviousness.) once a new “integrated” process application reaches the Supreme Court it will be upheld and a new floodgate of business methods, software, and computer system patents will be granted. And barring an act of congress there is nothing anyone can do to stop it. So, indeed, all is well.

      1. 7.1.1

        “I also hope we can find the limits of the new “test” soon.”

        The limits are to processes that can be performed independently of the technology of which they are being used on or by. Any court that goes beyond this is committing a gross legal error and setting a dangerous precedent; as the Supreme Court has never held anything more, nor is there anything in the congressional record, statute or constitution that would justify denying patents for “integrated” technological processes.

    1. 7.2

      once a new “integrated” process application reaches the Supreme Court it will be upheld and a new floodgate of business methods, software, and computer system patents will be granted. And barring an act of congress there is nothing anyone can do to stop it.

      Why is “integrated” in quotes?

    2. 7.3

      How will the claims integrate technology and still cover the broad abstractions that make these patents valuable?

      How would you rewrite the claims in Bilsky or Alice or Ultramercial or the Bingo case to make them bulletproof and clearly §101 eligible? An example would be edifying.

      Now if you were to include specific circuits or code in, e.g., Alice, that patent would be worthless. Your patent will include the exact hardware the banks were using when you wrote the patent, but by the time a patent issues, nobody is using the same hardware anymore. And nobody is copying your software; they’re just writing code that does something similar. The business method patents really need to cover abstractions to be worthwhile.

      1. 7.3.1

        “How will the claims integrate technology and still cover the broad abstractions that make these patents valuable?”

        The concept or principle of the invention has to be innovative, and if possible, pioneering. This will give you the greatest possible breadth. Then to add an additional protective layer, you can use new technology to perform the process. But even if you “integrate” the pioneering concept with existing or known technology you will still have an eligible process under 100 (b), as the innovation can be in the combination of the new concept, and the old technology.

        I am not a SME on Bilski and Alice but the mistakes they appear to have made respectively is “integrating” an old concept into a new process in the case of Bilski, and “integrating” an old concept into old hardware in the case of Alice. If I could give you specific examples I would not post them on this blog, instead I would immediately file patent applications and keep the applications secret as such inventions are truly valuable as you already seem to know.

        1. 7.3.1.1

          Alice contains the words “method of organising human activity”. Above, expert tells us how to get to issue, namely by integrating the innovative “concept or principle” of the invention with “technology”. Does Expert suppose that his patent recipe will carry through to issue a new, enabled and inventive concept or principle of organising human activity?

          I think of the Baldrick character in the Blackadder epos, and suppose that Expert’s “cunning plan” here is to blur the distinction between inventive activity in the field of organising human activity and inventing the technology to implement it, the latter being eligible, the former not. Smudging the ink, to diffuse the inventiveness of the organising method into the technology field.

          I’m not persuaded.

          link to en.wikipedia.org

          1. 7.3.1.1.1

            It is interesting, isn’t it Max, that many of the practitioners here look at the problem of Alice as a challenge to draft claims so as to evade the rule when the Supreme Court has time and again said it will not tolerate elevating form over substance, where the nominal and insubstantial is sprinkled onto a claim like some condiment in order to masquerade the underlying condition of the claim.

            1. 7.3.1.1.1.1

              What can I say Ned? Perhaps that at the EPO it is a bit of a “game” to get past eligibility, and practitioners at the USPTO who are familiar with eligibility at both the USPTO and the EPO want for eligibility what EPO Applicants are enjoying.

              If you can just squeeze past 101, of course, the 102 and 103 debate is pleasingly complex and lengthy, opening up attractive vistas of allowability.

              Not at the EPO though. Getting past 52 and on to 54 and 56 is a Phyrric victory. In the intense heat of civil law (no due process) 54 and 56, you whimper, shrivel and die, even before you can draw breath. If it were more like that at the USPTO, its eligibility filter would not need to be set so aggressively.

          2. 7.3.1.1.2

            Maxie:

            The Court in Alice, relying on Mayo, which relied on Diehr, so stated, “Accordingly, in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), ” ( My emphasis on “Integrate” ).

            Therefore in applying a rigorous “Integration Analysis” we are purporting to comply with the law and not evade it. On the contrary, your foray into red herring based fiction has no such legal relevance and is worth no further mention or discussion.

    3. 7.4

      Egad, 101, do you misunderstand and misstate Diehr. From that case:

      “When a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process 193*193 for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.”

      Clearly, the process that is improved is not the ineligible process, but the otherwise eligible

  7. 6

    I don’t think the current Court took to the time to really analyze what those cases were saying. For instance, in Benson, the Court there said the claims were abstract. And, in my mind, the claims were abstract because they ostensibly covered every possible way of converting digital to BCD. However, the current Court implied that the Benson Court said the idea of converting binary to BCD was abstract. That’s not what the Benson Court said.

    Similarly, the case with the alarm limits (forget which case this is), the current Court said the idea of the claims was abstract. But a careful reading of that case indicates — to me — that the claims did not have any practical implementation; instead the claims were simply to setting an alarm limit. Again, the claims were abstract, not the idea.

    In my opinion, the current Court did not understand the nuanced teachings of the previous Courts. For instance, one way to read the previous Court cases is to say that one has to direct the claims to a machine that embodies and uses the “idea”. In my opinion, if your claim is directed to a machine that implements an idea (even an “abstract” one), that claim is valid under 101.

    As it is now, however, once an claim has an “abstract” idea, your claim is basically invalid, save for very narrow and basically impossible to meet (with modern computer systems) limitations.

    1. 6.1

      In my opinion, if your claim is directed to a machine that implements an idea (even an “abstract” one), that claim is valid under 101.

      You recognize, of course, that a ball-point pen is a machine.

    2. 6.2

      PatentBobonce an claim has an “abstract” idea, your claim is basically invalid

      Absolutely false. It depends on what else is in the claim. In particular, the rectiation of objective physical structure that distinguishes the claimed invention from the prior art should work in nearly every case (if you can think of an exception, please share it). Likewise with a method claim that recites new steps that achieve a physical transformation that was previously unknown in the prior art.

      save for very narrow and basically impossible to meet (with modern computer systems) limitations.

      What do you mean “impossible to meet”? Do you mean that claims to new machines that actually recite distinct objective physical structure that distinguishes them from prior art machines can, in some instances, be much easier to design around than claims which merely recite the new “functionality”?

      Seems like a feature of a working patent system, not a bug.

      Most of the other arts have been dealing with that “problem” for hundreds of years now.

    3. 6.3

      Patent Bob, I agree in principle with your post. Benson was quite garbled and it lead to 40+ years of chaos.

      In the end, when the nonstatutory math is claimed with the statutory computer, the statutory computer must not simply be used as it was in Benson (limiting its use to use on a computer), because otherwise the claim essentially covers the nonstatutory math. This is why Flook clarified that the problem was that math is nonstatutory and even limiting math to a field use without more did not solve the problem even though the problem of “entirely preempt” was avoided by the limitation to a field use. In order to not claim mathematics in the abstract, the claimed must be directed to a practical application of the mathematics. An example of this was given in Diehr, where the math modified an otherwise statutory process to produce an improved otherwise statutory process.

      Alice clearly understood that Benson stood the proposition that simply reciting the use of a computer in the claim primarily directed to nonstatutory subject matter such as economic principles effectively allowed one to claim the unclaimable, the nonstatutory subject matter.

  8. 5

    This was posted obscurely in the middle of a previous thread, any thoughts?

    ……..

    Assuming the decision [Alice] sets no discernibly principled guidelines for the courts below (other than you’ll “know it when you see it”), or equally the specific test is incredibly open to whim/subjectivity of the lower courts, could not the lower courts over time fill the vacuum of ambiguity and uncertainty with principled sensible decisions?

    Insofar as the lower courts now are setting precedent to “fill in the details” they can with time overturn their own decision[s], rework the details of the “no test” test.

    Is there not hope that the clear avoidance to provide detailed guidance by SCOTUS is, for all intents and purposes, a delegation to the lower courts to fill in such things as “how you know it” when you know it, what it means for something to be an abstract idea, what it means for something to be “substantially more”? Shouldn’t the patent savvy Fed Circuit be trusted to *inform* that empty test… and *re-form* that as necessary?

    1. 5.1

      The claims themselves provide a big clue if all they do is gen erally recite the use of a computer or the internet at a very high level of abstraction.

  9. 4

    “However, this policy shift does not foretell the death of our system and likewise, it does not offer a free-for-all to invalidate any patent on a whim.”

    That depends on the technology you are working on. For a significant number of inventors (e.g., software developments, certain biotech/diagnostic/therapeutic inventors), their ability to patent their inventions is much more limited.

    For those who suggest copyright law fills the gap, they need to better understand what copyright law protects.

    On a positive note, the US PTO won’t need to hire that many new patent examiners in many tech groups.

    1. 4.1

      And the SEC won’t have to worry about any tech IPO’s.

      And investors won’t have to hire technical analysts.

    2. 4.2

      “However, this policy shift does not foretell the death of our system and likewise, it does not offer a free-for-all to invalidate any patent on a whim.”

      That depends on the technology you are working on.

      Dennis’ statement “does not depend on the technology you are working on.” Read it again. It’s an important statement and it’s 100% accurate.

      The application of 101 is not, and never has been, dependent on the claimed invention belonging to a specific “technology”. 101 is concerned with the subject matter that can be claimed. Any claim in any “technology area” can run afoul of 101 if it protects ineligible subject matter. I’m happy to provide examples if you disagree.

      For a significant number of inventors (e.g., software developments, certain biotech/diagnostic/therapeutic inventors), their ability to patent their inventions is much more limited.

      It’s also been the case that some fields are more limited in their ability to protect their inventions. Nothing new there. As Dennis’ post suggests, and what many of us have recognized for decades, what’s “new” is the idea that you could patent otherwise ineligible information processing steps by throwing in magic words about an old device (a computer) that was designed specifically to carry out those steps.

      those who suggest copyright law fills the gap, they need to better understand what copyright law protects.

      “Software copyright is used by proprietary software companies to prevent the unauthorized copying of their software….The graphics, sounds, and appearance of a computer program also may be protected as an audiovisual work; as a result, a program can infringe even if no code was copied.”

      link to en.wikipedia.org

      Seems pretty straightforward. It’s being used all the time. Companies who make copyrighted software are making money.

      Accusing people who disagree with you about the effectiveness of copyright law for protecting and encouraging the development of new software of being “ignorant” is not a very effective rhetorical tool, particularly when the opposite is more likely to be true in most cases.

      You realize, of course, that software is copyrighted as a “literary work.” Last time I checked, literary works were never considered part of the Useful Arts. Among many other reasons, this is a clue towards understanding why software doesn’t belong in the patent system, particulary when the actual literary work in question is never claimed.

      1. 4.2.1

        Copyright law provides some protection even for software related invention, but only prevents “copyright” so others can launch copycats so long as doesn’t look the same or use the same code. Otherwise, the copycat is free to launch copycat products with same functionality.

        And, Prometheus-like innovations have even less protection under copyright law.

        So some tech areas are greatly impacted by Alice Corp, while others barely impacted. Of course, depends on the claims.

        1. 4.2.1.1

          doesn’t look the same or use the same code. Otherwise, the copycat is free to launch copycat products with same functionality.

          It’s strange to call someone a “copycat” when they aren’t copying but are, as you admit, changing the code. I think a more accurate term is “competitor”.

          Prometheus-like innovations have even less protection under copyright law.

          Thank goodness.

          1. 4.2.1.1.1

            No, he’s right. When someone implements your exact idea and system, that’s copying. “Competitor” would mean that someone comes up with their own ideas and systems independently. That’s no longer required in the software industry – Microsoft is free to steal i4i’s ideas and systems.

            1. 4.2.1.1.1.1

              *Microsoft is free to steal i4i’s ideas and systems.*

              Since i4i was a billion dollar fraud that didn’t invent anything, weakening their position to extort actual software makers can only be a good thing.

              And competition is robust and productive in software, but threatened by the unwanted interference of the patent system where it doesn’t belong.

              1. 4.2.1.1.1.1.1

                The court records say that they were doing okay before Microsoft appropriated their product into Office.

                1. Fact is that was Microsoft’s game. They would just watch start-ups and then modify their product to encompass the start-up unless there was some great need for the programmers or they were protected by INTELLECTUALLY PROPERTY—you know patents.

                  In fact it was questionable whether or not capital would flow to start-ups because Microsoft did this.

                  They were H@TED! H@TED! H@TED! I have friends who dealt with them in the late 1980’s early 1990’s. They described Microsoft as the scxm of the earth who would have talks to buy the company to get the technical knowledge and then just hire programmers to copy.

                2. By the way, what I wrote is first hand knowledge. You know facts that the anti crowd would like to ignore.

                3. Night, you might not know this, but I have represented software companies and the main reason I argued for patenting their software was because of the threat of Microsoft.

          2. 4.2.1.1.2

            “When someone implements your exact idea”

            ^More evidence that what is really being protected is the “idea”. Quick reminder here bja, we have patents for inventions not “ideas”.

            As to the “system”, I’m not 100% sure what bja is talking about here, so perhaps he could expound upon that for us. He obviously doesn’t seem to mean “code” (aka programmed compooter) because we’re talking about when the competitor did not copy the code. Perhaps he means “system of doing things”?

  10. 3

    Dennis –

    All well and good to say the sky isn’t falling. But, you didn’t offer any explanation for your optimism.

    The closest you come is to assert that all is ok because Alice is only an incremental change from the four horseman of the appl0colypse:
    Diamond v. Diehr, 450 U.S. 175 (1981); Diamond v. Chakrabarty, 447 U.S. 303 (1980), Parker v. Flook, 437 U.S. 584 (1978); and Gottschalk v. Benson, 409 U.S.

    But that IS the problem. The rulings in the four horsemen are absurd and every decision since then has “incrementally” increased the absurdity.

    If you do a calculation and open an oven door when the result exceeds a threshold that is patentable. But, if you take the wires off the door actuator and tie them instead to an alarm bell and sound an alarm so that a person opens the door (or takes appropriate action) that is a law of nature and not patentable. OMG! A method for converting a number to binary coded decimal is a law of nature because a patent would preempt all conversion to BCD? What? OMG!

    Judicial nonsense begets judicial nonsense.

    1. 3.1

      Les: If you do a calculation and open an oven door when the result exceeds a threshold that is patentable.

      No it’s not. And the method you described never was patentable. Why? Because the method you described covers a person performing a mental process (e.g., calculating a time) and performing an old act (opening a door). Even if you threw in the limitation “on a computer” the method would still be inelible because the use of computers as proxies for performing calculations is ancient and has been for some time. Reciting a “computer” adds nothing more to the claim than “using a pencil and paper” would add.

      Maybe you are thinking of some different method?

      It’s trivial for anyone come up with a zillion previously undescribed “do it on a computer” methods, of course, just as it’s trivial for anyone to come up a zillion “do it with a pencil and paper” methods. That’s part of the problem that’s being addressed right now.

      There’s no turning back the clock here so probably you should get used to it and start contributing to the dialog about possible “middle ground” alternatives for defining what sort of computer-implemented inventions are patent-worthy and exactly how those “innovations” are to be described so they can be examined in an efficient and fair manner which serves the public’s interest as well as the applicant’s.

      1. 3.1.1

        That’s absurd. You take out all calculations, then do a 103 analysis. Under your rubric, a means for actuating a solenoid at a preset temperature and the solenoid rigged to an oven door is unpatentable even when the disclosed means includes a bimetal switch embodiment in addition to a micro with a temperature sensor embodiment. Insanity.

        1. 3.1.1.1

          That’s absurd. You take out all calculations, then do a 103 analysis.

          There’s nothing “absurd” about that unless you believe that math is eligible subject matter.

          Under your rubric, a means for actuating a solenoid at a preset temperature and the solenoid rigged to an oven door is unpatentable even when the disclosed means includes a bimetal switch embodiment in addition to a micro with a temperature sensor embodiment. Insanity.

          Nothing “insane” about that. Claim your “means” in objective structural terms to distinguish it from the prior art “means” and your “problem” disappears.

          Will that make it easier for folks to design around your “new means”? Probably. So what? You still have your patent on your awesome “new means”. Go ahead and take advantage of your exclusive rights and compete in the marketplace like people have been doing forever.

          1. 3.1.1.1.1

            That is not required. Means plus function is valid claim language. This is simply a hole in your logic that cannot be reconciled.

            1. 3.1.1.1.1.1

              BJ, many would and have argued that when MPF is placed at the exact point of novelty, the claim is still indefinite regardless of the construction clause.

              At some point, someone is going to take this issue to the Supreme Court.

      2. 3.1.2

        The claim held VALID by the Supreme Court to which I referred in the portion of my comment you reproduced.

        1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

        providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
        initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
        constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
        constantly providing the computer with the temperature (Z),
        repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is

        ln(v)=CZ+x
        where v is the total required cure time,

        repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
        opening the press automatically when a said comparison indicates completion of curing.

        1. 3.1.2.1

          One solution to your “conundrum”, Les, is for the Supreme Court to recognize that while its legal holding in Diehr was correct (i.e., the mere presence of ineligible subject matter in a claim does not per se render the claim ineligible) it’s understanding of the facts was poor and, if it had the correct facts about the prior art before it, the claim would have been found ineligible.

          Diehr is a case of shrinking consequence. I wouldn’t get hung up on it.

          1. 3.1.2.1.1

            Right. Because the Alice Court didn’t rely on Diehr at all in its analysis. Must be nice to be able to dismiss counterpoints by saying “Oh, they got it wrong there, don’t worry the case won’t mean anything soon.”

            1. 3.1.2.1.1.1

              Because the Alice Court didn’t rely on Diehr at all in its analysis.

              The harder you try to analogize the typical computer-implemented claim to Diehr, the farther the Supreme Court is going to pull Diehr away from you.

              It’s a case that could only have been decided the way it was decided at that particular moment in time, with those particular judges, and briefed by those particular attorneys.

              Mayo drove a gigantic asphalt truck over Diehr, at least from the perspective of what the proponents of software patenting had been telling everyone for years. That’s what happens when you take a poorly written Supreme Court case and use it to justify a massive a class of invalid patents.

          2. 3.1.2.1.2

            The conundrum is not the problem. The problem is the ridiculous nature of the decisions in Diamond v. Chakrabarty, 447 U.S. 303 (1980), Parker v. Flook, 437 U.S. 584 (1978); and Gottschalk v. Benson, 409 U.S.

    2. 3.2

      Diehr, Flook and Benson are about the abstract idea judicial exception, not the law of nature judicial exception.

      1. 3.2.1

        Abstract Idea vs Law of Nature: It is pretty clear to me that the Supreme Court is taking a unified approach to these two exceptions in terms of the two-step test. Of course, are still lacking full definitions for either exception.

        1. 3.2.1.1

          Abstract Idea vs Law of Nature:

          Pretty clear to me that the Supreme Court is taking a unified approach to these two exceptions.

          I think it’s too early to tell. I think what’s “unified” are some of the underlying considerations that led to the judicial exceptions in the first place and you see those considerations being raised in different 101 cases. But you also see them being raised in 103 cases, and 112 cases, and cases interpretating other parts of the patent statute because the statute itself arises from “unified” considerations.

          If the “law of nature” is simply recited in a claimed method as a mental step or some generic “determine according to [insert law of nature]” on a computer”, then the Mayo/Alice framework fits rather well.

          Whatever in heck the “test” is in Myriad for finding claimed man-made compositions ineligible (and I don’t think there is a coherent one other than “merely isolating a substance that is found ‘in nature’ does not confer eligibility”), I don’t see how that particular “test” has anywhere near the impact in chem/bio (or any other tech) than Bilski/Mayo/Alice have on software and “determine and infer” claims. And the reason for that is nearly all new compositions claimed in chem/bio are described in objective structural terms to distinguish them from the prior art. The opposite is true in the computer-implemented arts.

            1. 3.2.1.1.1.1

              I think this will be addressed quickly. Maybe not to everyone’s satisfaction as the breadth of the scope obtainable may be limited relative to what people have gotten used to (e.g., I’m not sure that the addition of a known or functionally-defined element to a “merely isolated” molecule is going to work unless that combination yields unexpected results).

              But I don’t see the Supreme Court upholding Myriad to render ineligible a non-obvious structurally distinct (relative to the prior art) man-made molecule that wasn’t “merely isolated”. And that’s because, unlike claims such as Mayo’s method claim, 103 and the utility prong of 101 are established ways of weeding out the undesired composition claims (assuming the PTO is doing it’s job).

          1. 3.2.1.1.2

            I’m not a biologist.

            Is it safe to say that a claim defining the monopoly to desirable results i.e. isolation of something, without specifying any particular means for achieving the isolation is directed to a mere abstract idea, but a claim defining a particular (adapted for the context) process for achieving the desirable results i.e. the isolation, would generally have the something more (at least for patent eligibility) because it defines the way or the means by which the results are obtained?

            Of course the way or means would then be subject to 102, 103 etc.

            1. 3.2.1.1.2.1

              Surely the mere fact that your end goal is only to gather alike things together, is not reason enough to invalidate the specific possibly inventive (new, unobvious) way of doing so…

            2. 3.2.1.1.2.2

              a claim defining a particular (adapted for the context) process for achieving the desirable results i.e. the isolation, would generally have the something more (at least for patent eligibility) because it defines the way or the means by which the results are obtained?

              If you’re asking whether a new non-obvious method for isolating a natural product is eligible for patenting, I think the answer is “yes”. Note that there must be some combination of steps recited in the claim that differ from the steps in the prior art and cause a physical transformation that wasn’t previously known in the prior art.

              I think a claim “Using old method X to isolate a gene from newly discovered frog Y” may run into serious eligibility problems unless old method X was somehow deemed incapable of working on frogs (an extremely unlikely scenario).

        2. 3.2.1.2

          But won’t the “significantly more” analysis be different depending upon whether a claim is determined to be directed to an abstract idea or a law of nature? I mean, arguments which may be relevant in an abstract idea context (e.g., improvements to another technical field; or to the functioning of a computer itself) may not be relevant in the law of nature context. So it seems it would matter how the prior Supreme Court cases are classified (i.e., which judicial exception applies) because arguments about whether the claims at issue include “significantly more” will make comparisons to these prior cases.

          1. 3.2.1.2.1

            Tommy, consider MM’s example of a the discovery of a star. While admitting that that discovery is not eligible for patenting, would a claim for process observing a novel star using a telescope be patentable if the argument is made to the patent office that the particular star is not in the prior art? Should the knowledge or lack of knowledge of the particular star be given any weight at all?

            Should there be a distinction if the discovery is of a new composition of matter? What about a law of nature?

            If the discovery is not being applied to produce something new, but gen eric processes are simply being used to determine the presence of the ineligible subject matter, is the claim patentable? – and I don’t care whether we are talking about 101, or 102/103.

        3. 3.2.1.3

          With the assumption that a product of nature is nonstatutory, I would agree that the Supreme Court will require some invention besides the nonstatutory subject matter. In addition to Prometheus, the most important case on this topic is Funk Brothers.

          Can you explain why you failed to list Funk Bros. in your list of important cases?

    3. 3.3

      Les, over the past several weeks I have seen your criticisms of Alice and its forebearers in detail, and I can tell that you are what I describe to be a “nominalist.” Thus, if the claimed subject matter includes a machine, however nominal that recitation is, it is statutory, move on to 102, etc.

      But, I would hope you can see the other side of this as well. If the machine is entirely old and nominal, the claim is essentially directed to nonstatutory subject matter. That cannot be patented, directly or indirectly.

      Now we all debate as to whether the determination of patentability of the claim that includes both statutory and nonstatutory subject matter should be made under 101 or 102/103, and that is a good debate; but even if it is done under 102/103, it is all but hornbook law today that the nonstatutory subject matter must be given no weight unless it is integrated functionally into the otherwise statutory subject matter in order to modify it.

      1. 3.3.1

        Ned.

        You are very quick to call aspects non-statutory and you revel in the “judicial exceptions”.

        I do not accept the “judicial exceptions.” There is no basis for them. They were made up on their respective spots to justify results that were not otherwise justifiable under the law.

        Methods are patentable. They do not have to mention a machine. Discoveries are patentable. There is nothing to discover but laws of nature and products of nature.

        1. 3.3.1.1

          Les, from my past discussions with you I believe you know my position that products of nature are not “new” compositions, that laws of nature are not “new” principles, see e.g., footnote 15 of Flook, and unapplied principles of any kind in the abstract, including functional claims, violate section 112.

          There are also subject matter that are not within the statute because they are not directed to new or improved machines, manufactures or compositions. These include, just as an example, economic principles.

          I try to frame everything I say to focus on the the statutes and to not try to invent some extra-statutory excuse or rule. In doing so, I hope to eventually bend the discussion to focus in on the statute as opposed to inventing some extra-statutory excuse for declaring something not patentable.

          What I especially like about the cases such as Hotel Security is that they focused in on the statute to declare a method of doing business to be nonstatutory, which they ARE. They didn’t have to rely on any exceptions.

          1. 3.3.1.1.1

            Ned –

            A snippet from 102 (pre AIA for my convenience):

            A person shall be entitled to a patent unless

            (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

            Your definition of new is irrelevant. The statue’s definition of new is controlling. The statute says new means not known or used by others. As we know, this has been interpreted to mean not “publicly known.”

            A newly discovered natural product or law is new in that it was not previously “known or used by others.”

            1. 3.3.1.1.1.1

              MY DEFINITION?

              Unfortunately for you, Les, I have both Frederico and the Supreme Court holding in Myriad on my side of the scales.

              What do you have except for your personal opinion?

              1. 3.3.1.1.1.1.2

                Let me rephrase that. I have on my side the statute to which you claim to: try to frame everything you say to focus on the the statutes and to not try to invent some extra-statutory excuse or rule.

                A person shall be entitled to a patent unless

                (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

                A newly discovered natural product or law is new in that it was not previously “known or used by others” … or published in a patent or publication… or discovered/invented by others… or abandoned… yadda yadda yadda.

  11. 2

    “However, this policy shift does not foretell the death of our system and likewise, it does not offer a free-for-all to invalidate any patent on a whim.”

    How can you make that statement with a straight face (perhaps you’re not) and then just prior to that note Judge Wu’s “I know it when I see it” test? Which is it, Dennis?

    1. 2.1

      Thanks Gary – I appreciate your comment and I’m sure there is some wishful thinking on my part. I tend to be an optimist about these things.

      One explanation for Judge Wu’s statements is that he had the freedom to criticize and to *not* think critically in the Eclipse IP case because the invention was claimed in a manner so parallel to that of Alice and Bilski that his ultimate decision was very easy and dictated by Alice Corp. I would be willing to bet that Judge Wu would not be so flippant if presented with a closer case. Of course, as I mentioned, I’m an optimist.

  12. 1

    “does not offer a free-for-all to invalidate any patent on a whim”

    I think this is yet to be determined. I am hopeful that you are correct, but it all depends on how courts handle this new found leverage.

    1. 1.1

      In my experience, courts generally do not like unbounded decision-making authority with regard to someone’s substantive rights. They understand that overreaching power opens them up to substantial criticism. This gives me hope that the courts will be looking for controlling principles that, although not found in Alice Corp itself, are largely found in the body of historic precedent.

        1. 1.1.2.1

          Fish, the Supreme Court likes to cite Rubber-Tip Pencil. They did so in Benson. And they did so in Alice.

          I presume you have read the case and are familiar with its facts. If not, I would recommend that you read it right now.

            1. 1.1.2.1.1.1

              Fish, pleased to do so if you provide a link.

              You might also consider simply telling us what it is you said so that the readers of this blog can know what it is you said about that case right here and right now.

              And, do not tell us that the court found abstract the combination of a rubber tip and a pencil. Is that what you think the court said, because others have stated here that that is what they think the court held.

              1. 1.1.2.1.1.1.1

                Rubber-Tip Pencil — a patent for attaching a rubber eraser to a pencil was invalid for lack of novelty.

                1. Fish,

                  Let’s drill down just a bit more.

                  The idea of attaching rubber tip to a pencil was new. Why wasn’t it given any weight?

                2. “his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.”

                  Not novel

              2. 1.1.2.1.1.1.2

                “his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.”

                Not novel

    2. 1.2

      I think we’ve already seen how the courts will handle this new found leverage. That lever will fit in all kinds of places it was not intended, as defendants will now demonstrate.

      1. 1.2.1

        Not intended?

        znutar, do you really, really think that if something is nonstatutory that the courts are going to allows its patenting if one sprinkles the claim with statutory subject matter?

        With all due respect, when the courts repeatedly denounce evading 101 by adding into the claim the insubstantial, they really mean what they say.

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