Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I
Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualitative instruction manual, a recipe that speaks to “audiences” such as doctors, about which things are “relevant to their decision making.” Claims are no such thing: they are definitions that articulate a specific combination of steps or structures. They are objective in form and design, not subjective or advisory. The notion that the claims here “trust” doctors to “use those laws” is at best silly, and at worst badly misguided. Reducing the claim to this “instruction manual” allows the Court to analogize the claim to Einstein “telling linear accelerator operators about his basic law”—a low point in modern legal reasoning.
In this decision, as well as in Bilski, Benson, and Flook, the Court simply does not “get” what claims are about. The entire preemption analysis, born of a conflation of “algorithms” with “scientific truths” in Benson, is based on this misunderstanding. By definition claims preempt, that is what they are designed to do: to preclude one from making, using, selling, etc., the invention. A broadly drafted claim preempts broadly. And it is this further confusion—between “breadth” or “abstraction” and “abstract ideas”—that is the second damaging mistake the Court made (and continues to make).
The core principle that claims are “abstractions” was recognized many years ago:
The physical embodiment or disclosure, which, in itself is something tangible is confused with the definition or claim to the inventive novelty, and this definition or claim or monopoly, also sometimes called "invention" in one of that word's meanings, is not something tangible, but is an abstraction. Definitions are always abstractions. This primitive confusion of "invention" in the sense of physical embodiment with "invention" in the sense of definition of the patentable amount of novelty, survives to the present day, not only in the courts, but among some of the examiners in the Patent Office.
Stringham, E. Double Patenting, Washington D.C. Pacot Publications (1933) (emphasis added).
Claims are abstractions, but that does not make them abstract ideas. For example, consider the following claim:
1. A method, comprising:
freezing a volume of water into ice;
granulating the ice;
compacting the ice; and
applying a sweet liquid to the ice.
Now this claim would—at least until the Prometheus decision—have qualified as patentable subject matter, even though it recited the use of “freezing” which is a either a natural phenomenon (yes) or according to this Court, an almighty Law of Nature. But I will not address that problem yet. Now consider this claim:
1. A method, comprising:
freezing a volume of liquid into a frozen portion;
granulating the frozen portion;
compacting the frozen portion; and
applying a sweetener to the frozen portion.
What have I done? I have done what every patent attorney is trained to do: to “abstract” the claim, to generalize it, to broaden it. Instead of “water” I now claim a “liquid;” instead of a “sweet liquid” I now claim a “sweetener.” Where the claim before covered sno-cones (the “sweet liquid” limitation), it now more broadly covers ice cream with fudge swirls. Is anything here an abstract idea? Hardly.
And this reveals the Court’s other blindness: as patent attorneys, we do not seek to draft claims that read on “abstract ideas” or mental steps. The Court’s suggestion that patent attorneys engage in “drafting effort[s] designed to monopolize [a] law of nature itself” is absurd. We draft claims that read on actual infringers in the real world. Intentionally drafting a claim that read on an abstract idea or a law of nature per se would be foolish at best and malpractice at worst, for there would be no infringers. No one makes, sells, or uses an abstract idea. Judge Rader understands this, when he states in RTC that “inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract”.
Patent-Eligibility vs. Patentability
The third critical mistake the Court makes is to intertwine the analysis of patent eligibility under § 101 with analysis of patentability (novelty and non-obviousness) under §§ 102 and 103.
The Court makes repeated reference to how the Prometheus claim recites “conventional activity,” and that “post-solution activity that is purely conventional or obvious” cannot transform an unpatentable principle into a patentable process. The Court observes that these conventional steps “add nothing significant beyond the sum of their parts taken separately.” Finally, the Court suggests that it is proper to ignore claim limitations and boil the claim down: “a process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an “inventive concept.”
These statements are a sharp departure from the current regime of claim construction, and indicate a return to several repudiated doctrines. Until March 20th, it was black letter law that one considered the claim as a whole, that a court was not to dissect the claim into individual elements and treat each one separately. Indeed, for all the Court’s reliance on Diehr, it ignores one of the core holdings of that case:
In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.
This dissection is precisely what the present Court does. But it gets worse. Why does the Court ignore Diehr’s injunction? Because they essentially overrule the immediately following statement of law:
The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.
Just as the Court in Flook inappropriately dissected the claim there and having removed the “mathematical algorithm” found the remainder to be unpatentable—so has the Prometheus Court found the alleged law of nature, and then disregarded the remainder as either data gathering or post solution activity. And this entire approach is exactly what Diehr said not to do. Now, I’m not one given to histrionics, but really: OMG! This is huge!
Second, the Court’s reference to the “sum of the parts” analysis reprises the notions that there must be some synergy present in the claims in order to qualify for an invention—an analysis that has always been tied specifically to non-obviousness, not subject matter.
Both of these vectors will lead district courts astray, for they incorrectly bind a category decision—is the invention the kind of thing that is patentable—with a quality decision—is this invention different from the prior art and by how much. Courts will be looking for the “inventive concept”—what makes the invention different from the prior art—when trying to assess whether the invention is type of patentable subject matter, a “process, machine, manufacture, or composition of matter.” As I said before: not even wrong.
Worse, the Court’s treatment of patent-eligibility supports the view that § 101 is a gatekeeper analysis that must be decided before a court considers §§ 112, 102, and 103. This is particularly dangerous because it contradicts judicial economy: if a patent claim can be readily disposed under § 102 as being entirely anticipated, then that analysis should prevail, rather than heading into the swamp of patent eligibility. Indeed, the Court itself recognized that “judges are not institutionally well suited to making the kinds of judgments needed to distinguish among different laws of nature,” and yet then nonetheless leads them to right to the edge of this morass.
What is especially Kafkaesque is the Court’s intimation that analysis under §§ 102 and 103 is somehow significantly more uncertain than under § 101:
And to shift the patenteligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those section can do work that they are not equipped to do.
There could not be “greater legal uncertainty” than the Court has created by this decision by this decision and Bilski. Patents which only last week had utterly ordinary, run of the mill, Landis on Mechanics of Patent Claim Drafting-certified claims are now suspect, merely because they do what every claim ought to do: comply with the laws of thermodynamics.
No one is suggesting that patent-eligibility be “shifted” to §§ 102 and 103. Rather, the suggestion is one of judicial economy: courts and juries are finders of facts. Sections 112, 102 and 103 are all grounded in facts: is the specification enabling? What does the prior art disclose? What is the level of ordinary skill in the art? Would the invention be ”obvious” to that person? These questions are answerable—in principle and in practice—based on a factual record. What a court is “institutionally well suited for” is making judgments based on evidence from the past and the present, and this is precisely what §§ 102, 103 and 112 focus on.
But § 101 is different in kind. Any bright line test will by its nature, be both under- and over-inclusive, because we simply cannot know what will be invented next. If we learn anything from history, it is that we are particularly bad at predicting the future, and especially the future of technology. Yet that is precisely the task with which the Court has now saddled every district court, and especially the Federal Circuit.
The Court seems concerned with preventing § 101 from becoming a “dead letter” should courts use the instruments of §§ 112, 102 and 103 to evaluate patents. Again, the Court does not understand the relationship between these sections from either a practical or a legal point of view. When a court is troubled by a claim as appearing too “abstract” or “preempting” all uses in a field, those are real clues that there is something else wrong with the claim. To the extent that a patent claims so broadly as to encompass subject matter that is old—as the Court certainly stated here—KSR provides a strong mechanism for addressing that problem. A claim that appears to be so broad to cover any possible way of practicing an invention will almost assuredly read on the existing ways of solving that same problem, and lack novelty. A patent examiner and a court can readily compare evidence from the prior art to a patent claim and judge its novelty and non-obviousness. Similarly, whether a patent claims more than the inventor has disclosed or enabled is a question that is judged on the evidence of the specification and the knowledge of those in the field. Again, a patent examiner or court can review such evidence and evaluate it under the defining law. Thus, § 101 is not at risk of becoming a dead letter. Rather, it simply serves a limited purpose given the acknowledged capabilities and limitations of our court system.
Tomorrow: Conclusions Masquerading as Analysis, and So Long Technology, Hello Business Methods!