The Bilksi decision punted on the question of what is an abstract idea, leaving it the Federal Circuit to devise a test. Judge Rader and Judge Dyk proposed different versions of an “I know it when I see it” test. Sadly, the Prometheus decision is of a piece with Judge Dyk’s approach—boiling the claim down to a point where the court can say it’s nothing more than _____ [pick at least one: abstract idea, law of nature, natural phenomena].
But interestingly the Court punted even more deeply in Prometheus—and perhaps, just perhaps, gave inventors and us crafty patent attorneys an out, a chance for a long return. A key premise of the Court’s analysis is that all of the claim elements, apart from the alleged law of nature, were “well understood, routine, conventional activity.” This not the normal state of affairs, either before the USPTO or before a court in patent litigation. The Court thus held out for another day:
We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them.
This sentence, a model of clarity, not it is. It seems to suggest that had the other steps been “unconventional,” that is non-obvious, the claim would have stood a chance. This is how the Court rationalized the Diehr decision, noting that the steps of “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” were “nowhere suggested” as being “obvious, already in use, or purely conventional.” But of course the Diehr court never “suggested” that because the novelty and obviousness of that process was not before the Court then, and it (wisely) did not frame the discussion in that way, no less because it has already stated that it was not going to dissect the claim into old and new parts. To position Diehr in this way is highly disingenuous of the Court. Moreover, I have a very strong feeling that even 54 years ago in 1968, putting rubber in mold, putting the mold in the oven, and taking it out of the oven when it was done was pretty well known in the art.
In any event, if this hint is correct, then there remains a path to patent eligibility, one that seems both relatively straight forward and fraught with complexity, much like any long punt return: just run the ball all the way down the field. On our playing field, you need only (!) make sure that there are at least some elements that “apply” whatever law of nature is in your claim in an “unconventional” manner.
Surely, good advice. Alas, there are several problems with such a facile rule. First, once you start dissecting a claim and evaluating each element by itself, it becomes very easy to map each element onto some prior art. That is after all, what many patent examiners do; I’m just sayin’.
Second, some claims, like those in Prometheus, are by designed to reflect the business operation of the inventor and his company, and avoid problems such as multi-actor infringement. For example, had Prometheus added more “unconventional” limitations to the claims, in particular reciting steps relating to the manner of treating the patient based upon the thiopurine level, the claim would have had significantly less commercial value, if any, since Prometheus was in the business of testing for diseases, not in the business of treating them.
This is, of course, something for which the Court does not evidence an understanding or a concern. But it is something that the Court should both understand and care about—since the entire purpose of the patent law is to encourage innovation through economic incentives. If that is the theory, then the incentives to patent must be aligned with the value proposition that the innovator seeks to exploit. It follows that reducing the value of the incentive should reduce the level of innovation. (I’m not saying here that in fact this is true; I’m merely stating this as hypothesis).
What is the Law?
The Court has spliced together disparate, essentially contrary opinions into a legal virus, a self-validating meme that cannot be defeated by logic or example. I said earlier that the Court’s analysis was “not even wrong.” The Court’s reliance on claim dissection, on hand waving rules of “is it enough?” and “does it add something significant?”; its confusing of statistical relationships with “natural laws;” and its shear daftness in believing that Section 101 must lord over Sections 112, 102 and 103 all combine to create a powerful “means for” invalidating any patent, now extant or in the future. Give me any patent claim, and I can craft an argument using the Court’s Prometheus analysis that it is invalid. And like any theory that is not falsifiable—that is not even wrong—you could not logically defeat my argument: for I could always say: “it’s not enough.”
Zeus punished Prometheus for stealing fire—knowledge—from the gods of Mount Olympus and giving it to Man: chaining him to a rock so his innards may be eaten by a bird of prey. So too has the Court sat in judgment of the modern Prometheus, for “stealing” a small bit of knowledge from the equivalent—and equivalently false—god, the laws of nature. Like their namesake, this Prometheus has had its innards exposed for the taking, and its discovery is now available for anyone to feast upon.
There may or may not be laws of nature. Even Einstein’s theory of relativity is not immune to criticism. But there is a law which is universal, immutable and everlasting, a law that will be confirmed yet again by this decision: The law of unintended consequences.