The Revival of Parker v. Flook

The Supreme Court’s much maligned 1978 decision in Parker v. Flook, 437 U.S. 584 (1978) is seeing something of a revival following the Federal Circuit’s substantial rejection of the case under Judge Rich. The chart above shows the citation count for the case over the past 30 years. Part of the revival is based upon revived interest in the subject matter eligibility doctrine in general. However, the Supreme Court in Bilski v. Kappos (2010) and Mayo v. Prometheus (2012) both treat the case favorably. The most controversial aspect of the Flook decision is its language regarding the “inventive concept” rather than merely focusing attention on a patent claim “as a whole.” In that case, the court wrote:

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

In analyzing merits briefs filed at the Federal Circuit, I found that the case was cited in 13 briefs from 1996-2006. In the past six years (2007-2012) the case has been cited by more than 130 briefs.

17 thoughts on “The Revival of Parker v. Flook

  1. What (and how) MM says about others says more about him.

    What he doesn’t say about the substantive issues raised speaks volumes. When he doesn’t say these speaks so loudly you cannot hear the gibberish he does post.

    It’s always nice when MM tries to speak substantively, as that is typically when he self-defeats. That’s why all we get from him are insults misdirection and self defeats. That is all that he has.

  2. MM,

    Someone needed to tell you a long time ago, that you earn respect. A good way to do that is to treat people the way you want to be treated. You can start by knocking off the disparaging name calling.

    I do believe Anon wishes to be called Anon, just like you wish to be addressed as MM, and I, as 101 Integration Expert.

    In this era of the new Patently O, when even 6 has toned down his antics, it would best serve you to learn how to behave in a professional, and respectful manner.

  3. Maybe someone inform

    And maybe someone should inform MM that the comments here do not need to rise to the level of court briefs in order to avoid telling untruths.

    Is it really that difficult for you to not prevaricate?

  4. needs to be revisited

    Until that time (if ever), you are obliged to treat the law correctly.

    Is that really too much to ask of you?

    If you want to receive another lecture

    Why on earth would I want to receive any lectures from someone who cannot be bothered to get the law right? Who indulges in naked strawmen of non useful arts (paintings? really?)

    How about you let us know when you want to grow up and post like an adult?

  5. And this time try actually quoting the Court and providing proper pin cites.

    Maybe someone inform 101 Integration Expert and his BFF azweepay that (1) they aren’t law clerks and (2) the comments here aren’t court briefs.

  6. “Let’s try that again.”

    How about let’s try it one more time. And this time try actually quoting the Court and providing proper pin cites. IMHO there should be no place for this type of conjecture and misconstruing of the law on the new Patently O.

  7. Mr. Heller you are a bit off here as well. First of all you must agree and concede to the Court that Flook and all the Courts precedents stand for no more than the principles in Diehr.

    Flook essentially held that Pre and Post Solution Activity can’t make an algorithm a patent eligible application. Same goes for a LoN, or an abstract concept. BTW, there is no such thing as abstract material. Material(s) are not concepts and definitely not abstract!

    Now, in Prometheus we start with a manifestly evident Law of Nature, in the form of a naturally occurring correlation. Then after pretty much stating the LoN the inventors said apply it!

    In does not matter if the Pre or Post Solution for applying the LoA was new, old, novel, mental, physical, new thought or whatever. If the entire law of nature is covered it won’t save the claim.

    I gave a similar example in my “Integration Analysis” on Ultramercials claim. I stated:

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.


    1. offering a service

    
2. accepting advertising as payment

    The above is nothing more than stating a concept then applying it, just like Prometheus did with a LoA, and Flook did with a math equation, Pre and Post Solution won’t save it. It must be integrated.

    Now, Diehr started with a process for curing rubber and used a mathematical algorithm in the process. There WAS NO pre or post solution in Diehr because Diehr didn’t simply state the Arrhenius equation and say apply it.

    Look at these kids on YouTube doing the Arrhenius equation.

    link to youtu.be

    Pretty cool eh? But if any of them try to file a patent on their application of Arrhenius they would suffer the same fate as Prometheus. Indeed if they want a patent they will need to integrate the equation into a process that is doing something more than just solving the equation. It does not matter if it’s curing rubber, launching the space shuttle, or selling more blue light specials at Kmart, as long as others can still solve the Arrhenius equation itself the claim is a patent eligible application.

    Most important, remember Pre and Post solution activity analysis is ONLY applied when you have a manifestly evident judicial exception. There is no legal basis to extrapolate this extra solution activity analysis to a wholesale point of novelty test as Flook did, or mental steps test, claim dissection, business method or software exclusion, category conflation or any other fanciful theory, pet project or personal view one may have.

  8. Hello IANAE:

    First of all the CAFC can’t overturn Flook because that is a case decided by the Supreme Court of the United States. The CAFC is a lower Court.

    Second, the only part of the Flook case that is good law is simply: extra solution activity will not transform a judicially created exception into a patent-eligible application of a judicially created exception.

    But to take this to the extreme, as some advocate doing, would be a full blown implementation of dissection. I would wager that many of the people citing the case in the latter years are doing just that in some form.

    As I explained to Professor Crouch, the Diehr Court recognized this flaw and fallacy in the Flook Courts analysis and corrected it and warned future Courts what would happen if it was ignored.

    Please read Diehr: “[Footnote 12] [It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877). ]

    The Prometheus Court also was careful not to advocate dissection, a generic stripping away and ignoring of elements, and limited it’s analysis to extra solution activity in the wake of a judicially created exception. In this particular case, a Law of Nature. The use of (new and old) was limited to determining if the Law of Nature was simply being claimed by reducing it to a series of steps. In other word stating the LoN and saying apply it.

    Please read Prometheus:

    “Still, as the Court has also made clear, to transform an
    unpatentable law of nature into a patent-eligible applica- tion of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.”

    However this was not a resurrection by the Court of a point of novelty test. And in following Diehrs warning, and to make sure it’s use of pre and post solution activity was not taken to the extreme or abused, the Prometheus Court carefully and explicitly chose to characterize the Diehr claims as “integrated” which corresponds to (conjunction, and combination) as used in the Diehr case.

    Please read Prometheus:

    “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. Those steps included “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.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.” [12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
    Opinion of the Court].

    If we follow the case law history on 101 what establishes patent-eligible subject matter is the application of a concept that is “integrated” into the process as a whole. Prometheus stood for no more than this Court honored principle from Diehr. And as we know Diehr cabined Flook in this regard.

  9. Specifically as seeing that “enabling another device to perform” hits to the heart of the exception to the Printed Matter Doctrine (that would be the functionally related part).

    Way to self-defeat yet again.

  10. recitation of some new function that it is capable of performing itself or that it enables another device to perform

    Some serious (and legally wrong) QQing MM.

    You do know that lieing is against the posting rules here at the new Patently-O.

  11. Let’s try that again.

    The application of the idea has to be claimed in such a way as it (1) does not prevent otherwise non-infringing actors (e.g., those practicing the prior art) from thinking about the idea; or (2) differs from the prior art in more than an informative capacity (e.g., information content can’t be the only distinction); or (3) differs from the prior art in more than an abstractly presented new function(s) (e.g., an eligible claimed composition has to have at least one objectively measurable phssical property that distinguishes it from the prior art, not merely a recitation of some new function that it is capable of performing itself or that it enables another device to perform).

  12. The application has to be substantial and not merely a suggestion to use the results of a LoN or principle in a field.

    The application of the idea has to be claimed>/b> in such a way as it (1) does not prevent otherwise non-infringing actors (e.g., those practicing the prior art) from thinking about the idea; or (2) differs from the prior art in more than an informative capacity; or (3) differs from the prior art in more than an abstractly presented new function(s) (e.g., a claimed composition has to have objective measurable and describable structural properties that distinguish it from the prior art).

  13. Dennis, Flook was following Funk. Start with the LoN or abstract material. Treat it is prior art. This requires not only that there be an application, but that application must be more than trivial.

    However, in both Flook and Funk, there was little more than the principle. In Funk, packaging. In Flook, the nothing practical was done with the calculation except preamble statement that it might be useful in a field.

    There is a contrary line that simply requires a useful application. If there are prior useful applications,then novelty and obviousness are relevant. Otherwise, not. See, Le Roy v. Tatham and Morse for the requirement of useful application of the principle.

    However, both lines of authority seem to have the same result. The application has to be substantial and not merely a suggestion to use the results of a LoN or principle in a field. That is why Flook is important.

  14. And what event occured at the time where the disparity arises? 6 became involved in the 101 dispute, fresh off a win in KSR.

    As soon as 6 appeared on the scene the lawlyers that were ignoring the lawl for 20 or so years suddenly saw it on a day to day basis and started using it in court.

    I sometimes blow myself away with my awesomeness. (lol)

  15. I find this caption to be misleading.

    There is no revival of Flook’s dissection and complete ignoring of claims as a whole. That’s a fact that can’t be disputed.

    Diehr is consistently cited as controlling case law by the Court. See Bilski, page 14. And see Prometheus, citing Diehr as the case most on point for what IS patent eligible subject matter.

    Diehr’s claims as whole doctrine is consistently cited in all Court decisions I have read including the lower courts of the CAFC.

    Most important, the claims as a whole doctrine has been buttressed by Prometheus reliance on Diehr’s Integration Analysis, which is the antithesis of Flook’s dissection.

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