Flash-of-Genius as Evidence of Eligibility

Steve Morsa v. USPTO (Supreme Court 2020)

Patent holder and occasional Patently-O commentor Steve Morsa has filed his petition for writ of certiorari to the US Supreme Court on his pending Patent App. No. 13/694,192.  [Petition].

Morsa’s approach is interesting — using the Supreme Court’s “flash of genius” decision in a positive light and arguing that his own flash of creative genius is proof of eligibility.

[T]he new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling.

Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).  Morsa explains that the 1952 Patent Act eliminated “invention” and “flash of genius” as requirements of patent eligibility.  At the same time, Congress did not eliminate those elements as one basis for proving patent eligibility.

[M]y invention’s 2004 genesis – Bid on Demographics! – was an out-of-the-blue light bulb moment; an epiphany; what’s often referred to as a “flash of creative genius” (though I’m no genius). It did not result from thinking up / inventing a way to computerize or move to the Internet or computer networks something currently in existence or from the past. . . .

[I]nventions which are, like here, the result of a flash of creative genius are, under Cuno, patent eligible. This is eligibility dispositive. The eligibility analysis should have ended there.

Petition. Thus, Morsa asks:

  • May the Federal Circuit and Patent Office ignore this Court’s seminal Cuno decision?

Morsa’s petition presents two additional questions:

  • May the Federal Circuit and Patent Office ignore Patent Office proof of no undue preemption?
  • May the Federal Circuit and Patent Office establish their own Section §101 Law?

The preemption argument is interesting and important. The Supreme Court has noted that preemption-of-ideas is a fundamental basis for the restriction on eligibility.  At the same time, the Federal Circuit & USPTO have refused to consider any actual evidence of whether a particular claim would be preemptive.  Instead, the tribunals look to the two-step Alice/Mayo process as the proxy for determining preemption.

= = = =

OK – now lets looks at Morsa’s claim 2 (claim 1 is cancelled) directed to a “technical field improving technological process.”  This is not starting off well.  The claim goes on to detail a process of collecting a user’s demographic information; receiving an advertising bid associated with the demographic; then showing the ad to the user if it is a ‘match.’

A technical field improving technological process comprising:

transmitting by a computer system over a network for display to a user a request for demographic and/or psychographic user information;

receiving at the computer system over the network from the user the user information;

saving by the computer system the user information;

receiving at the computer system over the network from a first advertiser an association between (i) one or more first criteria comprising demographic and/or psychographic criteria and a first ad and (ii) a first bid, the bid being the highest amount the advertiser is willing to, but may not have to, pay, and the first ad;

receiving at the computer system over the network from a second advertiser an association between (i) one or more second criteria comprising demographic and/or psychographic criteria and a second ad and (ii) a second bid, the bid being the highest amount the advertiser is willing, but may not have, to pay, and the second ad;

determining by the computer system that a first match exists between the first criteria and the user information;

determining by the computer system that a second match exists between the second criteria and the user information;

in the event of both a first match and a second match, determining by the computer system placement of at least one of the first and second ads based on one or more ad placement factors comprising the first and second bids;

transmitting by the computer system at least one of the first and second ads over the network to the user.

 

46 thoughts on “Flash-of-Genius as Evidence of Eligibility

  1. 16

    Rest assured that — with the Court Conference now set for Tuesday, September 29th — it won’t be long before the broken scales of justice are rebalanced and restored.

    Because that’s what our Supreme Court does.

    1. 16.1

      Now I know that you are disconnected from reality.

  2. 15

    “A technical field improving technological process”

    He’s going to need a reference back to that lol.

    Sounds like he’s trying to use two bids matching demo data to determine when to do an ad placement routine on a couple of ads. I would guess they usually just use one match normally?

  3. 14

    Things keep getting wackier and wackier.

  4. 13

    Gotta love the sole originally filed claim:

    “1. Means for the auctioning of and/or bidding on of entry criteria.”

  5. 12

    Love that Morsa’s Real claim to fame is as a Patently-O commenter! :D

    1. 12.1

      truth lol

  6. 11

    I was hoping for an explanation of how one proves a “flash of Genius”? It is not the kind of flash detectable by a light meter. There is the famous more than 2000 year old example of a famous scientist arising from his bathtub shouting “eureka” but one does not normally have a witness to that kind of event.

    1. 11.1

      I was wondering about something similar. Back before 1952, did inventors actually submit declarations that their invention was a “flash of genius”? If so, were such declarations given weight?

    2. 11.2

      I’m guessing he submitted evidence as to what was happening during the inventive process. It does seem like a fairly cool “rule” to place ads that may be fairly ingenious for advertising. Not sure that it is a technical solution tho.

  7. 10

    When the students are ready, the teacher will appear.

    Good morning students.

    1. 10.1

      zzzzzz do you enjoy wasting time and money?

      1. 10.1.1

        It’s not necessarily a waste if there are desirable outcomes beyond getting a writ of certiorari. As a purely hypothetical example, an attention seeker might find a failed petition successful if it got enough of the community talking about them.

  8. 9

    Flash-of-Genius should really be an element of an obviousness analysis- why should the state-of-mind of an inventor have any effect on the subject matter of the invention?

    In this case, the result of the method is just an item of processed information useful to persons. That subject matter should not be eligible for patenting.

    1. 9.1

      Why should the state of the prior art have any bearing on the subject matter eligibility of the invention when it’s clearly the central focus of novelty and obviousness?

  9. 8

    Is there such a thing as a less than zero percent chance of cert?

    1. 8.1

      Yeah, I tend to agree, anon. The fastest way to get a certiorari petition denied is to infuse it with “tinfoil hat” vibes, and this petition has them aplenty. Not sure why Dennis thought this petition was worth a write-up. Maybe he’s just trolling.

      1. 8.1.1

        ” Not sure why Dennis thought this petition was worth a write-up. Maybe he’s just trolling.”

        It’s by a patentlyo commenter. He welcomes participation.

    2. 8.2

      Morsa could have hired a team of SCOTUS-battle-tested lawyers and paid $50,000 for his petition and it would still have had a less than zero percent chance of cert. You have to admire someone who, in the face of overwhelming adversity, decides to go out swinging.

      1. 8.2.1

        “You have to admire someone who, in the face of overwhelming adversity, decides to go out swinging.”

        No you don’t.

        1. 8.2.1.1

          Agreed.

        2. 8.2.1.2

          Agreed as well.

          This is not the way to advance.

  10. 7

    Regarding the first question presented, you may want to consider the case of a law of nature discovered in a “flash of genius,” e.g. the apocryphal case of an apple falling on Newton’s head.

    The Court has made clear that “‘[l]aws of nature, natural phenomena, and abstract ideas’ are not patentable,” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)), and has not distinguished between laws of nature discovered discovered in a flash of genius and laws of nature discovered through countless hours of painstaking research and development.

    Indeed, the Court indicated that “Einstein could not patent his celebrated law that E=mc ; nor could Newton have patented the law of gravity.” Mayo, 566 U.S. at 71.

    Re the second question presented, you may want to think hard about how, given that all claims are inherently preemptive, to evaluate whether a claim “‘risk[s] disproportionately tying up the use of the underlying’ ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo, 566 U.S. at 73).

    1. 7.1

      The issue that needs to be addressed is that the Court does not have the authority to declare that laws of nature, natural phenomena and abstract ideas are not patentable. The Constitution is clear in that Congress sets the law on all aspects of patent law, not the courts. If Congress wanted to make any class of subject matter ineligible, then it is their prerogative to do so. Not the courts. The entire mess with ineligible subject matter started in the 1840s. Alice, Myriad and Mayo are just the latest incarnation of it.

      1. 7.1.1

        The Constitution is clear in that Congress sets the law on all aspects of patent law, not the courts.

        Could congress issue a patent that it expressly finds does not advance the art? Moreover, since “new” is a statutory requirement, could congress remove the “new” requirement and control all property rights by simply granting patents to individual embodiments of preexisting things?

        i.e. Did the framers intend to give Congress control over all personal property? If not, what is the mechanism which informs Congress they have overstepped their bounds?

        1. 7.1.1.1

          Could congress issue a patent that it expressly finds does not advance the art?

          Definitely. The grant would be sustained under the Commerce clause instead of the Patent & Copyright clause, but the end result is still that the grant would be sustained in view of Wickard.

        2. 7.1.1.2

          “Advance the art” is not the requirement, as the word “promote” also includes the ‘notice’ aspect of the advertising sense of ‘promotion.’

          Further, as any student of innovation could tell you, often the ‘advance’ of a new innovation works less well than the current state of the art (until additional bugs are worked out). Your view is NOT correct, and actually would re Ta rd progress.

      2. 7.1.2

        Dvan,
        Congress has spoken.
        An eligible invention must consist of a new and useful machine, manufacture, composition of matter, or process. A law of nature, a natural phenomenon, or an abstract idea is in none of these categories.
        The disagreements are about what process are (are thinking, diagnosing steps of a process?) and what to do when a claimed invention literally falls under one of these categories, but seems to be substantially about something else (whatever that means).

        1. 7.1.2.1

          PiKa,

          It is not the words of Congress that is causing the MESS.

          (hint: it is the scrivining of the Supreme Court)

      3. 7.1.3

        [T]he Court does not have the authority to declare that laws of nature, natural phenomena and abstract ideas are not patentable.

        In excluding those three categories from patent eligibility, the Court is doing no more than giving effect to the words of 35 U.S.C. §101, which provides that “new and useful” inventions are eligible for patent protection. Laws of nature and natural products are not “new” (they have been in public use for time immemorial). Abstract ideas—to the extent that an idea truly is abstract—are not “useful” (merely thinking a thought, without corresponding action to effectuate the idea’s implications in the material world, fills no bellies nor raises any barns).

        The real problem with the Court’s jurisprudence is not that it excludes the three categories of “abstract ideas,” “laws of nature,” & “natural products.” That is no more than what the statute commands. Rather, the problem is that in Mayo and Myriad the Court articulated tests for “what is an abstract idea / law of nature” and “what is a natural product” that stretch so far as to end up sweeping in invention that genuinely are new and genuinely are useful, and which therefore end up excluding that which should be included.

        The problem is not, in other words, one of the Court usurping Congress’ prerogatives. Rather, the problem is one of sloppy prosecraft, sloppy thinking, and a resulting mess of inartful jurisprudence.

        1. 7.1.3.1

          ..or see what I said at 7.1.2.1

  11. 6

    Clarification of the role or emphasis of “preemption” in Alice-101-abstraction-rejections may be worthy of a good appeal with a good brief in an appealing case.
    The continuous filing of cert petitions for patent applications with no or inadequate prior art examinations is not doing inventors or the patent system any good.

    1. 6.1

      Of course, one could look at this the other way around. The use of patent eligibility rejections as a band aid to conceal inadequate prior art examination is not doing the patent system any good. Allowing this approach to continue benefits bad faith actors at the expense of more diligent examiners (who struggle to keep up with similar production counts while performing more substantive examination), and harms the system itself.

      Note that I have no opinion as to whether this is what happened in the present case; I speak only in generalities. I should also note that I rarely encounter eligibility rejections myself at the Office any more, although in the past it seemed to be very common in several art units.

      1. 6.1.1

        “Of course, one could look at this the other way around. The use of patent eligibility rejections as a band aid to conceal inadequate prior art examination is not doing the patent system any good.”

        The difference is that applicants as a group are fully and directly responsible for these dubious petitions, while they are only partially and indirectly responsible for the 101-as-band-aid examination.

    2. 6.2

      The continuous filing of cert petitions for patent applications with no or inadequate prior art examinations is not doing inventors or the patent system any good.

      Given the two replies above, I am trying to unpack what Paul may have been after with this comment.

      It appears that filing of cert petitions with a focus on 101 issues is “not good” for anyone when BASIC examination is already so p00r.

      Is that the message that Paul is sharing?

      If so, then is the corollary being that 101 is an inappropriate t00l for fixing ‘what is really at fault’ the takeaway?

      1. 6.2.1

        Re: “It appears that filing of cert petitions with a focus on 101 issues is “not good” for anyone when BASIC examination is already so p00r. Is that the message that Paul is sharing?”
        Yes, and more specifically, potentially leaving Sup. Ct. justices even more dubious about the whole patent system when they see applications or issued patents that can make them wonder how the PTO found them novel and nonobvious or failed to find any prior art?

        1. 6.2.1.1

          Maybe the Justices should be more concerned with recognizing the limits of their authority and leave the legislating to Congress.

          You know, they COULD write an opinion of the type, “This is re-dic-u-lous, but if you are unhappy, petition Congress to write better law.”

          That would be infinitely better than the scrivined Gordian Knot of 101 that we have now.

  12. 5

    Dennis flags up the opening words of the claim:

    “A technical field improving technological process comprising….”

    Given that in a patent claim there should be no unnecessary words, I suppose that the purpose of this preamble is the absolutely vital one, of lifting the claimed subject matter out of the ineligible zone and into the eligible zone. It’s funny though. Immediately flashing into my mind is a thought about sweet smells, roses and that poetical genius occasionally known as Willy Wobbledagger (amongst other names).

    Coming up with a genuinely new joke is an invention that arises from a flash of genius. But does that render it patent-eligible? Perhaps yes, provided one begins one’s claim to it with the words:

    “A technical field improving technological process of telling a joke, the process comprising….”

  13. 4

    I admire Mr. Morsa’s chutzpah even as I worry about the breadth of some of his claims. I’m pretty sure? Adwords advertisers could specify “demographic” targeting in 2003, more than a year before his filing date:

    “Placement-targeted advertisements (formerly Site-Targeted Advertisements) are a feature introduced in 2003 to the AdWords control panel. Using the AdWords control panel, advertisers can enter keywords, domain names, topics, and demographic targeting preferences”

    link to en.wikipedia.org

    Maybe he has some point of distinction I don’t know about, but I’m not sure he wants the claims in their current form anyway? Its not entirely his fault, as I see the Examiner only issued a 101/112 rejection, and nothing else, which has become SOP now in this era of lazy examination where 101 is the tool for everything.

    1. 4.1

      I’d agree that the examination here appears on first glance to be pretty awful, but there was a 102 rejection. I think you’re right about the value if these claims all the same.

  14. 3

    Is this petition not obviously (so to speak) confusing 101 with 103? I thought Cuno was talking about obviousness, and that the 1952 Patent Act overruled that part of Cuno with the language “Patentability shall not be negated by the manner in which the invention was made.” language in 103 (this is the current version; 1952 might be worded slightly differently).

    The broader argument seems dubious. If an inventor declares under oath that the invention came from a “flash of genius,” that eliminates any 101 problems?

    1. 3.1

      The courts have been conflating 101 and 103 since Mayo, so that would be nothing new right now.

      1. 3.1.1

        Perhaps true, but in a debatable way.

        This petition asks “May the Federal Circuit and Patent Office ignore this Court’s seminal Cuno decision?

        The answer, I think, is “For the overruled flash of genius part, yes, they more or less have to ‘ignore’ Cuno.”

        1. 3.1.1.1

          I agree – and just one of the MANY things wrong with this Pro Se effort.

          Much as Malcolm maligned his own agenda with his wayward rants for SO many years, the ‘crusade’ by Morsa sh00ts himself in his own foot more than anything else.

  15. 2

    As for pre-emption, the situation in the lower courts is worse than merely using the two-step as a proxy, as cases have outright dismissed the notion of pre-emption.

  16. 1

    Windmills, ho!!!!

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