Where is the preemption test?

The newest Supreme Court patent eligibility case was recently filed by Rudy Telscher in Consumer 2.0, Inc., D/B/A Rently v. Tenant Turner, Inc. (Supreme Court 2020).  Rather than directly challenging Alice Corp., Rently argues that the Federal Circuit has done a poor job of implementing the Supreme Court’s guidance.  The Supreme Court decisions on eligibility are focused on avoiding improper preemption. While mouthing the word preemption as a goal, the Federal Circuit has repeatedly ruled that preemption forms no part of its eligibility test.

Questions presented:

In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), this Court laid out the standards for analyzing patent eligibility under 35 U.S.C. § 101, and explained the main concern undergirding the analysis was one of preemption. This Court did not lay out the exact boundaries of the test, but rather had previously instructed the Federal Circuit may expand on the test so long as it was consistent with the statute. The Federal Circuit however routinely skips the preemption analysis, and has imported a quasi-section 103 analysis into Step Two of the test for determining whether the claims recite only “conventional” features or amount to “something more” than a claim on the abstract idea itself.

The questions presented here are:

1) Whether preemption is a threshold and defining consideration that the lower courts must consider in determining whether a claimed invention is directed to patent eligible subject matter under Section 101, and

2) Whether the courts below have erred in conflating the Step Two conventionality analysis of Alice with the factual prior art patentability analysis of Section 103, without the evidentiary opportunities and protections against hindsight bias afforded by Section 103 and in conflict with this Court’s precedent in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)


An interesting aspect of this case is the newness of the patent at issue.  U.S. Patent No. 9,875,590.  During prosecution, the examiner cited to Alice and rejected the claims as ineligible.  The patent applicant then amended the claims to overcome the rejection.  Then, during litigation the district court found the claims ineligible as a question of law and that determination was affirmed on appeal.

Claim at issue:

7. A method for providing automated entry to properties, comprising:

making properties available for viewing to invited visitors;

providing an application interface of an application running on a computing system to a property manager, the property manager being a manager, a listing agent or an owner of the property, the application interface prompting the property manager to enter a visitor name and contact information for a visitor, wherein upon receipt of the visitor name and contact information, the application provides the visitor with an invitation to receive automated entry information including code information that is valid during a specified period of time so that the visitor can enter a property by themselves, the invitation being delivered to the visitor electronically, the invitation being applicable only to the property and the invitation requesting identification from the visitor;

placing a lock box or an automated door lock at or near each property;

upon the application receiving and confirming identification information for the visitor, providing, by the application, automated entry information to the visitor that allows the visitor to enter the property, the automated entry information including code information that is valid during the specified period of time;

upon the visitor providing the code information to the lock box or the automated door lock at the property within the specified period of time, the lock box or automated door lock opening to facilitate automated entry to the property;

tracking visitor activities at the properties; and

making information about the properties available within a user interface.


29 thoughts on “Where is the preemption test?

  1. 5

    Just for discussion purposes, should not an undisputed “preemption” patent claim be a claim to just a desired end result indicated in the patent, with no limitation in that claim as to how or with what the end result is obtained.* That would be a claim covering any and all later inventions of ANY way to achieve that end result. A true “preemption?”

    *Which is also arguably not claiming an “invention.”

  2. 4

    Crickets about Google v. Oracle because nothing coherent can be said of the arguments or questions asked. Not one of the justices has a clear theory of IP.

    But its all the same problem: the appropriatE disposition of useful information within IP regimes.

    This stupid non-invention should be patent eligible and immediately invalidated for obviousness, obviously. It should be eligible because its a method, the useful result of the method is information only, and the information is consumed by the lockbox, non-human actors, rendering the information intrinsically non-abstract. No patent.

    In Google’s case, the reverse. API calls are consumed by non human actors, rendering the information intrinsically non-expressive. No copyright.

    Information must relate to its audience to apportion its value in IP regimes.

    1. 4.2

      The (purposeful) conflation of such as 103 (and 112) into 101 is a primary weapon of the Ends justify the Means crowd.

      This tactic is both obvious and anticipated.

  3. 3

    Notwithstanding the comments below, the title (and focus) of this thread is on preemption.

    Every single patent claim that has ever existed preempts.

    That is what claims do.

    The notion of undue preemption is NOT a matter of eligibility, but is instead a matter of “the conditions and requirements of this title.” OUTSIDE OF 101.

    Conflation and obfuscation are not the friends of any law, and certainly not the friends of patent law.

    1. 3.1

      You are conflating “the right to exclude” with “preemption of an abstract idea.” Two different concepts.

      1. 3.1.1


        No I am not.

        Claims preempt. That is what they do. That is the same meaning being invoked by the Justices.

        As I noted, they MAY be wishing to actually be talking about more — but such ‘more’ is NOT covered by 101, and thus, there is rampant conflation if very different legal arguments (both by the Justices and by those who happen to like the Ends that the Justices have reached).

  4. 2

    The subject matter of claim 7 insofar as it involves more than known items of equipment involves no more than human transactions that are self-evidently of a well-known routine or predictable character. Nothing truly transformative within the domain of the useful arts is added, so that the claim arguably does not fit into the “process” category of section 101. It suffers from the same deficiencies as the claims in Alice, which survived neither consideration by SCOTUS nor examination at the EPO. It would be regrettable if this unmeritorious claim goes before SCOTUS because the outcome could be unfortunate for our profession.

    Those who have seen my amicus briefs, comments and articles over the last 8 years will be aware of my concern for an improved approach to eligibility, especially at the Federal Circuit. But it is not in the interests of inventors and our profession as a whole that cases of this character should be submitted.

    1. 2.1

      This looks a lot like a “do it on a computer” claim as compared to anything else. Wouldn’t it be more appropriate that they get rejected under 103 rather than 101? Realtors, and other people who control access to property, have been granting limited access to visitors since the first caveman claimed his first cave. This claim is simply using a smartphone app to do the same thing.

      1. 2.1.1

        In other news, the PTO recently unveiled a reduction in examination time for “do it on a computer” examiners.


            It is the initiative referenced here ( link to uspto.gov ), but I don’t believe they’ve released further details. The specific expectancy values only became available to examiners on the 1st.


              So then, no actual details…?

              In the link that you did provide, this item caught my eye: “which represents the full scope of technology covered in an application and accounts for multi-disciplinary inventions

              Which, of course, given the ridiculousness that is current Office Restriction practice, I do not know of any examiner that recognizes (or permits) any such multi-disciplinary items.


          I too would be interested in looking at the original source material.

          Given the ubiquity of the Kondratiev Fifth Wave, I am curious as to any phrasing of “particular art units” being affected by such a change.


          I went ahead and am listening to it now. The whole thing is just a big ol jumble about the district court failing to properly (apparently) write down the abstract idea WITH SPECIFICITY, rather than just using some very generic abstract idea of automated lockbox door opening as the basis of his 101 finding. To that extent I feel for the patentee, because the judge at the district court probably didn’t do his job very well (because it’s super hard to do properly in this case). And, on the other side you see people (the opposing attorney and some of the judges it seems) that seem to think that the office “bought an argument of xy or z got this over abstractions/Alice” I doubt the examiner did that. The examiner simply couldn’t figure out what a good explanation of the abstract idea being preempt was (just like the district court judge couldn’t) and thus didn’t send another 101. That as a matter of fact is proper, in the circumstance where the patent office and/or court cannot think of what the abstract idea truly at issue actually is WITH SPECIFICITY. And indeed, this is a tricky one to announce properly as the abstract idea at issue is hard to enunciate properly in order to do a 101 properly. Indeed, it may not even be possible here. What’s funny also is that the attorney thinks that the office finds that claims pass 101, pass 102, pass 103, pass 112 and issue the claim. That’s not in fact what happens at the office. The office only determines if, under the policies, and laws whether they can detect where it FAILS to pass 101 etc. They are in fact not the same thing.

          But all these oddballs in the recording trying to say that step 1 of alice is “met” or “conceded” and thus they’re moving to step 2 are doing the wrong procedure. Because they’re presuming that the conceded/enunciated by the district court super broad abstract idea is in fact wholly preempt, which the counsel for the patentee plainly contests (rightly so, as it is not wholly preempt). However, this is made all the worse because the patentee’s counsel is confusing everyone by “conceding” that the abstract idea enunciated by the district court is an abstract idea, the preemption of which would be inappropriate. He needed to make himself more clear in that he a. does not conceed that step 1 of alice is met, because, while the generic super broad enunciated abstract idea set forth by the district court is an abstract idea, which the preemption of which would be improper, their claim in fact does not preempt all permutations of that super broadly stated abstract idea.

          This in and of itself causes unending confusion. All this analysis, and arguing is like clown nonsense coming from people that seem like amateurs but which I’m sure are some of the best in the biz.

          In any event, if the district court, federal circuit, and office (as well as presumably the opposing counsel) cannot, with sufficient specificity, set forth an abstract idea that is being either entirely, or at least practically entirely, preempt, then you never even pass step 1 of alice. So far as I can tell so far, nobody has yet done so, though I’d have to review the case in more detail. Not saying it couldn’t be done here, but it looks like it’s a toughie to do properly.


            6, above, you write:

            “What’s funny also is that the attorney thinks that the office finds that claims pass 101, pass 102, pass 103, pass 112 and issue the claim. That’s not in fact what happens at the office. The office only determines if, under the policies, and laws whether they can detect where it FAILS to pass 101 etc. They are in fact not the same thing.”

            My interest is in whether or not they are “the same thing”.

            The Statute sets out the requirements for patentability and (I suppose) the task of the Office is to determine whether those requirements are fulfilled, and object if they are not. If that is the case, well then they are “the same thing” aren’t they?

            It is important, of course, where the burden of proof lies, whether the Applicant has to prove that the claimed subject matter meets all the requirements of patentability or the Office has to prove it does not. But in the end, when Applicant argues that none of the Office’s objections is well-founded, what else can the attorney do than to assert that the claim does meet the requirements of patentability? I don’t see anything “funny” in that at all. What am I not understanding here?


              I think that what 6 is getting at can be seen by how a court will use a double negative in a case in which it is adjudging one of those legal positions.

              Think “not invalid” as opposed to “valid.”

              Of course, this is because a court is looking at only a particular set of facts and issues before it, and other facts and issues NOT before it may tip any “final” view in a different direction.

              Note as well, that to maintain any sense of ‘positive’ possession of a legal right, the patentee must win every case. It takes but a single case to eliminate the ‘positive’ possession.


              “the task of the Office is to determine whether those requirements are fulfilled, and object if they are not. If that is the case, well then they are “the same thing” aren’t they?”

              Nah bro, the task of the office is to see if they can detect if any of the reqs fail to be fulfilled and tell the applicant why this has occurred (put em on notice). As anon notes below, new evidence can arise/be found (102/103 mostly but sometimes 112 or maybe hypothetically a 101 issue could result), someone might come along and enunciate an abstract idea being wholly preempt (a 101 issue), someone may point out x y or z causes a fatal grammar issue etc.

              Since “that/they” is not the case, then they are not the same thing.

              “what else can the attorney do than to assert that the claim does meet the requirements of patentability? ”

              They can assert that if they like, it’s a free country, but to be technically correct they need to state that no valid legal case against the claim showing that it does not have patentability/eligibility has yet been set forth for/before the deciding body (examiner/board/judge).


              “the task of the Office is to determine whether those requirements are fulfilled”

              Not correct, the office is to determine where, if anywhere it is detected, those reqs fail to be fulfilled and put the applicant on notice. Or else they allow/issue the case in accord with the entitlement program under 102.



                “Entitlement program” and “entitled to under the law” carry different LEGAL connotations.

                You have been put on notice of this a very long time ago.

    2. 2.3

      I agree that it probably would not be good for eligibility law if the court were to take cert. on this one. Fortunately, it is distantly unlikely (Rudy Telscher’s previous success with cert. petitions notwithstanding). If the Court was not interested in Ariosa, it is hard to imagine a §101 case that will interest them.

      Four justices are needed to grant cert., and only three seats have changed since the Court unanimously shot down Alice’s claims and passed on Ariosa. We have a ways to go (if ever) before the SCOTUS becomes a force for good in eligibility law.

    3. 2.4

      Yes, at least it’s a somewhat different cert legal attack on Fed. Cir. Alice type 101 tests – via the often ignored “preemption” angle – but I agree with those here that its too bad this is just another really bad facts case to hang it on.

  5. 1

    I haven’t followed this case. Sounds like the petitioner is trying to get the preemption doctrine *expanded*, which is strange, b/c, notwithstanding what the petition says, that’s exactly what the CAFC has done: it has ignored situations in which there is no preemption and said, nevertheless, that a claim is patent-ineligible.

    More to the point, even with the forthcoming confirmation of Judge Barrett to SCOTUS, that body will remain hopelessly clueless about patents after she is seated. Any time SCOTUS touches patent eligibility, it screws things up. Which makes we wonder who the petitioner is fronting for.

    1. 1.1

      I have yet to read a single thing written by an examiner, an APJ, or a Fed. Cir. J. that did anything more than pay lip service to preemption.

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