Patent Eligibility: No Patenting a Correlation

by Dennis Crouch

iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760 (Supreme Court 2021) [Petition]

iLife’s recent petition for writ of certiorari matches those found in American Axle’s pending petition:

  1. What is the appropriate standard for determining whether a patent claim is  directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
  2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

The petition’s linkage is strategic since in Am. Axle the Supreme Court has asked the U.S. Government (Solicitor General) to offer its views on these same questions.  The SG’s office (under president Trump) previously suggested that the Court should rehear a case on eligibility because of the ongoing uncertainty and resulting market disruption.

= = = = =

iLife’s asserted U.S. Patent No. 6,864,796 covers a mobile device having a motion detection system to evaluate body movement and determine whether the movement “is within environmental tolerance.”  The patent makes clear that “methods for determining specific movements of a body that use a variety of devices, apparatus and systems are, generally speaking, known.”  The improvement then is the ability to determine whether any particular movement is outside of a normal tolerance and perhaps indicative of injury:

[The prior art is not] capable of evaluating body movement to determine whether the [movement] is normal or abnormal; and if abnormal, whether such movement is so abnormal to be beyond tolerance, for instance, to be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.

‘796 Patent.  Nintendo challenged the claims via IPR, but the PTAB sided with iLife. The IPR challenge focused on obviousness and anticipation.

Later in court, Nintendo argued that the claims were invalid for lack of enablement and written description, but the jury denied those defenses and instead awarded iLife $10 million in infringement damages.

Finally though the district court issued a post-verdict judgment as a matter of law — holding the claims ineligible as directed to the abstract idea of “gathering, processing, and transmitting information.” On appeal, the Federal Circuit affirmed, holding that the claims recite the abstract idea of  “a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.” Stripped away from pseudo-technical language, the court found this simply gathering, processing, and transmitting information.”

= = = =

At its heart, I see the invention here as a method of diagnosis much like that rejected in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).  In Mayo, the level of 6-thioguanine was measured to determine whether the patient needed more thiopurine drug.  Although the link between body-levels of 6-thioguanine and thiopurine was an important discovery, that link was an unpatentable law of nature.  In iLife, the correlation between certain accelerometer measurements and distress of a human body. But, the result is the same — that correlation itself cannot be patentable.

41 thoughts on “Patent Eligibility: No Patenting a Correlation

  1. 8

    “Gathering, processing, and transmitting information.” This is an absurd threshold for determining whether a claim recites eligible subject matter under 35 USC 101. The Fed. Cir. has taken bad cases and made bad law, classic pitfall learned by every law school student. Every circuit with a transistor gathers, processes, and transmits information, whether it’s under the direction of code or not. The Federal Circuit clearly has another agenda in mind because there is no rational basis for their decision.

    1. 8.1

      And it was Moore that wrote the opinion with Reyna and Chen.

      I’ve been telling people for years that these judges were selected based on their anti-patent judicial activist positions prior to being appointed.

      We need to end the CAFC and restart it with new judges that are qualified. Probably remove the case law going back to about 2002.

    2. 8.2

      “ Every circuit with a transistor gathers, processes, and transmits information, whether it’s under the direction of code or not”

      That is why a “new” “circuit” described in those genetic terms, without structure, and differing only in the content of the data, is ineligible.

      Thank you for the comment.

      1. 8.2.1

        Malcolm and his falsehood of “picture claim” structure….

      2. 8.2.2

        Providing structure might not help all that much. The component parts — transistors, capacitors, etc — are all “conventional. ”

        Relatedly, are any applied-AI patents valid? Or are they just natural phenomena + conventional processing?

        1. 8.2.2.1

          OC,

          Serious question: what does “conventional” mean to you?

          Are you applying the Berkheimer memorandum (and subsequent court views) to ‘set’ that conventionality must be shown (to an APA level of evidentiary showing) NOT just for any single element of a claim, but for the claim as a whole and as an ordered combination (in toto) and that conventionality is a much higher bar than either (mere) anticipation or obviousness, and includes the notion of widespread adaptation?

          These are NOT minor differences.

      3. 8.2.3

        New code is the equivalent of new structure. The code controls the state of actual circuits and can be implemented with a specific, new structure of circuit elements (and would be if we lived in the 1930’s). There is no rational distinction between new code and new circuit structure. Thus, it is “how” the functionality is achieved that should be considered as eligible patent subject matter under 101 and then properly examined under 102 and 103. Every judicial 101 “abstract idea” category could be properly be examined under 102 and 103, e.g. mathematical algorithms & laws of nature without new structure or application are not new, automation of a manual process without novel structure (e.g. novel code or combination of code functions) is not new, and claiming a result without novel structure is not new.

        1. 8.2.3.1

          Code instructions that cause a gain in utility for a machine are machine components and never abstract.

          Code instructions that produce an information result valuable to a human being are always abstractions, and should not be subject to patenting.

          1. 8.2.3.1.1

            All code instructions cause a gain/change in utility for a machine. All code instructions produce information results. From a patentability perspective, what difference does it make if the information results are valuable to a human? Arguably all generated information results are in some way valuable to a human. For example, if an inventor develops a new circuit configuration that causes a GPS device to provide a faster, more accurate, more reliable locational & directional informational result to a human user, is that abstract? If the same inventor instead codes a new GPS algorithm, equivalent to the new circuit configuration, that causes the GPS device to provide a faster, more accurate, more reliable locational & directional informational result to a human user, how is that abstract? If an inventor develops a new circuit configuration or codes a new inventory algorithm that causes a computer to deliver faster, more accurate, more reliable inventory data to a human user, are both the new circuit and the coded invention abstract? All the inventions are commercially valuable, and none preclude doing anything mentally or by hand. The Federal Circuit’s “concrete and tangible result” standard for 101 was far more workable than any other amorphous, malleable, unpredictable Alice/Mayo-based 101 standard. J. Thomas knew that something was wrong with an invention that claimed automation of a well-known economic principle. For some reason he chose to apply 101 and has caused unbelievable havoc. Alice did not have to be decided under 101 and indeed Alice conflates 101 and 102, i.e. inserting an “inventive step” inquiry for 101. Alice could easily have been decided based on 103, i.e. claiming the automation of a well-known economic principle is obvious.

            1. 8.2.3.1.1.1

              Arguably all generated information results are in some way valuable to a human

              It is MORE than just “arguably,” as one must take the sense of “utilty” to be the patent sense and not a colloquial one, and that patent sense is one that must be measured in its value to a human.

              Simply put, anything NOT of value to a human cannot obtain the legal patent sense of utility.

              Forever and a day, Marty has attempted to NOT understand this fundamental error of his.

              1. 8.2.3.1.1.1.1

                As quite often occurs these days, not all generated information results are useful, particularly if they are wrong. Nevertheless, if 101 were taken for face value, we would not be in this conundrum. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

            2. 8.2.3.1.1.2

              Alice could easily have been decided based on 103, i.e. claiming the automation of a well-known economic principle is obvious.

              Hmm – I am reminded of one of my favorite xkcd frames: link to xkcd.com

            3. 8.2.3.1.1.3

              K:

              ” All code instructions cause a gain/change in utility for a machine”

              Really? If I turn a steering wheel left rather than right, I’ve used a different instruction, but the machine is no more or less useful, unless you consider the result of making a left turn rather than a right some kind of differentiation that could find patent protection.

              “From a patentability perspective, what difference does it make if the information results are valuable to a human?”

              Because we can’t patent the exchange of information, even if its new and useful, and maintain a free society. Utility that occurs entirely within a human mind is 100% abstract, all the time. There is some kind of policy consensus, based primordially on this truth, that patents are not for abstractions.

              For example, if an inventor develops a new circuit configuration that causes a GPS device to provide a faster, more accurate, more reliable locational & directional informational result to a human user, is that abstract?

              No, because a “new circuit configuration” does not provide anything to a person. It may provide a timing result to an interpreter. It may provide a noise reduction function to an antenna, but a human being is not consuming the output of the improved circuit, and the patent is infringed by the making and use of the circuit rather than the overall pursuit of finding one’s location. If the invention itself is “a device to tell a person where they are located”, is that subject matter eligible?

              “If an inventor develops a new circuit configuration or codes a new inventory algorithm that causes a computer to deliver faster, more accurate, more reliable inventory data to a human user, are both the new circuit and the coded invention abstract?

              Absolutely. A computer cannot deliver inventory data. Inventory is an abstraction- a creation of a human mind. The computer no more knows the data is inventory data than it knows the data is a recipe for fruit salad. If this new circuit can process information in a new way, fantastic, but if that new way is nothing but the application of a human abstraction (like “inventory”, or stock trades, or interest rate hedging), its not a patentable invention.

              A human can draw inventory information from a computer, but the act of drawing information is the literal Latin root of the word abstract. The Inventory Arts have no business in a rational patent system.

              “The Federal Circuit’s “concrete and tangible result” standard for 101 was far more workable than any other amorphous, malleable, unpredictable Alice/Mayo-based 101 standard.”

              On that we agree.

              “Alice did not have to be decided under 101 and indeed Alice conflates 101 and 102, i.e. inserting an “inventive step” inquiry for 101”

              Half-true. Alice is absurdly subjective and unmoored to any workable principle other than a notion that there is a certain combination of functional claiming, obvious use of existing components, a result as the point of novelty, and lack of description that plagues many inventions associated with biotech & computers- more broadly, in inventions that are essentially made of information.

              This arose because the word Process in Section 101 must have practical limits (because everything that happens in the world is a “process”) and there is no rational lens available to do that.

              It was and is a huge problem and that’s where we are. Focusing on the information consumer as the measure of abstraction would be a strong lens.

              Arguably all generated information results are in some way valuable to a human.

              . All code instructions produce information results. From a patentability perspective, what difference does it make if the information results are valuable to a human? Arguably all generated information results are in some way valuable to a human. For example, if an inventor develops a new circuit configuration that causes a GPS device to provide a faster, more accurate, more reliable locational & directional informational result to a human user, is that abstract? If the same inventor instead codes a new GPS algorithm, equivalent to the new circuit configuration, that causes the GPS device to provide a faster, more accurate, more reliable locational & directional informational result to a human user, how is that abstract? If an inventor develops a new circuit configuration or codes a new inventory algorithm that causes a computer to deliver faster, more accurate, more reliable inventory data to a human user, are both the new circuit and the coded invention abstract? All the inventions are commercially valuable, and none preclude doing anything mentally or by hand. The Federal Circuit’s “concrete and tangible result” standard for 101 was far more workable than any other amorphous, malleable, unpredictable Alice/Mayo-based 101 standard. J. Thomas knew that something was wrong with an invention that claimed automation of a well-known economic principle. For some reason he chose to apply 101 and has caused unbelievable havoc. Alice did not have to be decided under 101 and indeed Alice conflates 101 and 102, i.e. inserting an “inventive step” inquiry for 101. Alice could easily have been decided based on 103, i.e. claiming the automation of a well-known economic principle is obvious.

              1. 8.2.3.1.1.3.1

                Cf “entirely within a human mind with traffic lights….

  2. 7

    Re: “The improvement then [in known body movement measurement devices] is the ability to determine whether any particular movement is outside of a normal tolerance and perhaps indicative of injury.”
    Isn’t there more anti-101 anti-103 meat than that on some claim bones? Isn’t merely that what has been done with instrumented test car crash dummies and military pilot ejection seat dummies for many years now?

    1. 7.1

      One reason for my ‘cert denied’ prediction is that there are also some potential** enablement issues, as to (in context) what ARE “normal tolerances” for video game players, and how are such determined for these claims.

      ** in all fairness, I have not reviewed the actual specification – but I tend to doubt that “normal tolerance” for any specific population was discussed.

  3. 6

    By the way, my prediction for this is:
    Cert denied.

  4. 5

    One problem I have is that – at one time – we seemed to be moving more toward a European system of providing a technical solution to a technical problem. That seems to be forgotten, as multiple patents (including this one) have (ostensibly) provided a technical solution to a technical problem, but that was immaterial.

    Another problem I have is that if I’m drafting a patent application that uses a computer, I have no idea what will or will not make this patentable. It seems as if all the court has to do is focus on an “abstract idea” and say that’s the invention. Once that’s done, it’s over.

    And I no longer know what “hardware” will help. A circuit? But isn’t a circuit just a way of implementing an abstract idea?

    1. 5.1

      See 1.1 below

    2. 5.2

      “ Another problem I have is that if I’m drafting a patent application that uses a computer, I have no idea what will or will not make this patentable.”

      How about reciting some non-obvious structure that yields an unexpected result?

      Or is that too complicated for you?

      1. 5.2.1

        reciting some non-obvious structure

        And again with the falsehood….

        The same old meme of trying to make what is optional to be not optional.

        Welcome back.

        Not.

  5. 4

    Actually too no one else has picked up on this but the biggest flaw with the decision is that it is an advisory decision. There is no issue about the director reversing a decision as the director did not reverse a decision and this wasn’t even an issue raised on cert.

    And yet the Scotus held that it would be unconstitutional for the courts to block the director from reversing a decision. Get it? This is an an advisory decision by the Scotus.

    Get it? The remedy was to issue an advisory opinion. There was no briefing on whether it would be Constitutional for the director to reverse an order of the PTAB and has already been pointed out in this blog the remedy brings up all sorts of issues with administrative law.

    Anyway, the remedy was to issue an advisory opinion when there was no case or controversy as to whether the director could reverse the decision of the PTAB.

    1. 4.1

      What this illustrates is how convoluted it gets when the Scotus starts writing in their own private sections to laws written by Congress.

    2. 4.2

      And, anon, in the other post, no I am not confused. A remedy that involves an advisory decision is still an advisory decision. Just shush. You don’t know what you are talking about. At best this is highly controversial as we don’t know what issues there may be with the Scotus saying the director can reverse the PTAB as it was not briefed and was not ripe for a decision.

      You see? This is happening because the Scotus has added to their remedies rewriting sections of a law passed by Congress.

      And don’t yap away anon. Go read again some opinions about ripeness.

      1. 4.2.1

        You are now confused across three different threads.

        Try to keep the topic to one thread, ok?

      2. 4.2.2

        An improper remedy is not a matter of ripeness of the issue adjudicated.

        Put the shovel down Night Writer.

        1. 4.2.2.1

          You have no idea what you are talking about anon.

          1. 4.2.2.1.1

            Step one for you Night Writer:

            Identify the actual issue that was adjudicated.

            (well actually, that’s step two – step one for you is to put the shovel down)

            1. 4.2.2.1.1.1

              Just shush.

              1. 4.2.2.1.1.1.1

                LOL – let me know if you really think ‘just shush’ is going to actually work.

                You are humorous.

  6. 3

    As to the question in the other post about whether the Scotus will take cert for American Axis my answer is I think they will or one of the other cases that are close to it within one year.

    I’d have to spend more time reading it all to figure out exactly what is going to happen but I think the CAFC has extended Alice so far that the Scotus feels obligated to look at one of these cases that involve a large physical machine. Although they did look at that heart monitoring machine not too long ago.

    Still, the Scotus is fairly political and there is a hue and cry for them to look at American Axil. They might wait for another similar one but my bet is within a year they will grant cert for a 101 case.

    1. 3.1

      Thanks NW. That was my question in the other post.

      What do you think, anon? Cert or no cert?

      1. 3.1.1

        No cert.

        I do “get” the view that there is a sense of building frustration, but none of these cases actually change the legal dynamics of the Court’s prior decisions.

        To take a cert then (in my view) has to come from a more powerful sense that their past actions have truly harmed innovation – and if that level of ‘feeling’ were reached, then I would expect to see my coined term of “Kavanaugh Scissors” in play.

  7. 2

    On its face, question two is interesting because of the draw to the “time factor” without explicitly denoting any of the three different ‘time metrics’ of anticipation, obviousness, or conventionality (or the Court’s ‘long standing’).

  8. 1

    DC>>> Stripped away from pseudo-technical language, the court found this simply gathering, processing, and transmitting information.

    What exactly do the judges do again? Gather, process, and transmit information. So a computer that does what people do now for a living is not eligible because, well because.

    1. 1.1

      “Strip away” == Gist.

      To your point though, with a magic wand, ‘a machine that does …’ no longer “counts” as belonging to the express category (of the Legislative Branch) of ‘machine.’

    2. 1.2

      Can you explain your preoccupation with the eligibility of professional activities? I don’t see teaching Russian or servicing diapers as any less important merely because they are ineligible subject matters, do you?

      1. 1.2.1

        Shhh. He’s been on that trip for years and doesn’t realize that he’s making a good case for the ineligibility of data processing methods.

        Just let him stew in the sun like the clueless and dishonest puddle of dog waste that he is.

      2. 1.2.2

        Ben, please. Stop this nonsense of having the tone of an honest inquirer when we know that you are not.

        The reason to bring up the job of the CAFC is judges is obvious as they are the ones that have extended Alice/Mayo and held that a machine that performs their job is ineligible. It is pretty clear to anyone that wants to promote innovation that this is a serious flaw in their reasoning.

        1. 1.2.2.1

          I guess my first attempt was lost in the filter. Shorter version:

          I can’t complain about you concluding I’m an irredeemable interlocuter since I’ve done the same to another, but then you should ignore my posts rather than acknowledge them with your own complaints. If I’m so unreasonable, I’ll demonstrate why you’re not bothering to respond to me and no one will think the lesser of you.

          Also, I really would like to hear the articulation of the supposed flaw.

          1. 1.2.2.1.1

            lol – invites to be ignored while begging to not be ignored…

            And not realizing that the path of “just ignore” is very much part of the problem of people becoming trapped in their own little bubbles.

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