Question Presented: Is Parker v. Flook Still Good Law?

Yu v. Apple (Supreme Court 2021)

A new petition for certiorari asks the court whether Parker v. Flook, 437 U.S. 584 (1978) is still good law.

Quick answer from Crouch: Yes, it is still good law.

Flook is a divide-and-conquer case that looks a lot like the Alice test itself. The claims were directed setting of “alarm limits” for a catalytic conversion process and the court identified the only novel feature to be a mathematical formula.  The mathematical formula was an abstract idea, and thus offered no patentable weight.  And, the remaining features were admittedly known in the art.

Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.  Thus, the claim as a whole was ineligible.  Although the court recognized that it had disected the claim into component parts, it also concluded that this approach still took the claim “as a whole:”

Our approach [is] not at all inconsistent with the view that a patent claim must be considered as a whole. Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. 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.

Id.  To be clear, the Federal Circuit treated Flook as effectively repudiated by Diamond v. Diehr, 450 U.S. 175 (1981), but that was apparently never the view of the Supreme Court. I should note here the actual question presented is as follows:

Whether, when applying the test for patent eligibility set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), a patent claim should be considered “as a whole” in accordance with Diamond v. Diehr, 450 U.S. 175 (1981), or instead, whether all conventional elements of the claim must be disregarded prior to determining its “point of novelty” as set forth in this Court’s older precedent in Parker v. Flook, 437 U.S. 584 (1978).

Read the petition here: 20211129141853759_USSCPetitionforWritofCertiorari.


32 thoughts on “Question Presented: Is Parker v. Flook Still Good Law?

  1. 6

    I have the impression that Vanda limits the effect of Mayo the same way Diehr limits the effect of Flook. When you look at Flook, the claim looks quite abstract/intangible (updating an alarm limit). The same is true of Mayo (optimizing efficacy of a treatment. However, when the claim is more applied/tangible, the subject matter becomes eligible. In Diehr, it was a process to manufacture rubber articles, and in Vanda, it was treating a patient. In both cases, there is an effect when the claimed method is performed.

    Note also that Flook is based on the assumption that the inventor discovered a linear equation. This is absurd. The inventor at best discovered that a linear equation is useful when updating an alarm limit in some chemical process. Starting with this absurdity could not have resulted in clarifying the law.

    1. 6.1

      Sure, you can explain all four of those cases with recourse to the machine or transformation test, with Mayo & Flook on the infelicitous side of that line, and Diehr & Vanda on the happier side.

      1. 6.1.1

        A comment about recourse to the machine or transformation test, without including Bilski seems a bit, shall we say, ‘incomplete.’

      2. 6.1.3

        I do not agree that the MOT test is helpful here. The test seems to be more about the type of effect that the claimed invention is having, and in particular, whether the claimed invention has a tangible effect. Even if you use a computer and a sensor to update an alarm limit, in the end, you just changing a number without any effect on the way the chemical process is performed. This is quite different from automatically stopping a curing process to avoid excessive curing.

    2. 6.2

      Look at the make-up of the Courts deciding these various cases (for example, follow the ‘lineage’ of Douglas/Stevens/Sotomayor).

      WHO is saying WHAT is a critical factor to keep in mind when evaluating how this Gordian Knot came to be.

      1. 6.2.1

        I am not sure what you mean by Gordian knot. My suspicion is that the decisions are made with the guts, and up to now, the Justices haven’t been able to clearly express a rationale that would match what their guts tell them. But when you look at the cases found ineligible, they are not about using hard sciences to achieve a tangible, useful result.


          “when you look at the cases found ineligible, they are not about using hard sciences to achieve a tangible, useful result“

          No kidding.


          The reference to Gordian Knot should be plain on its face, PiKa, given the ping pong, results-driven, panel dependent APPLICATION of the ‘gift’ from the Supreme Court which undergirds statements by prominent members of ALL three branches of the government as to the evident
          sh00t’ that eligibility has become from the rather clear and direct words of Congress that are actually in 35 USC 101.

          Case found ‘ineligible’ and cases found ‘eligible’ OVERLAP in any number of ways including your (non-binding) tangible, useful result.

          By the by, even items that DO provide your tangible useful result are also found ineligible, so your error is bi-directional.

  2. 5

    Some hilarious knucklehead down below says “the real question is whether Diehr is still in force.”

    That’s not the “real question.” The ludicrous, extreme and just plain wrong “holding” of Diehr that glibertarian patent huffers so hot and bothered was NEVER “in force” because it made no sense and couldn’t be applied without turning the patent system into a bigger joke than it already is.

    The Supreme Court sometimes writes nonsensical opinions. That’s okay! What a normal lawyer does is simply acknowledge that the wrongness is just that and ignores it. To nobody’s surprise, that’s how the Supreme Court and even the CAFC treats the Supreme Court’s ridiculous decisions as well, hence all the cases subsequent to Diehr that are written as if Diehr never happened or as if Diehr stood for the banal and obvious proposition that the eligibility of an invention doesn’t hinge on the presence or absence of a magic word.

    1. 5.1

      Your latest missive at 5 is even worse than your whine at 4.

      The Supreme Court sometimes writes nonsensical opinions. That’s okay!

      What a load of bull.

      You are all up about how bad the Supremes are when your desired Ends are not met (think guns, abortion, or any other Liberal Left defeat), but are “all ok” shuck and grin when it comes to patents and decisions that arrive at your desired Ends.

  3. 4

    The laughably extreme version of Diehr cheerleaded here (and elsewhere) by the worst attorneys ever (Dennis knows them personally!) was never “in force” because plainly it could not be enforced without turning the system into a giant joke.

    The mere presence of an ineligible element *or the mere presence of an eligible element* in a claim has no bearing on the ultimate eligibility of the claim. Because basic logic is a thing and our system has lax rules about how claims are drafted . Who needs this spelled out for them in 2021?

    1. 4.1

      Except for the fact that your version is just not what is there in this reality, you might as well have penned the Act of 1952.

      As it is, no, you are just not correct.


    2. 4.2

      LOL… I haven’t been around much in a long time, but “The Prophet” writes a lot like Malcolm did. Is this Malcolm?

    3. 4.3

      Are you going to disparge a person by name like you did in another thread? I sure hope that person finds your true identity and sues the cr__p out of you.

      1. 4.3.1

        “I sure hope that person finds your true identity and sues the cr__p out of you.”


        It’s okay, Cleta. The world already knows you are a total stain on the profession. You don’t need to make that any more obvious.

  4. 3

    I call B$ on this:

    but that was apparently never the view of the Supreme Court

    Both Benson and Flook were cabined by Diehr — per the Supreme Court with Bilski.

    Not only is it disingenuous to pretend otherwise, drawing attention away from the fact that the Supreme Court has created a Gordian Knot is part of the problem in compounding that Gordian Knot.

    A teacher of patent law should be doing the opposite of what is presented here.

      1. 3.1.1

        What is remarkable is that you think that my confidence in my opinion is unearned, with an implicit view that my opinion is not correct.

        You are wrong on both accounts.

        Maybe instead of such mis-firings, you advance a point that we can engage on…

        Oh wait, you only crawl out of your muck to toss mindless posts and don’t engage in substantive matters.

  5. 2

    The named inventors are Petitioners [Yanbin] Yu and [Zhongxuan] Zhang. C.A.J.A.14. Yu holds a doctorate in electrical engineering from Imperial College in London, England. Zhang holds a doctorate in microelectronics from Tsinghua University in Beijing, People’s Republic of China.
    A great case on its facts. I like these facts better than American Axle or the garage door case. However, I very much doubt a very right-leaning SCOTUS is going to hand the quintessential US company (Apple) a defeat against inventors Yu and Zhang. Can you imagine the headlines from Fox News if Apple were to lose?

    Yu and Zhang should have incorporated using a very western-sounding name and sued Apple under that name. Justice is supposed to be blind, but only the naïve actually believe that.

    As to the petition itself, I wouldn’t have focused on Flook and Diehr. I would have focused on expanding upon the Court’s decision in Alice. Get them to define what constitutes an abstract idea (i.e., is “taking two pictures and using those pictures to enhance each other in some way” an abstract idea?). Get them to talk about preemption — is this alleged abstract idea preempted in any meaningful way? There is also the 12b6 issue that could have been addressed. Diehr and Flook have been relegated to the dustbin of patent law, which is where they should have been left.

    Regardless, the result of this petition is almost preordained: denied

  6. 1

    Hah! Yes, I agree it’s still good law. Maybe not good, but law. Would be better to ask whether Diamond v Diehr is still good law, but we knew that too. Thanks for keeping the debate alive!

    1. 1.1

      Great point! Diamond v. Diehr is definitely not good law anymore.

      Anything invented under the Sun by man except when another man can characterize it as an abstract idea.

      1. 1.1.1

        And yet, in Mayo, the Court proclaimed that Diehr was not only still good law, but “most on point.”


          Dotcha just love it when the CAFC and SCOTUS explicitly proclaim what they’re following . . . than proceed to ignore it?


            Right, the two-facedness on this subject is maddening. Once you realize, however, that the SCOTUS is being two-faced on this subject, you learn not to take seriously claims to the effect that “in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” Bilski v. Kappos, 561 U.S. 593, 611 (2010).

            You cannot take the SCOTUS’ words at face value when they are doing §101. Pay attention to what they do, not what they say. Diehr says not to dissect claims, but then the Court goes and does just that. When you look at the real way the Court actually behaves, it appears that Diehr is essentially a dead letter, while Flook (heaven help us!) is the real and vital law.


            A million times no – not even the Supreme Court gets such a pass and any attorney advocating so is likely committing an ethical breach against their own State oath.

    2. 1.2

      Exactly. It is kind of crazy to ask if Flook still holds force. Daily we can see the effects of Flook. The real question is whether Diehr is still in force. For all intents and purposes, Alice appears to have sub silentio neutered Diehr, just as—once upon a time—Diehr had sub silentio neutered Flook.

      1. 1.2.1

        Diehr’s neutering of Flook was NOT “sub silento.”

        This type of mis-information should not be tolerated.

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