by Dennis Crouch
The U.S. Constitution authorizes Congress to legislatively create a patent system. And, Congress has so since the beginning, with George Washington signing the the First Patent Act into law in 1790. As Congress continued to legislatively develop the statute, courts also added common law nuance, including the law of patent eligibility. In Bilski, the Supreme Court recognized that the traditional exclusions of “abstract ideas” and “laws of nature” were not textually derived, but were of such antiquity that their precedent could be maintained and justified. Bilski v. Kappos, 561 U.S. 593 (2010). Later, in Mayo and Alice, the Supreme Court fleshed-out its two step test for determining eligibility for these categorical exclusions.
- Ask whether the claimed invention is directed toward a categorical exclusion.
- If yes, ask whether the claimed invention includes something more, such as an inventive concept that transforms the abstract idea into a patent eligible invention.
Mayo v. Prometheus, 566 U.S. 66 (2012); Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Since 2012, almost 2,000 court decisions have referenced these cases along with 8,000+ PTAB decisions. These were clearly watershed cases that dramatically changed the landscape of patent law and patent litigation.
Prior to Alice/Mayo, most courts focusing on eligibility issues contended with major policy goals associated with preemption of ideas and fundamental principles. That analysis reeks of policymaking and helps explain why courts shied away. The Alice/Mayo revolution systemized eligibility doctrine into a framework more familiar to judges. Although the purpose is still to avoid improper preemption of fundamental ideas, courts no longer have to grapple with the question of preemption, but rather only the jurisprudential proxies created by the Court.
The recent decision in Hawk Tech Sys. v. Castle Retail, — F.4th — (Fed. Cir. 2023), highlights the current state of the law. Hawk’s patent relates to video surveillance systems, and claims a method of receiving and/or converting stored video images and then displaying them simultaneously on a remote viewing device. The district court quickly dismissed the case under R.12(b)(6), finding the claim ineligible on its face. On appeal the Federal Circuit affirmed.
At some level, all inventions rely upon abstract ideas and laws of nature for their operation. At Step 1, Alice asks a more pointed question — is the claim “directed to” one of those excluded forms. The primary focus then is on what the patent itself “asserts to be the focus of the claimed advance,” looking to both the claim language and the associated specification. Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161 (Fed. Cir. 2019). Hawk’s claims are directed to a method of viewing images, and includes a series of steps: “receiving, displaying, converting, storing, and transmitting digital video” that are all claimed “using results-based functional language.” This combination of a data-manipulation process claimed at a high level of abstraction has been regularly tagged as being directed to an abstract idea. In other cases, details in the specification showing a technological solution has saved claims at step 1. Here, however, the court concluded that the abstract idea analysis focuses on the claim language itself. Here, the court (in my view) mis-cited ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019). In that case, the court noted that technical details in the specification shouldn’t be imported into the claims for Alice step-on analysis. Hawk’s argument was somewhat different — it suggested that the specification provided an explanation as to how the claimed approach solved a particular problem. Even still, the patentee’s arguments are likely lacking because of the dearth of details in both the claims and the specification. The court concluded that the claims simply “fail to recite a specific solution to make the alleged improvement … and at most recite abstract data manipulation.”
At step 2 the appellate panel agreed with the district court that the claims failed to show any technological improvement sufficient to be considered an inventive concept. Here, the court concluded that achieving a novel technological benefit was insufficient because the claims were written in “generical functional language” relying upon “conventional computer and network components operating according to their ordinary function.”
One quirk of the district court decision was that it held a hearing and considered some evidence prior to deciding the R.12(b)(6) motion. But, those motions are designed to be based simply on the pleadings. The rules further provide that, if a court considers matters outside the pleadings then “the motion must be treated as one for summary judgment.” FRCP 12(d). And, once it becomes summary judgment, then the court needs to allow more time for the parties to develop the factual evidence. On appeal, the Federal Circuit agreed that the district court erred, but concluded that the error was harmless since the district court’s decision did not hinge on any of the additional material presented.
Note: The patent here claims a 2002 priority date, but the particular application was filed in 2017 and issued in 2019. I.e., the case was considered and passed muster under the USPTO’s eligibility examination guidelines.
Justin Hasford of Finnegan handled the the case below and the appeal for the defendant, Castle Retail. Chris Austin of Weide & Miller represented the patentee .