A Typical Eligibility Case in 2023

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.

  1. Ask whether the claimed invention is directed toward a categorical exclusion.
  2. 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.

Affirmed.

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 .

43 thoughts on “A Typical Eligibility Case in 2023

  1. 8

    The claims are similar to those we have found to be directed to abstract ideas.
    The theory that the Federal Circuit has used time and time again to create patent ineligibly creep.

    B is similar to A, which we found patent ineligible, and thus B is patent ineligible.
    C is similar to B, which we found patent ineligible, and thus C is patent ineligible.
    D is similar to C, which we found patent ineligible, and thus D is patent ineligible.
    .
    .
    .
    Z is similar to Y, which we found patent ineligible, and thus Z is patent ineligible.

    This is patent ineligibility creep. What started out as protection of “the basic tools of scientific and technology work” because “there is a danger that granting patents that tie up their use will inhibit future innovation” has become a tool to hold as ineligible multi-lens cameras, garage doors, motor shafts, and now video surveillance systems.

    If you want to clear a forest, you don’t have to level every tree. You burn one tree and all the others around it burn. You go to the burn line, find the next group of trees still standing, and use the embers of what was burnt to burn one of the still-standing trees down. Keep doing it long enough and there will be little left of the forest. This is what the Federal Circuit is doing.

    1. 8.1

      And look again at that “initial concern”…

      The Court acts out of a fear of what MAY happen…

      This is not grounded in law (prospective future conjecture is NO present case or controversy but rather the forbidden Advisory Opinions. The Court cannot base a current case on what MAY happen, notoriously because “MAY” includes “MAY NOT.”

      What’s worse is that this Advisory Opinion Action is re-writing law – rather than a true “gap” interpretation.

      The continued pretending that the Supreme Court had properly acted only guarantees the continued slide into the morass.

      1. 8.1.1

        The Court cannot base a current case on what MAY happen, notoriously because “MAY” includes “MAY NOT.”
        Let’s be clear, the “there is a danger that granting patents that tie up their use will inhibit future innovation” is a finding of fact that the Supreme Court entirely made up out of whole cloth. Moreover, as you pointed out, it is entirely speculative.

        Congress is best situated to make this kind of findings and make this kind of policy making — not the Courts.

        The Court’s application of its own 101 jurisprudence is completely divorces from any policy making concerns whatsoever.

        If the Court rejects a claim under 102/103, it is because ‘you didn’t invent that’ or ‘that novel invention is obvious.’
        If the Court rejects a claim under 112(a), it is because ‘we aren’t sure what you invented and consequently the public isn’t put on notice as to what they cannot infringe.’
        What’s the policy concern when a claim is tanked under 101. How is this sentence finished: “it is because [….]”?

    2. 8.2

      “ ineligible multi-lens cameras, garage doors, motor shafts, and now video surveillance systems.”

      As classes, none of these articles of manufacture is per se ineligible. No court has even suggested that. So …. you are off the hook and a bit of a li ar. But we knew that already.

      Maybe in each of the cases you are referring to, there was something about the manner in which the alleged “improvement” was claimed which raised the eligibility issue. Have you considered that? Of course you won’t.

      Also it’s well known that most of these claims that go down as ineligible would (or should, according to you!) are invalid under one or more parts of the patent statute so it’s not the case that “progress” in these fields is being held back in any way. If anything, it’s the invalid or ineligible patents in these fields that is inhibiting progress (and increasing the cost of business which gets passed to consumers).

      But go ahead and ignore reality and history and cry a giant rive that garage door opener case. It makes you look really reasonable! Sure it does.

      1. 8.2.1

        Malcolm, you have exactly zero standing (at best) for being reasonable when it comes to the patent law of eligibility under what Congress wrote in 35 USC 101.

  2. 7

    Although Groundhog’s Day was nigh 3 weeks past, the shadow of wha ck a doo Section 101 jurisprudence can always been seen, and summer never comes.

    Bilski was essentially a useless punt. It’s only holding was that that a physical or chemical change is not a required result of a patent-eligible method. It did not address the matter of new, useful, and non-obvious information, which is the root of the current 101 mess.

    I have to agree with Wiper at 4.2 – nearly all of these cases are really 112 problems.

    And I agree with Random at 1.1.1 – Section 101 is being used because it does save major judicial resources.

    Extending Kyle at 1.2.2, method patents should have a result construed as a matter of law, just as the words of the claims are construed under Markman.

    No result, no method. And like Markman, a reasonably adversarial process to file papers and brief the factfinder on the putative technology without burning the summary judgement card.

    And since it’s Groundhogs Day, I’ll repost a link to my thoughts in depth on this issue, including how old cases might have looked with my proposed test for eligibility.

    link to papers.ssrn.com

    And, as usual, this one is an easy one to dispose of using that test.

    Is it a method? Yes

    Is the result of the method some species of information? Yes

    Does the utility of that information arise in the mind of a human being? No, the information could result from any video stream and the utility is realized by the remote video display system.

    Eligible.

    Do these claims teach PHOSITA how to make and use the invention? Not bloody likely. They describe a result.

  3. 6

    Mike: “ Aren’t all method claims pure functional claiming?”

    No. Steps which specify a physical act and specify a particular means for carrying out that act aren’t “functional claiming” as that term is understood in patent law.

    For example, “using a spoon, lift an ounce of gold two inches above a plate” isn’t “functional claiming”. It’s a fully enabled non-abstract step and no court would find otherwise.

    Try harder and stop hyperventilating yourself into the weeds like Grandpa Droolcup.

    1. 6.1

      Malcolm, your version of, “functional claiming,” has always been beyond suspect and not in accord with the law as written by Congress.

      This has long been on the record that you recognize that the Court has gone beyond the words of Congress.

      Everyone “gets” your feelings and what you would have preferred Congress had done, but it is eminently inte11ectually dishonest to pretend that what you merely want is a proper view of the law.

  4. 5

    DC: “ the patentee’s arguments are likely lacking because of the dearth of details in … the claims

    Nobody could have predicted that broad claims would fail when they recite only a desired result without reciting any novel means for achieving that result. So unfair!

      1. 5.1.1

        Not according to the actual text of the actual statue. 35 USC 100(b).

        Side note: 100(a) also has relevance to those ancient, judicially-created exceptions.

  5. 4

    >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.

    They did a lot more than merely ‘maintain’ the existing precedents. They clearly expanded them, as seen by the spike in citations to ‘section 101 cases.’

    This expansion should get a lot more attention than it does b/c the normal “originalist” and “textualist” position is that such “not supported by the actual text” precedents should only be maintained out of respect for stare decisis i.e., not expanded.

    1. 4.2

      The original “abstract idea” meant that it would fail 112.

      The original “abstract idea” was something like “I claim a method of improving machines by building a machine with fewer parts but that performs the same function.”

      Reality: 112 cover the original abstract idea, so the geniuses at the Supreme Court made up a new definition. (And if we notice, then we are bad people.)

      1. 4.2.1

        Note Random’s inclusion of the Morse case (and his parroting of that case being 101 related when in actuality it — being prior to the Act of 1952 — is more a precursor to the law of modern 35 USC 112 (as you indicate)).

    2. 4.3

      “ They did a lot more than merely ‘maintain’ the existing precedents. They clearly expanded them, as seen by the spike in citations to ‘section 101 cases.“

      In reality, courts just started to actually APPLY the existing precedents in a logical matter in response to increasingly aggressive attempts to monopolize abstract subject matter (e.g., information) with patent claims.

      Methods of managing bingo games, “medical databases”, displaying facts, using logic to solve a problem relating to data, making an inference, etc …. None of this stuff belongs anywhere near a sane patent system but we have a class of insatiable bottom-feeding applicants taking their cases to the Supreme Court because that’s apparently the only thing they can do with their wretched miserable lives.

      1. 4.3.1

        As usual Malcolm please feel free to abstain from anything that you would deny innovation protection to.

  6. 3

    This is ridiculous. Not patent law and not law.

    The ladders of abstraction are being used in Alice to say that words are abstract (yes all words are abstract) and we the judges will decide when a word is too far up the ladder of abstraction, which includes the first rung.

    It is so disrespectful to citizens of the USA to be treated like this. And to wrap all this nonsense in 1,000 or 10,000 words is just more disrespectful. If it passes 112, it is not abstract.

  7. 1

    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.”

    All valid claims require a specific solution to a problem rather than a claim to a functional result regardless of means to achieve it. But I do think a grey area of the law – and an issue ripe for Supreme Court review – is whether a functional claim supported by unclaimed particular means in the specification should be disposed of using the judicial exception framework or the 112(a) WD framework. The Supreme Court has never taken, nor endorsed, the FC’s post-Ariad WD jurisprudence.

    In other words, does a claim to a function simply fail because a function not limited by means is abstract and the concrete means in the spec are not imported, or does a claim to a function fail because the function is not commensurate with the possessed disclosed means?

    Of course, one could harmonize the views by simply holding that WD is not met whenever the specification fails to prove the disclosed means fill the scope of the claim function. i.e. You could make WD fail as a matter of law when there is a discreptancy between the scope of the claims and the disclosed means.

    1. 1.1

      Yes, indeed. When a claim is covetous, so wide that it goes way beyond the extent of the inventor’s creditable contribution to the art, it has to be pruned back to what is commensurate with that contribution, this for the health of the patent system in general.

      Exactly which pruning tool you use will depend on the particular fcts of the case. But the tools are already there. The court simply has to feel inclined to use them.

      At the moment, it strikes me, the eligibility tool is having to do work more fitting to one or other of the other tools. That might be because the eligibility tool is such an oh so convenient short cut, beloved of the court because it saves them so much hearing and decision-writing time.

      Being European I do like to see this toggling between technical features in the claim and the technical effects announced in the specification, to ascertain whether they are indeed in harmony. More of this please, I say.

      1. 1.1.1

        At the moment, it strikes me, the eligibility tool is having to do work more fitting to one or other of the other tools. That might be because the eligibility tool is such an oh so convenient short cut, beloved of the court because it saves them so much hearing and decision-writing time.

        Well I suspect that’s because eligibility is a legal question that often requires no factfinding, but 112(a) and 112(b) have been used without factfinding in the past. Contrast Supreme Court cases like Morse and Holland Furniture where the invalidity was based off the threat that undiscovered distinct means *could* exist with Federal Circuit caselaw that requires proof (usually in the form of the infringing device) that distinct means *do* exist. The ability to invalidate using only intrinsic evidence is the important distinction.

      2. 1.1.2

        Exactly which pruning tool you use will depend on the particular fcts of the case.

        Or better put: the Ends do not justify the Means

    2. 1.2

      Aren’t all method claims pure functional claiming? The means are a series of steps right? Methods don’t require the steps to be tied/performed by a particular physical thing/person.

      1. 1.2.1

        That would be correct — method claims are nothing more than functional steps and do not require a “hard goods” designation.

        (Ah, I am reminded of the late Ned Heller who struggled with this concept)

      2. 1.2.2

        Traditionally, a process is a series of steps performed by a person. Cochrane v. Deener (1876) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.”)

        And courts have long tried to confine patentees to roughly the specific means they devise to accomplish a certain result. Corning v. Burden (1854) (“It is for the discovery or invention of some practical method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself.”)

          1. 1.2.2.1.1

            The 1952 Act did not change anything about those two cases, nor does anyone claim it did.

            All the 1952 Act changed on the definition of “process” was to clarify that new uses of old products are not per se ineligible.

            1. 1.2.2.1.1.1

              Not some Kyle.

              You are not in the area of obtaining patents, are you?

              The change in definition of “process” was far more extensive than you appear to understand — and if you were to have ever obtained patent protection for innovators, you would easily grasp this.

      3. 1.2.3

        Aren’t all method claims pure functional claiming?

        Of course not, if that were true it’d be impossible to have a valid “step for” claim because you could never identify structure.

        There’s a difference between structured acts and functional statements that may encompass many completely different acts.

        1. 1.2.3.1

          It’s “turtles” all the way down.

          You’ve conveniently all of the prior discussions wrecking your desired narrative.

          (hint: “screwdriver” is a functional term)

    3. 1.3

      All valid claims require a specific solution to a problem rather than a claim to a functional result regardless of means to achieve it.
      Show me where that is found in 35 USC again? What did the Supreme Court say in Bilksi? Oh … here it is: “Courts should not read into the patent laws limitations and conditions which the legislature has not expressed” (citing Diamond v. Diehr, internal quotes omitted).

      In other words, does a claim to a function simply fail because a function not limited by means is abstract and the concrete means in the spec are not imported, or does a claim to a function fail because the function is not commensurate with the possessed disclosed means?
      Now to this (il)logic and apply it to devices/machines. I claim any one of a battery, light, switch, fastener, engine. There are an untold number of implementations of each of these devices/machines. Whatever you argue against as it pertains to these so-called functions also applies to these devices/machines.

      1. 1.3.1

        All valid claims require a specific solution to a problem rather than a claim to a functional result regardless of means to achieve it.

        Show me where that is found in 35 USC again?

        35 U.S.C. §112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention,” (emphasis added). If you are really claiming a functional result untethered to a particular means of achieving that result, then you are not “particularly pointing out” nor “distinctly claiming” your invention.

      2. 1.3.2

        Show me where that is found in 35 USC again?

        It’s in the requirement that applicants must enable and possess the invention (i.e. the full scope of a claim) and that abstract functionality is not invented.

        All you can do is discover that a given structure whose use produces a result. The result itself always existed. It’s not like flight as a matter of physics was created by man. The physics were always there. Man has just invented *some* of the structures that utilize the physics to invoke a flying function.

        I claim any one of a battery, light, switch, fastener, engine. There are an untold number of implementations of each of these devices/machines. Whatever you argue against as it pertains to these so-called functions also applies to these devices/machines.

        You’re right, yes, it does apply to them too. The first person who invented an engine doesn’t get “all engines” either, see Lizardtech. For example, if you invent a gas engine and use so little structure that it also reads on an electric engine, you’re also gonna get 112(a) rejections because you didn’t enable or possess an electric engine. The difference is that a claim to structure may be detailed enough to be valid, but a novel function is only detailed enough if you can prove that the spec fills the scope of the functional breadth.

        If you have a bow, you can give the structure of your bow, but if you have the function of “firing a projectile” how do you prove that string tension is the only manner of propelling a projectile? You would have to disprove the future existence of the gun (and chemical explosion, among other disparate means) in order to show that the bow proves possession of the full scope of the function. Science is inductive by nature – you generally can never show that you’ve disproven all the alternatives. Even *today* we can’t say we know of all the possible means of firing a projectile, so how could the first person to “invent” the function possibly have possessed the whole scope?

        The person who invented the bow invented a structure who use engendered one expression of the function of firing a projectile. They are made whole by a claim to that expression. The full function is not within the grasp of the art EVEN TODAY, which is why we can still have advancements in the field. To give the original work in a field a claim to the entire field merely slows progress in the field while unjustly enriching the inventor.

        This isn’t me, this is the Supreme Court. Morse tried to claim printing at a distance, and his claim was invalid. It was pretty smart of the court to do that, since he didn’t invent the networked printer and we can still issue patents on networked printers today.

        1. 1.3.2.2

          It’s in the requirement that applicants must enable and possess the invention (i.e. the full scope of a claim) and that abstract functionality is not invented.
          No one has and no one will have ever enable and possess the full scope of any claim that recites things such as “battery, light, switch, fastener, engine.” Herein lies the illogic underpinning your arguments – the same criticism you level at these functionalities can be leveled at just about anything.

          Anytime a product/device is improved, that improvement was NOT enabled and possessed at the time the original product/device was disclosed. Consequently, by YOUR logic, the original product/device should be rejected on that basis.

          Man has just invented *some* of the structures that utilize the physics to invoke a flying function.
          And anytime man invented anything that could fly and was issued a patent for such a creation, that claim covered embodiments not disclosed or possessed by the inventor. That is the nature of claims. Claims used abstractions that are commonly known as words.

          For example, if you invent a gas engine and use so little structure that it also reads on an electric engine, you’re also gonna get 112(a) rejections because you didn’t enable or possess an electric engine.
          Try using a realistic example. Unrealistic examples lead to unrealistic assumptions.

          The difference is that a claim to structure may be detailed enough to be valid, but a novel function is only detailed enough if you can prove that the spec fills the scope of the functional breadth.
          You pulled that one out of your nether regions, didn’t you? As someone who both practiced (as an engineer) in the mechanical field and wrote a lot of computer programs in my younger days and as a patent attorney who has prosecuted hundreds of applications in both the mechanical and computer/software arts, there is no substantial difference in the details presented in the respective types of applications. Virtually all inventions are combinations of known elements and the vast majority of these known elements can be accomplished using a huge variety of different approaches.

          To give the original work in a field a claim to the entire field merely slows progress in the field while unjustly enriching the inventor.
          So the first person who develops something truly unique (i.e., the first in its field) cannot get a patent on it? Is that what you are saying?

          This isn’t me, this is the Supreme Court. Morse tried to claim printing at a distance, and his claim was invalid.
          That’s revisit the actual language of that claim:
          Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specifications and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances, being a new application of that power, of which I claim to be the first inventor or discovered.
          Claim language of this type isn’t found in today’s claims and it certainly isn’t comparable to that recited in Hawk Tech. Facts matter, and in this instance, the facts of Morse are very different than just about anything else I’ve ever seen.

          1. 1.3.2.2.1

            I have put this exact view to Random before – in more succinct and direct terms.

            Random refuses to address the counter point.

            He will also regurge his view as if this counter point was never raised (again and again and again and…)

Comments are closed.