by Dennis Crouch
I have really enjoyed reading the new article by Professors Rantanen and Datzov providing empirical evidence that eligibility outcomes are now quite predictable. When the Supreme Court decided Bilski back in 2010, I was quite concerned about predictability and co-authored a BTLJ article with Prof. Rob Merges on the topic. If you recall though, in Bilski the Supreme Court offered no decision making framework beyond suggesting a case by case approach. At the time, there were only a sparse few prior cases to guide future decisions. But a more complete legal framework was developed fairly quickly in the subsequent cases of Alice Corp and Mayo, and the lower courts decided several hundred eligibility cases that provided substantial guideposts that so often seek in our common law system.
Although I was initially surprised at their reported high affirmance rate of eligibility decisions — on reflection it has begun to make sense. The framework provided a key procedural process and hundreds of decisions gave the opportunity to work through ambiguities. In our 2010 article, Merges and I were particularly concerned about USPTO patent examiners being able to follow the atextual guidelines offered by Bilski, but the Patent Office also acted to create and then repeatedly modify its eligibility examination guidelines in a way that offered a straightforward path for non-lawyer examiners to substantially follow the law set out by the Court.
The article addresses the rhetoric of unpredictability and argues that “there is significant reason to think the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges, may be more of a misconception than an accurate narrative.”
For folks fighting through eligibility cases these days, the biggest concern is no longer unpredictability, but that the law has pushed too far against patentability. Many like the pendulum analogy because it suggests a return — that the pendulum will swing back.
In my view, the pendulum will (and is) swinging back, but not via a change in the law. Most of the patents that have been invalidated were those applied-for prior to the Supreme Court’s radical change in eligibility law. Since then patent prosecution attorneys have substantially modified their approach to drafting patent applications in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments. Likewise, patent litigators are wary of asserting claims that are likely to be found ineligible and so shy away from those potential case killers. The result then is that I expect to see far fewer eligibility cases in the coming years, but that will reflect in a change in practice rather than another change in the law.
This was left on the table in the prior “eligibility” thread.
Funny how no choice is offered by those otherwise so vocal…
link to patentlyo.com
I appreciates the authors insight that good patent application drafting is the key to overcoming most of the 101 eligibility overreach by the CAFC. However, patent drafting is often off-shored to India where the quality of the patent applications are often less than optimal, i.e. suck sperm whale. Furthermore, 60% of the patent application seen by the USPTO are from overseas with the same quality problems as those from India. Inside counsel is going to have to have critical inventions drafted by expert prep and pros practitioners in the US for critical inventions because everything can’t be protected by trade secret law.
It would be ideal if there was a balance between 101 eligibility rejecting bad patent applications often seen in business methods that attempt to patent all commerce without overreaching into technical contributions like American Axle that went way too far in my opinion. 101 has been an issue going all the way back to Samuel Morse’s attempt to patent all communication involving EMF without any specific enablement or written description so clearly 101 is here to stay.
JR,
Please stop with the Examiner rumor mill…
“ However, patent drafting is often off-shored to India”
Pretty much been a d e @ d issue for more than fifteen years, given BIS regulations (export controls) for pretty much anything of importance.
Those restrictions have not budged — not even through the AIA changes.
If people really cared about “confusion” under 101 they’d be concerned about two things. First, there is the issue of information and logic being abstractions that are completely devoid of patentable structure but are currently shoe-horned into the utility patent system by forcing judges to pretend that there is some sort of imaginary “structure” visible only when the judge puts on his/her imaginary “abstract structure” glasses. Admitting this b.s. is the first step towards fixing it (and yes a lot of people are going to go apoplectic when it’s fixed).
Second, there is the problem of the CAFC’s creation of an “unconventional elements” loophole for allowing ineligible abstractions to be protected in a prior art context (when that prior art is “unconventional”). This was a huge mistake on the CAFC’s part and when it is fixed (by the Supreme Court, if necessary) the fix will disappoint a lot of the practitioners out there who couldn’t read a tea leaf if it was literally turned into ink and spelled out the words.
Translation: Wah, I do not like the exceptions to the Printed Matter Doctrine, nor the reality of the patent equivalence in the computing arts, so I am going to wet myself again with all of my whining.
Malcolm – your script simply hasn’t gotten any better in the seventeen and a half years that you have been depending on it.
For folks fighting through eligibility cases these days, the biggest concern is no longer unpredictability, but that the law has pushed too far against patentability.
The law is unpredictable because the Federal Circuit is inexorably expanding the scope of patent ineligible subject matter.
At the time the patent were obtained and even post-Alice, very few would think that a patent directed to a digital camera with multiple sensors and multiple lens would be patent ineligible. However, Yu v. Apple came along. Moreover, few would think that a method of tuning a reduced vibration drive shaft would be patent ineligible. However, American Axle came along. What is the next surprising decision to come along? And how long will it be before these “surprising” decisions no longer become surprising.
Although I was initially surprised at their reported high affirmance rate of eligibility decisions — on reflection it has begun to make sense.
Come on. You follow the Federal Circuit decisions as close as anyone. Sometimes you’ll have a writeup on a decision that issued the same day. The rate of affirmance should come as a surprise to no one who even marginally follows the Federal Circuit. I’m actually shocked when they don’t affirm an eligibility decision. Speaking of which, there are very few instances (if any??) in which they reverse an eligibility decision that went the patentee’s way. To do so means that the case would have been tried, the patentee prevailed, and the decision appealed.
How frequently do patentees win these days? That would make for an interesting study. How frequently (or how often) do patentees actually prevail after the District Court has rendered a final decision? I cannot remember the last time the Federal Circuit issued a decision on damages. A quick search on Google yields 2 decisions issued on February 4, 2022 — both erasing large damages awards. When was the last time that the Federal Circuit ruled for a patentee on a damages award?
With so few patents surviving the District Court these days, there is no need to clarify the law on damages.
Since then patent prosecution attorneys have substantially modified their approach to drafting patent applications in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments.
You really think that matters? I have had my hand in many, many hundreds of issued patents since Alice. I have fought (and prevailed on) on dozens and dozens and dozens of 101 rejections. However, despite all of those patents emerging from the USPTO post-Alice, my expectation is that most of them would likely be invalidated under Alice. The simple reason is that there is very few patents (even those directed to the hard mechanical arts) that could be not invalidated under 101 using the logic employed in such decisions as American Axle.
You can have language in your specification characterizing the invention as an improvement to technology, but it all it takes is a somewhat clever (really clever is not necessary) defense attorney that recharacterizes the invention as an improvement to an abstract idea and a receptive district court judge, and the patent is sunk. It is a fairly simple process. I’ve seen the courts do it many times. Take the claims, remove the technical aspects and find something that can be characterized as an abstract idea (whether it actually is or isn’t doesn’t really matter). As the Supreme Court stated in Alice, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas'” so there is almost always something abstract to be found. Declare that the improvement is directed to that abstract idea and therefore the patent is directed to an abstract idea, and then make your early-afternoon tee time at the club that afternoon. Easy peasy.
Likewise, patent litigators are wary of asserting claims that are likely to be found ineligible and so shy away from those potential case killers. The result then is that I expect to see far fewer eligibility cases in the coming years, but that will reflect in a change in practice rather than another change in the law.
No. The Courts will merely expand 101 to encompass that technologies that the litigators currently think are patent eligible.
We all know the expression “a journey of a thousand miles begins with a single step.” But why is the relevant to this discussion, one might ask? It is relevant because how the Federal Circuit applies its law regarding eligibility. They use “similar to” reasoning — e.g., these claims are similar to the claims in this other case in which they were determined to be patent ineligible. Let me provide a fanciful illustration.
A transistor is similar to a circuit. A circuit is similar to a computer chip. A computer chip is similar to a graphics card. Graphic cards have have built-in coolers. Built-in coolers are essentially refrigeration units. A home refrigerator is a refrigeration unit. A gas stove is a kitchen appliance — just like a refrigerator. I started with a transistor and ended up with a gas stove — taking a “similar to” analysis one step at a time.
What is the next step (Federal Circuit decision) that applies the “similar to” analysis and cites American Axle? What technology that heretofore was never considered to be close to being patent ineligible but is now squarely in the crosshairs of a 101 attack? I don’t know. However, I can all but guarantee that there are hundreds of patent defense litigators who are writing 12b6 motions to dismiss in patent cases and are citing American Axle and Apple v. Yu and the myriad of other recent decisions. And why not? Writing a motion to dismiss under 12b6 is pretty cheap, and there are a lot of judges out there that want nothing to do with patents or patent litigation. Get the right panel at the Federal Circuit (and there are few wrong panels at the Federal Circuit regarding patent eligibility), and there is new law that increases the scope of 101 attacks. This is the just next step, and as the years go by, there will be more and more steps taken.
The Federal Circuit has not signaled a limit as to how far they will go. The Supreme Court has long washed their hands in the matter and have no interest in limiting how far the Federal Circuit will go. Getting anything out of Congress is seemingly impossible. There is nothing to check the Federal Circuit. Consequently, they will continue down the road of expanding the scope of patent ineligibility one step at a time.
B-b-but “The Narrative” must be supported, and while Prof. Rat. will hide from direct rebuttal, enough has occurred on adjacent posts that a “I Liked His Writing” post became “necessary.”
Another question to your list: how many 101 certs to the Supreme Court have been denied?
Very good analysis.
Personally, I tell clients the best thing you can do is outline a problem, relate how your invention solves that problem, and ensure the solution is in the claims. While that helps, there is absolutely no guarantee this will work, because I can pull out many CAFC cases where the patent attorneys did that, and the cases were still deemed not patentable under Alice.
“ very few would think that a patent directed to a digital camera with multiple sensors and multiple lens would be ineligible … Moreover, few would think that a method of tuning a reduced vibration drive shaft would be ineligible ….”
Willfully deluded (putting if kindly) table-pounders and crybabies like you are the source of the confusion for our small but obnoxiously loud legion of perpetually aggrieved online patent huffers.
NOBODY is suggesting that the categories of inventions you mentioned are per se ineligible and ANY attorney who can use basic logic understands that a claim describing ANY kind of device or method can be ineligible if the claim protects ineligible subject matter in a prior art context.
But go ahead and whine away. You’ll impress your clients as you take their money and give them nothing in return.
WT: “ The Federal Circuit has not signaled a limit as to how far they will go.”
And yet patents are still being filed, granted, licensed and used to protect IP at record levels.
It’s almost as if people like WT are looking at the world from some sort of slimy pool filled with losers and grifters and they just can’t seem to climb out no matter how hard they try. Must be very frustrating to watch so many others succeed and flourish in the grown up world where eligible inventions and eligible claims are the norm and all this hand-wringing about “confusion” is properly viewed as a problem for the perpetually aggrieved online whiner crowd.
The area of unpredictability that I have seen district court litigators struggle with is giving their clients an estimated probability of success on a 101 motion, especially when the motion is at the Rule 12 stage. I look forward to reading the article, but based on the summary it seems that it basically reveals that appeals courts generally agree with district courts, but all I can do with that is tell a client that if they win or lose at the Rule 12 stage, that determination is likely to be affirmed. For some patent claims, it is still very difficult to predict what the result of the Rule 12 motion will be.
Eligibility under 101 wasn’t really an issue before Bilski/Alice/Mayo. And I turn back to comments by the Chief Justice at oral argument in Mayo, who seemed to be asking why the case wasn’t better handled under 102 & 103 if hedging risk was so well established. Why, indeed.
But the edict went out to “REJECT MORE”, and the lower courts (to say nothing of the PTAB and the examining corps, who didn’t need to be told) clearly got the message and followed suit. Unsurprisingly, these 101 subject-matter eligibility rejections are being upheld at an astonishing rate. I venture that there is little to nothing that can’t be reduced to ‘abstract idea’ + ‘known elements’.
But we still have very little in the way of guidance how to protect the inventions are clearly novel, earn billions, and insipre billions more in further research. What of the 5% reversals? Are they reversals of the few cases NOT invalidating for ineligibility? Predictability is one thing, but the idea that the patentee predictably loses (at least in certain circuits) is what led to the creation of the Federal Circuit over 40 years ago.
“ Eligibility under 101 wasn’t really an issue before Bilski/Alice/Mayo.”
Only because you weren’t paying attention. It was absolutely an issue, the claims being asserted were increasingly ridiculous, and the system would implode under the weight of the nonsense that was permitted (according to the patent maximalists) by the absurd d.o.a. decision in Diehr.
“ why the case wasn’t better handled under 102 & 103 if hedging risk was so well established”
If a claim is anticipated, by all means go after it under 102. But you must recognize that “ignoring limitations” under the so-called printed matter doctrine is nothing more than an eligibility analysis. As for the laughable assertion that “103 is better”, please explain why that is the case when the only novel subject matter in the claim is an abstraction that everyone agrees would be ineligible for parenting on its own terms.
Maybe we should all just ignore the “ooooo shiney, 101 distraction”…..
1) Alice/Mayo are so broad that no appellant court could find clear error as Alice/Mayo enable a court to find any patent claim invalid under 101.
2) The measure of unpredictability should be a survey of practitioners before the judges have decided whether to invalidate the claims under 101.
3) What is the predictability? It is not the application of law but the application of bias by the courts using overly broad cases such as Mayo/Alice. As an example, we all know that a claim that includes any business terms is a hundred times more likely to run into 101 problems. But why? There is no basis in statutory law but only judicial activism to explain this. I and others could explain how we determine what is likely to be not liked by the courts including whether the company is asserting the claims is a NPE and the D is a big corporation. This is not how our statutory judicial system is supposed to work. It is to some degree more like common law at best.
Additionally, now in the USPTO, they are starting to use 101 more in other AUs.
Additionally, I and others can easily go through the case law and show how inconsistent the case law is in regard to the underlining inventions. We can also point out clear error in journal articles such as Lemley claiming there is no structure in an information processing algorithm. Or that there is clear error in Williamson in demanding that a full method be described when the method being modified is known in the art.
It is, of course, the Zeit Geist. The courts are acting like monarchs and making up their own rules and flouting the law and facts.
Just reality.
To be clear, predictability at an appellant level does not mean that the statutory laws are being applied or that Constitution is being adhered to.
As a simple example, if the courts ruled that every time a person of color sued a white person for defamation that they always held in favor of the person of color, it would be very predictable the outcome of defamation cases. But it would not be Constitutional nor would it be applying our laws.
Here, again, the driving factor is (1) above. Once the lower court finds the claims invalid, then finding clear error is almost impossible under the Alice/Mayo framework. Any claim can be said to be directed to an abstract idea and then be merely the obvious combination of known elements particularly with KSR.
“ Any claim can be said to be directed to an abstract idea ”
Even if this were true (and it’s only true in the same way that “any color can be said to be green” is true), the test for eligibility of a claim is NOT “hey look if I squint real hard I can characterize this as abstract.”
You’ve been told this before hundreds of times, gramps. It’s you who are confused. It’s you who are the cause of the confusion.
1) eligibility is reviewed de novo, and usually less deferentially than other invalidity grounds.
2) legal practitioners have their own reasons for their stated views, and they’re usually motivated by self-interest or a desire to make their clients happy. In my experience, many patent practitioners interpret the law as they wish it was, or as it seemed to be in 2003, rather than honestly engaging with developments since then–or precedent from before 1982 for that matter. The law serves the people, not the lawyers.
3) Information itself is an abstract idea. No one can seriously dispute that. One thing we all know now, whether we like it or not, is that claims fixating on a particular type of information are going to raise 101 red flags. If the invention is technical in nature, why are your claims limited to Social Security payments, or sending information about your web browser’s toolbar, etc.?
You are incorrect on so many points. First, and foremost, patent law can only be truly understood by patent practitioners, which is why SCOTUS should stay out of it. Second, nothing is abstract. Hopes and dreams are just as patentable as widgets and doo-dads. Therefore, patents should be enforceable upon filing and injunctions should be automatic in accordance with natural law.
Rather than correct Examiner Kyle’s (many) misinformed opinions, NS II jumps in with his coy (not even raising to a level of snarky) wink-wink, nudge nudge patent applicants really want too much nonsense.
Thank you for the Friday laughs, NS.
Hopes and dreams are just as patentable as widgets and doo-dads.
Can you point me to the “Hopes and dreams” app in the Apple store?
What did the Supreme Court say? Oh, here it is: “[A]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'”
Truly abstract ideas should not be patentable. However, when an improved digital camera with multiple sensors and multiple lens is deemed patent ineligible because it is directed to an abstract idea, then the system is broken.
Try to engage in an honest debate. An honest debate recognizes that the so-called ‘patent maximinalists’ aren’t looking to patent your strawman characterization of abstract ideas (e.g., “hopes and dreams”). Rather, most want novel/nonobvious products/services in commerce to be patentable.
The Supreme Court (and the Federal Circuit) has jumped the shark by recharacterizing the prohibition on the patenting of “abstract ideas” to the patenting of products/services that are directed to abstract ideas. As the Supreme Court admitted, nearly everything has some tie to patent ineligible subject matter (abstract idea, natural law, natural phenomena, whatever). As such, we are left trying to figure out what is meant using the nebulous standard of being “directed to” an abstract idea.
There are certain groups that want to eliminate patents on a certain subset(s) of technology. The motivation for most is that they (or those that they represent) want to infringe upon the patents existing in that technology space. In so doing, they want case law developed by the Courts that cull out these subset(s) of technology from being patent eligible. However, what has happened is that the ones advocating for and/or crafting the case law don’t realize that their case law isn’t as narrowly tailored as they think. Perhaps they don’t have the experience with various different technologies to know how the case law will impact other subsets of technology not intended to be targeted. Maybe they don’t care because their ultimate goal is to weak patent protection across the board.
Regardless, the end result is that case law developed to supposed get rid of these so-called “bad” patents in bad technology areas have a much wider impact. As I wrote elsewhere, there are few technologies that aren’t subject to attack based upon the 101 case law that is out there.
This is a wonderful age to be an infringer in the United States. You really have to screw up to be liable for patent infringement. People like Jason, analyzing the situation using simplistic assumptions and having little real world experience, don’t understand that.
Plus One….
billion gagillion fafillion shabadabalo shabadamillion shabaling shabalomillion yen.
link to youtube.com
Anything performed on/by a computer is abstract. Then, it’s a confusing morass of rules.
To me, this is a computer-implemented mathematical concept:
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
Yet, this was held to be valid under 101.
Meanwhile, this claims an actual physical device, a camera:
An improved digital camera comprising:
a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
two lenses, each being mounted in front of one of said two image sensors;
said first image sensor producing a first image and said second image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.
Holding? Not patentable.
It’s a mess.
Yu (digital camera) vs. McRo (Animated video lip synching). Who would have predicted BOTH results correctly?
“ Yu (digital camera) vs. McRo (Animated video lip synching). Who would have predicted BOTH results correctly?”
Lots of people. The CAFC gets it wrong occasionally. That doesn’t mean that the people making the predictions are “confused.” It means that the CAFC is “confused.”
It happens. I mean look at the CAFC’s decision in Mayo. The majority was completely out to lunch.
The McRo decision was discussed here:
link to patentlyo.com
Here is a quote from someone named MM:
“This ridiculous CAFC panel, completely wallowing in their own b ull shirt:”
Another quote from MM:
“The CAFC panel here has chucked this fundamental proposition out the door.”
This MM person (whoever could that be?) didn’t seem to have predicted the result in McRo.
McRo was decided incorrectly and is an incomprehensible mess that has been mocked from day zero. THAT was and is plain as paint. Anybody who relies on McRo is a failure as an attorney.
Also: there was no invention in the claims at issue in McRo. They were invalidated under 103 so there is no “invention” there to defend (and there never was, if you actually look at the claims and understand how animation and sound work).
Looking in from outside the jurisdiction, what catches my eye is the observation that drafters are learning to write their cases :
“…in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments.”
Based on more than 40 years of observation of such drafting, under the European Patent Convention, I am sure it will result in a very evident “swing” to more contributions to the useful arts being found eligible for the grant of a US patent. Given a clear steer, drafters are intelligent enough to write what works and gets the client protection commensurate with what they have contributed to the useful arts. Over the years, they get ever more accomplished at it.
Here in Europe, I don’t see any pendulum swings.
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