By Chris Holman
I enjoyed reading the recent article by Professors Rantanen and Datzov, and was not surprised by their conclusion that the courts are generally applying the Supreme Court’s patent eligibility precedent in a relatively predictable manner. I have not conducted such a systematic review of patent eligibility decisions, but over the years I have read quite a few of them, and for some time I have felt that I can usually predict which way the court will go in deciding these cases.
The two-part Alice/Mayo framework for assessing the patent eligibility of method claims, which formally involves determining whether a patent claim is “directed towards” one of the judicial exceptions (law of nature, natural phenomenon, or abstract idea), and if so, to determine whether there is “enough” additional “inventive concept” to render the claim a patent eligible “application” of that judicial exception, seems quite indeterminate on its face. But Alice provides some important clarifying language:
[Petitioner’s method claims do not] purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not “enough ” to transform an abstract idea into a patent-eligible invention.
The message I have taken from this paragraph is that technological innovations, including software that “improve[s] the functioning of [a] computer,” generally remain patent eligible. And I have found that, when reading judicial decisions addressing the patent eligibility of method claims relating to computers and computer programs , if it looks and feels like the purported innovation is technological in nature, the claim is likely to be upheld. On the other hand, if the claimed method feels less technological, e.g., a method of playing bingo on the Internet, or a “business method,” I expect it to be struck down. Occasionally I am surprised by a decision, but from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.
The “natural phenomena” and “laws of nature” exceptions tend to be invoked in the context of life science innovations, and it seems to me that most method claims arising out of the life sciences will be deemed patent eligible unless the court deems it to be directed towards a “diagnostic method,” i.e., an analytical method based on the discovery of a correlation between a biomarker and some clinically significant information, e.g., a genetic sequence and the likelihood of developing cancer, or a chemical metabolite and the optimal dosage of a drug. If a claimed method relating to the life sciences can plausibly be characterized as something other than a diagnostic claim, e.g., a method of preparing some sort of biological product, or treating a disease, etc., it is generally going to be found patent eligible. But if the court concludes that it is a diagnostic method, it is going down.
In the Federal Circuit’s decision denying en banc rehearing of Athena Diagnostics, all of the judges on the Federal Circuit seemed to agree that, under the court’s current interpretation of Mayo, diagnostic methods are essentially patent ineligible per se. They also seem to agree that this is an unfortunate state of affairs, given the tremendous medical benefits that innovative diagnostic methods can provide, as exemplified by the claims struck down in Athena Diagnostics. The major split revealed by the various opinions dissenting and concurring with the court’s en banc decision to deny rehearing is that a majority of the judges on the Federal Circuit believe that their hands are tied by Supreme Court precedent, particularly Mayo, while a significant number of dissenting judges disagreed, arguing that the Federal Circuit had unnecessarily tied its own hands with respect to diagnostic methods, and that, properly interpreted, Mayo left open the possibility of finding at least some diagnostic methods patent eligible.
Some of the Federal Circuit judges seemed to voice approval for the way in which Alice has been deployed in the abstract idea context to invalidate claims directed towards business methods and other non-technological inventions. On the other hand, they voiced concern that in the laws of nature/natural phenomena context Mayo was resulting in the invalidation of meritorious diagnostic method claims. In any event, when it comes to the life sciences and method claims, the Federal Circuit seems inclined to interpret Mayo relatively narrowly, and uphold the eligibility of method claims, so long as the claimed invention can plausibly be characterized as something other than a diagnostic method.
The PTAB gets away with making a conclusion that a claim is directed to an abstract concept without providing any sort of actual evidence to support that conclusion other than a string of self-serving conclusions leading up to the ultimate conclusion of abstractness.
False. What happens 99% of the time is that both the PTO and the applicant are aware that the prior art discloses all of the non-abstract “technology” (and its uses in the context of information processing) and the only novel element in the claim is an abstraction (e.g., information content or logic). The PTO points out these facts and the applicant pounds the table, pretends not to understand, and recites bad law and basement-level blog commentary as a “response”.
When that doesn’t work, the applicant goes to the same blog where they got the bad advice and complains about how unfair life is, nobody understands “how innovation works”, communists have taken over, the PTO is “too woke”, etc., etc.
Thank you for proving my point.
PPO,
Malcolm either can not or will not (or both) recognize that he proves your point.
He is consumed with his own cognitive-dissonance driven apoplectic emotional rants, replete with strawmen, false statements and disregard of reality – while projecting that the ‘fault’ is merely that of others (“etc., etc.“).
Pardon Potential re(P)eat due to filter…
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November 27, 2023 at 7:51 am
PPO,
Malcolm either can not or will not (or both) recognize that he proves your point.
He is consumed with his own cognitive-dissonance driven apoplectic emotional rants, replete with strawmen, false statements and disregard of reality – while projecting that the ‘fault’ is merely that of others (“etc., etc.“).
[F]or some time I have felt that I can usually predict which way the court will go in deciding these cases… Occasionally I am surprised by a decision, but from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.
Three brief responses:
1) I agree with this. Moreover, I expect that most practitioners would also agree, if they are being honest. If a client came to you with a list of 100 patents, and said “I want opinion of counsel on each of these as to whether they will survive a §101 challenge. I will pay you $2000 for each opinion that turns out correct, but I will deduct $2000 from the payment for each opinion that turns out incorrect,” most practitioners would take that deal, secure in the expectation that they will come out well ahead on that deal.
2) Back in 2015 & 2016—in the immediate aftermath of Mayo and Alice—§101 law genuinely was unpredictable. In the decade since Mayo, however, there have been a lot more clarifying precedents, and the unpredictability has correspondingly diminished. A lot of people who complain about the “unpredictability” of §101 are like the folks who imagine NYC to be violent and dangerous. They used to be correct, but not anymore.
3) To say that §101 law is fairly predictable any more is not to say that the law is actually clear on this point. There is still quite a mess of irresolvably contradictory precedents in this area. It is easy enough by now to anticipate which relevant and controlling precedents will be applied and which ignored, so the law is no longer unpredictable. For the sake of rule-of-law concerns, however, it would be good for the CAFC to take some cases en banc and honestly efface the disregarded precedents from the rolls.
I’d like to see a similar discussion of the patent eligibility of software.
Having a metric and comparing different sets of data using the same metric say something about what is being measured, which in this case is uncertainty. However, that does not mean that the metric truly captures what is and what is not uncertain. For example, being able to advise clients that this region or these types of inventions, the law is uncertain, as long as the uncertainty region is well defined, the used metric will likely consider the caselaw in question reasonably certain. But there could still be a large uncertainty region.
“ For example, being able to advise clients that this region or these types of inventions, the law is uncertain, as long as the uncertainty region is well defined, the used metric will likely consider the caselaw in question reasonably certain.”
Should this sort of logical exercise be eligible for patenting, in your opinion? Why or why not? Should the answer depend on whether the logical exercise is carried out “on a computer”?
Not sure why people insist on dancing around the issue, other than that it affects the pocketbooks of a tiny, tiny, tiny fraction of the population who is directly involved in trying to obtain patents on logic methods.
Pardon Potential re(P)eat…
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November 21, 2023 at 4:31 pm
“tiny, tiny, tiny fraction”
It’s 1984 folks.
Malcolm, if you want to recognize what “tiny tiny fraction” actually means (as opposed to well over a majority), check out the new Jepson Claim Format post.
Yikes – hyper filter (possible double repeat…)
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November 21, 2023 at 10:12 am
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November 21, 2023 at 10:11 am
Let’s try again (filter nabbed)
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November 21, 2023 at 10:11 am
Meh,
Another thread that falls to the “oooh shiny” distractions.
Further (see link to patentlyo.com ), Holman is biotech-pharma guy, and — similar to Greg DeLassus — shows an uncanny LACK of appreciation of innovation in anything related to the computing arts (more than a bit of the ‘ol Divide and Conquer “stakeholders-can-co-opt” crowd.
In all fairness, I will note that Holman is NOT your typical Ivory Towerist – his CV includes both technical (real world) and practitioner experience, even if non-computing arts related.
Meh,
Another thread that falls to the “oooh shiny” distractions.
Further (see link to patentlyo.com ), Holman is biotech-pharma guy, and — similar to Greg DeLassus — shows an uncanny LACK of appreciation of innovation in anything related to the computing arts (more than a bit of the ‘ol Divide and Conquer “stakeholders-can-co-opt“crowd.
Imagine the following legal regime: the lower court must toss a coin to decide, and the appeals court must uphold the lower court ruling. Under the paper’s logic, this regime is 100% predictable because the lower court judge is never overturned. But is the ultimate outcome predictable? The original paper either has an an axe to grind, or is incredibly stupid, or both.
A narrative fits, it does.
Abstract Ideas are a species of information- but not merely information. An abstraction requires a human mind to host it. No human mind, no abstraction.
Natural Laws, too, are a species of information.
We aren’t supposed to be patenting new and useful information, are we?
Wrong! Information takes time, energy, and effort, which is the standard for patentability that was always intended by the founding fathers who sadly lacked the technical expertise to articulate it this way. If you can write it, you can patent it.
and yet again, there are not claims to information, per se – so your pet theory falls woefully short.
As to “No human mind, no abstraction.” – this too falls woefully short in that you are STILL not understanding utility in the patent sense.
In the patent sense ALL utility is – necessarily geared to what the human mind would recognize.
This is precisely why the simple reply to you of “traffic lights” highlights how deep in the weeds you are.
CH: “ if the court concludes that it is a diagnostic method, it is going down.”
It’s important to read the entire paragraph to understand this statement is generally true ONLY for the narrow definition of “diagnostic claims” provided the author: “an analytical method based on the discovery of a correlation between a biomarker and some clinically significant information.”
These claims protect nothing more than (1) measuring a value that is correlated with a thing of interest (allegedly a correlation that was first “discovered” by the “inventor”, like how the tensibility of your toe hair means you are more likely to buy a car from a dealer with a cute puppy sign in his window) and (2) use the knowledge acquired by measuring the value. Note that neither the measurement method or the subsequent “use” of the obtained value is inventive — otherwise those steps could be entitled to valid patents on their own terms (assuming they aren’t ineligible as abstractions — step 2 of the claim in Prometheus famously required only thinking about what ought to be done!).
Lastly I’ll note that it is BEYOND ABSURD to believe that handing out patents on “useful correlations” is going to improve anything except the size of some horrible person’s pockets. People who fall for that nonsense in 2023 should be ashamed of themselves. Grow up already. Look around.
Your comment reminded me of other news this week, that scientists have solved a mystery at least two thousand years old, already well-appreciated by the hard-drinking upper classes of ancient Rome, namely what is it in red wine (and only red wine) that gives 1% of its drinkers a severe head-ache within a half-hour of glugging the stuff. An elusive….wait for it….correlation…… has finally, after all these years, been unearthed.
Are those scientists going to patent their correlation, between molecule X and DNA sequence found in that 1% of drinkers? First they need to invent a non-obvious use of their correlation, right? I wonder what it will be. X-free red wine specially for the 1%, I suppose.
Your main point is a strong one, I think. Diagnostic methods in general are still eminently patentable. It’s just the “We’ve found a correlation” ones that are not.
This is not a pipe.
The map is not the land.
Phlogiston, eather, and the like…
These are not new rebuttals to you, MaxDrei.
And I have found that, when reading judicial decisions addressing the patent eligibility of method claims relating to computers and computer programs , if it looks and feels like the purported innovation is technological in nature, the claim is likely to be upheld.
What does it mean to be technological in nature?
The claims in Yu v. Apple were directed to a digital camera with multiple sensors and multiple lens. How is that not technological in nature? American Axle was about tuning a drive shaft. How is that not technological in nature? In Chargepoint, a patent involving network-controlled electric vehicle charging stations were declared to be patent ineligible. How is that not technological in nature? Two-Way Media was about routing data data streams (i.e., stream of packets). How is that not technological in nature?
from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.
Then you aren’t looking hard enough. Sanderling Management was about distributing programming to mobile devices based on the device’s GPS location. How is that not technological in nature?
Hawk Technology Systems involved a video surveillance system in which images are digitized and transmitted using a “progressive video format.” As characterized by the Federal Circuit, “[t]he court thus found that the ‘091 patent is directed to an abstract idea: ‘a method for storing and displaying video.'” Methods for storing and displaying video ARE technology — not abstract ideas. If a district court can assert that storing and displaying video are an abstract idea, what is to stop them from declaring combustion engines to be an abstract idea? Or a specialized transistor to be an abstract idea? Both rely upon natural laws (see American Axle). As I wrote elsewhere, it is trivial for the Court to identify anything in a claim as being an abstract idea — even if it isn’t. There are ZERO standards set forth by the Federal Circuit (or Supreme Court) as to what qualifies as an “abstract idea.”
and for some time I have felt that I can usually predict which way the court will go in deciding these cases
Me too. However, I don’t even need to read the case. I just predict that the Court rules the claim to be patent ineligible and I’m correct the vast majority of the times.
“digital camera with multiple sensors and multiple lens. How is that not technological in nature?”
As of the critical date, what was “innovative” about this claim beyond the concept of a camera with multiple lenses and multiple sensors and — omg — a powerful computer brain?
None of these cases say that “a digital camera is not an example of technology.” None of them. You’re beating on a straw man argument that was already beat to death many years ago. Why do you do that?
WT: “If a district court can assert that storing and displaying video are an abstract idea, what is to stop them from declaring that a Wookie would not want to live on Endor with the Ewoks? That doesn’t make sense. For the same reason, the term ‘abstract’ is used in the same opinion with the term ‘technology’, the opinion is worthless.”
Fixed to emphasize the seriousness of your argument.
Thank you for this!
I don’t think that either of you grok the irony…
And, thank you for your irony illustration!
And, thank you for your not grok illustration!
Your welcome. I note that I omitted the word “if” after the phrase “for the same reason,” in the last sentence.
Not bad for a short readable summary of Fed. Cir. views on the three very different types of unpatentable subject matter* defenses created in several different Supreme Court decisions over the years – their judicial exceptions for laws of nature, natural phenomenon and abstract ideas that we are all stuck with. [But the latter, since Alice et al, has affected vastly more patent suits.]
His observation that “for some time I have felt that I can usually predict which way the court will go in deciding these cases” is not unique, but, not surprisingly, very unpopular with those who have lost lawsuits on this basis, even with a fairly common relatively low cost quick front-end 12(b)(6) motion decision.
…yeah, I will let that other person pipe in with how the “airly common relatively low cost quick front-end 12(b)(6) motion decision[s].” are in legal error….
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