Judge Lourie, who was joined by Judges Dyk, Prost, Reyna and Wallach, in CLS Bank v. Alice Corp. wrote: “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”
One way that Judges probe generalized statements is to look for the boundaries to test the logic. If the statement cannot be stretched to apply to even similar scenarios then the logic of the statement is questioned and believed to be faulty and self-serving. So let’s see if the above statement can withstand even modest scrutiny.
The statement above, by any fair reading, says that if the core of the invention is something that a human could do but slower then the subject matter is patent ineligible. So what about robots? Robots are more efficient, stronger and faster than humans, but a human can do what a robot can do. So are robots patentable?
The easy answer is — of course robots are patentable because they are a device. But that can’t be true based on the logic of Judges Lourie, Dyk, Prost, Reyna and Wallach. Furthermore, in Bilski v. Kappos 8 out of the 9 Justices of the Supreme Court determined that while the test presented in State Street Bank was the wrong test, the patent claims there were patent eligible because they cover a machine. The machine claimed there was a data processing system. But Judges Lourie, Dyk, Prost, Reyna and Wallach said that systems are not patent eligible? So could that mean that certain machines are not patent eligible if humans could do the task albeit more slowly?
This is the slippery slope of unintended consequences is exactly why Judges are supposed to decide the issues in front of them and nothing more.
The systems claims in the Alice patents cover a device as well. These Judges even recognized that it was not appropriate to lump systems claims together with the other claims that more purely claim software, but they did it anyway. Judge Lourie acknowledged:
For some systems claims, the abstract ideas exception may indeed be plainly inapplicable, and such claims will face little difficulty passing through the §101 filter.
So the fact that the claim specifically defines a device means nothing apparently. These Judges apparently want to evaluate what the invention really is, not what is being claimed. The Canadian Patent Office has recently issued guidance to its patent examiners along the same line, telling examiners that they need to engage in a purposive construction prior to evaluating whether there is patentable subject matter. In other words, figure out what the invention is really is before determining whether to issue the claims.
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Why have claims if the claims don’t matter. Essentially Judge Lourie, and the Canadian Patent Office too, are saying ignore the claims and read the specification to determine what the innovation is and then without regard to the language of the claims make your determination. Under this viewpoint claims are simply irrelevant. Yet we know that claims are not irrelevant, and such a view is directly contrary to the Patent Act itself. Ignoring claims is utterly ridiculous given inventions are not patentable. Patent claims are supposed to be evaluating NOT the entirety of the invention. The sine quo non of patents are the claims. It is black letter law that the claims define the exclusive right granted. Ignoring the claims shows reckless disregard for the well established law and is nothing short of judicial activism.
But this all begs the question about robots. How about this method of using a robot in an agricultural setting, which comes from U.S. Patent No. 8,381,501. Certainly the Founding Fathers, who were by and large farmers leading a nation of farmers, would have considered agricultural advances extremely significant. The fact that you could engage in farming faster and more efficiently certainly would have been considered worth of patent protection. But let’s look at the claim of the ’501 patent to see if this continues to exhibit patent eligible subject matter under the view of Judge Lourie et al. The ’501 patent claims:
A method for using an agricultural robot system comprising: entering a field having plants with a scout robot; approaching a plant with said scout robot wherein said plant comprises agricultural elements including agricultural elements to be harvested with a worker robot; logging coordinates of said scout robot by said scout robot; mapping a location of at least one agricultural element comprising branches or leaves or fruits or vegetables within said plant by said scout robot to produce a map; continuing said approaching, said logging and said mapping until at least a plurality of said plants in said field have been mapped; wherein said mapping said location by said scout robot occurs without performing an agricultural operation that transforms or physically alters said agricultural elements and without harvesting said agricultural elements to be harvested of said plant within said field; transmitting said map from said scout robot to said worker robot; creating an action plan from said map to optimize agricultural operations by said worker robot at a later time wherein the action plan is created by said worker robot or by a server, wherein said action plan includes optimized robot arm motion paths of robot arms coupled with said worker robot; moving said worker robot near said plant after said scout robot leaves said plant; performing an agricultural operation that transforms or physically alters, or harvesting, said agricultural element or said agricultural element to be harvested associated with said plant by said worker robot using said action plan.
Well, if Judges Lourie, Dyk, Prost, Reyna and Wallach get their hands on that claim it should be gone! After all, the robot in this claim is just doing what a human could do.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.