With the Supreme Court’s most recent foray into the patent-eligibility world in Alice Corp. v. CLS Bank International, we now have a complete and utter disaster as to what data processing claims can (or more unfortunately cannot) survive scrutiny by Our Judicial Mount Olympus under 35 U.S.C. § 101. I once had respect for Justice Thomas’ view on patent law jurisprudence, having considered his substandard opinion in Myriad on the patent-eligibility of certain “isolated” DNA claims to be an “isolated” aberration. But having now read his mind-boggling Opinion for the Court in Alice Corp., I’ve now thrown my previously “cheery” view of Thomas’ understanding of patent law jurisprudence completely into the toilet. I have even less kind words to say about the three Justices that signed onto Justice Sotomayor’s disingenuous concurring opinion that accepts retired Justice Steven’s equally disingenuous suggestion in Bilski that 35 U.S.C. § 273 (in which Congress acknowledged implicitly, if not explicitly the patent-eligibility of “business methods” under 35 U.S.C. § 101) is a mere “red herring.” See Section 273 is NOT a Red Herring: Steven’s Disingenuous Concurrence in Bilski.
The Supreme Court’s decision in Alice Corp. operates from the view that “ignorance is bliss” when it come to the patent statutes, as well science and technology. I don’t share that view and never will. So in the format that I began with in shredding Justice Alito’s “comedic” opinion in Limelight Networks, here are my “ignorance is not bliss” candidates for Alice Corp., in all their ugliness.
Ignorance Is Not Bliss Point No. 1
Comingling the Separate Patent Statutes on Patent-Eligibility and Patentability.
Justice Thomas’ Opinion for the Court relies upon (unfortunately) the “framework” of Mayo Collaborative Services v. Prometheus Laboratories, Inc. for separating patent-ineligible “claims to laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Thomas describes this “framework” as a two-part analysis: (1) “determine whether the claims at issue are directed to one of those patent-ineligible concepts”; and (2) “search for the ‘inventive concept’ —i.e., “an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” But this second part of the analysis (i.e., search for the “inventive concept”) essentially commingles patent-eligibility under 35 U.S.C. § 101 with patentability that includes novelty under 35 U.S.C. § 102, as well as obviousness under 35 U.S.C. § 103. In other words, the feared comingling of patent-eligibility with patentability when Justice Breyer announced the term “inventive concept” in Mayo in judging claimed methods under 35 U.S.C. § 101 is now (regrettably) fully bloomed.
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Ignorance Is Not Bliss Point No. 2
No Adherence to the Fundamental Principle of Diehr that the Claimed Invention Must Be “Considered as a Whole.”
In footnote 3 of the Opinion of the Court, Thomas makes the following statement: “Because the approach we made explicit in Mayo considers all claim elements, both individually and in combination, it is consistent with the general rule that patent claims “must be considered as a whole,” (citing to Diamond v. Diehr). That statement is astonishing because it is utterly nonsensical. By separating out the alleged “abstract idea” in the first step of the analytical “framework,” Thomas, in Alice Corp. continues the disingenuous failure of Mayo to adhere to this fundamental principle of Diehr that “[i]t is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” So much for following binding SCOTUS precedent by Our Judicial Mount Olympus.
Ignorance Is Not Bliss Point No. 3
Still No Definition Yet of What Is/Is Not an “Abstract Idea.”
Near the end of part A of the Opinion of the Court, Thomas makes the following statement: “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case. Put differently, what Thomas essentially does in Alice Corp. (as Justice Kennedy did before in Bilski) is “punt” on providing any meaningful definition of what is (and more importantly is not) an “abstract idea.” So much for providing us “mere mortals” with any “framework” of how to distinguish “abstract” from “non-abstract” ideas other than “we know it when we see it, but we in the Ivory Tower are not going to tell you mere mortals’ what our ‘secret’ is for so determining.”
Ignorance Is Not Bliss Point No. 4
Claims Will Be Deemed Patent-Ineligible Even Though Implemented by a “Machine,” i.e., a Computer.
At page 11 of the Opinion of the Court, Thomas states that “[t]he introduction of a computer into claims does not alter the analysis of Mayo step two.” While such “introduction” may not “alter the analysis of Mayo step two,” that so called “analysis” is fundamentally flawed in that a computer is nonetheless a machine, and machines are definitely within the statutory classes of subject matter denoted in 35 U.S.C. § 101. While the process steps implemented on such computers may be known (i.e., may lack novelty under 35 U.S.C. § 102 or may be obvious under 35 U.S.C. § 103), that process implemented on the computer is nonetheless a machine implemented process when considered “as a whole” as mandated by Diehr. That Gottschalk v. Benson and Parker v. Flook (cited by Thomas to support this quoted statement) say otherwise simply ignores the fundamental fact that computers ARE patent-eligible machines. Accordingly, processes implemented on such computers do not change those computers (so altered) into patent-ineligible machines.
Ignorance Is Not Bliss Point No. 5
Concurring Opinion Says Congress’ Implicit/Express Intent on What Is Patent-Eligible May Be Ignored.
The most startling statement in Alice Corp. occurs in Justice Sotomayor’s concurring opinion (joined by Justice Ginsburg and Breyer): “I adhere to the view that any ‘claim that merely describes a method of doing business does not qualify as a ‘process’ under §101,’” citing retired Justice Steven’s concurring opinion in Bilski. In other words, these three Justices have bought “hook, line, and sinker” Steven’s disingenuous view that Congress’ at least implicit, if not explicit acknowledgement in 35 U.S.C. § 273 that “business methods” are patent-eligible subject matter under 35 U.S.C. § 101 “is a red herring.” So much for these three Justices giving anymore than “lip service” to the expressed will and intent of Congress.
Our Judicial Mount Olympus may subscribe in Alice Corp. to the popular belief that “ignorance” of science, computer technology (as well as the patent statutes) “is bliss.” But such “ignorance” is mucking up our patent law jurisprudence, as well as “not so blissfully” impeding the creative spirit of our innovative Davids, our real hope for job growth in America. And that’s no “red herring,” Justices Sotomayor, Ginsburg, and Breyer!
*© 2014 Eric W. Guttag. Posted July 23, 2014 on IPWatchdog.com