Editorial Note: This article is a companion article to Software Patents are Only as Dead as Schrödinger’s Cat, which was published on Monday, October 6, 2014.
Although the Supreme Court in Alice declined to provide an express definition of “abstract idea,” the opinion is packed with evidence that the Court intended for the term “abstract idea” to apply not to any “abstract idea” in the colloquial sense, but only more specifically to abstract ideas that are fundamental practices long prevalent in their fields. Furthermore, although the Court did not provide any direct guidance regarding how “long” a practice must be in use to be “fundamental” and “long prevalent,” the examples that it used have been in use for hundreds of years, if not longer. To put it into everyday language, the Supreme Court seems to think that an idea is only a patent ineligible abstract idea if it is really, really old and well-established.
Although I will leave it as an exercise for the reader to locate each and every bit of support for this interpretation of “abstract idea” in the Alice opinion, the following are representative:
- Citing the Supreme Court’s previous decision in Bilski: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” Continuing: “‘The concept of hedging’ as recited by the claims in suit [in Bilski] was therefore a patent-ineligible ‘abstract idea, just like the algorithms at issue in Benson and Flook.’” The “therefore” in this passage indicates that the Supreme Court is asserting that it is the “long prevalence” of hedging which makes it an abstract idea. (The concept of a “hedge” as a mechanism for insuring oneself against a loss arose at least as long ago as the 1670s.)
- “Like the risk hedging in Bilski, the concept of intermediated settlement is ‘‘a fundamental economic practice long prevalent in our system of commerce.’’” (As an example, banknotes were first issued in Sweden in 1861, and were preceded by promissory notes—that used an early form of “intermediated settlement”—used by the Tang Dynasty as far back as the 7th)
- “The use of a third-party intermediary… is also a building block of the modern economy [and ancient economies]. … Thus, intermediated settlement, like hedging, is an ‘abstract idea’ beyond the scope of § 101.” Again, the Court’s use of “thus” here indicates that the Court infers intermediate settlement’s “abstract idea” status from the fact that it is a “building block of the modern economy.”
In short, although the Court did not provide a definition of “abstract idea,” its reasoning implies that it intended to limit the concept of “abstract ideas” to those concepts which are fundamental and long prevalent, possibly to concepts which have been well-known and extensively used for hundreds of years. An even more narrow, but very reasonable, interpretation of Alice, given the opinion’s strong emphasis on the risk hedging claims in Bilski, the “intermediated settlement” concept allegedly embodied in the claims at issue in Alice, and the repeated references to “economic practices,” “finance class,” “commerce,” and “the modern economy,” is that the Court intended for “abstract ideas” to be limited primarily or entirely to financial methods.
In light of this, an applicant faced with an Alice-based rejection that defines an abstract idea relatively narrowly as a concept that is relatively new and/or confined to a relatively specific technological field should argue that such an alleged abstract idea is not an “abstract idea” at all within the meaning of the Alice opinion. For example, if a rejection defines an abstract idea as a concept of relatively recent origin—by which I mean a concept that originated within the last 50 years or even more—such as automatic speech recognition, public key encryption, or online social networking, the applicant should argue that such an alleged abstract idea is not an “abstract idea” within the meaning of Alice because it is not a long-prevalent and fundamental practice, no matter how widespread, in comparison to the abstract ideas of risk-hedging and intermediated settlement relied upon by the Alice court, which have been in widespread use for many centuries throughout the world. For bonus points, argue that the examiner’s alleged abstract idea is not related to commerce or finance and therefore is not an “abstract idea” according to Alice.
In Response to a Broadly Defined Abstract Idea, Argue that the Claims Go Beyond Merely Reciting the Alleged Abstract Idea and Providing an Instruction to “Apply It”
Recall that, according to the Alice two step test, even if a claim is directed to an abstract idea, the claim is only patent ineligible if the claim elements fail to recite “significantly more” than the abstract idea, such that the claim as a whole merely recites the abstract idea and then merely provides an instruction to apply the abstract idea. Therefore, if an examiner defines the alleged abstract idea relatively abstractly, the applicant should argue that the claim is directed to significantly more than the alleged abstract idea, such as by pointing to express limitations (e.g., method steps) in the rejected claims which go beyond merely providing an instruction to apply the alleged abstract idea. For example, if the examiner defines the abstract idea in just a few words, and the claim includes several detailed method steps which cannot be inferred from the examiner’s definition of the abstract idea, this fact should be used in support of an argument that the claim does more than merely recite an abstract idea and provide an instruction to “apply it.”
The Alice Court’s treatment of Diamond v. Diehr is instructive in this regard. According to the Alice opinion, even though the claims in Diehr recited an abstract idea in the form of a well-known mathematical equation, the additional steps of feeding temperature measurements into a computer and then using the computer to repeatedly apply the formula to calculate the remaining cure time inside a rubber mold was sufficient to transform the patent ineligible formula into a patent eligible application of the formula. The Diehr example demonstrates that the “significantly more” requirement need not require much more than input of data and performance of repeated calculation of that data by a computer to transform a patent ineligible abstract idea into a patent eligible application of that idea. Many computer-related claims should satisfy the second step of the Alice test even more easily than the Diehr claims, if the Alice test is applied accurately and fairly.
A Claim Reciting a Generic Computer Implementation is not Patent Ineligible Unless the Claim Otherwise Fails the Alice Test
Perhaps the most significant collective misinterpretation of Alice is the notion that any claim which recites a method in terms of a generic computer implementation (e.g., a method performed by a generic computer processor and/or memory) is necessarily patent ineligible. Although many patent examiners seem to be issuing rejections based on this interpretation, the language of the Alice decision itself makes clear that this interpretation is not correct.
To understand why Alice does not hold that claims reciting generic computer implementations are inherently patent ineligible, it is useful to analyze carefully passages in the Alice opinion which might seem at first glance to imply that all claims must recite more than a generic computer implementation to be patent eligible, such as the following: “We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-ineligible invention.”
This passage does not state that any claim that recites a generic computer implementation necessarily is patent ineligible, but only that if a claim has been determined to be drawn to an “abstract idea” as that term is used in the Alice opinion, then that particular claim cannot be made to be patent eligible merely by reciting a generic computer implementation in it.
Therefore, if a particular claim is not drawn to an “abstract idea” as that term is used in Alice—such as if the claim is not drawn to a fundamental and longstanding practice—then the Alice inquiry ends and the claim is not patent ineligible according to Alice, whether or not the claim recites a generic computer implementation. In other words, if a claim is not drawn to an “abstract idea” as that term is used in Alice, then the Alice test does not deem the claim to be patent ineligible—period. Nothing in the passage above (or anywhere else in Alice) implies that the presence of a generic computer implementation in such a claim would make the claim be patent ineligible. Therefore, adding a generic computer implementation to such a claim would result in a claim that both recites a generic computer implementation and which is patent eligible under Alice. As a result, Alice-based rejections which reject claims on the mere basis that the claim does not include any implementation details other than generic computer hardware (such as a generic processor and/or memory) are incorrect.
All of the other references in the Alice decision to generic computer implementations support the same conclusion. For example, the Alice Court’s conclusion that the particular claims at issue in Alice, “which merely require generic computer implementation, fail to transform [the] abstract idea of [intermediated settlement] into a patent-eligible invention” merely states that adding a generic computer implementation to a claim that has been determined to recite an “abstract idea” within the meaning of Alice cannot by itself make that abstract idea patent eligible, not that any claim which recites a generic computer implementation—even claims which are not drawn to an “abstract idea” within the meaning of Alice—necessarily are patent ineligible.
Nothing in any of these passages drawn from the decision removes or weakens the examiner’s burden to prove that a rejected claim is drawn to an “abstract idea” within the meaning of Alice. Any applicant faced with a rejection which asserts that a claim is patent ineligible merely because it recites a generic computer implementation should respond by pointing out that nothing in Alice announces a per se patent eligibility exclusion for claims reciting a generic computer implementation, and refocus the examiner on the fundamental two part requirement established by Alice that the examiner sustain the burden of proving that the claim is drawn to an “abstract idea” within the meaning of Alice and that the claim is not directed to significantly more than that abstract idea. The Alice Court’s reaffirmation of the patent eligibility of the claims in Diehr demonstrates that the “significantly more” requirement can be satisfied by generic computer hardware performing programmed method steps, thereby reinforcing the conclusion that the mere presence of a generic computer implementation in a claim does not necessarily render it patent ineligible.
Mix and Match: Your Mileage May Vary
The list of potential arguments contained in this article merely represents a starting point. Careful reading of the Alice decision certainly will reveal additional bases for traversing rejections under Alice. For example, Professor Donald Chisum has suggested that claims which are directed to a solution of a technological problem are not patent ineligible under Alice.
Furthermore, and it should go without saying that, any particular argument suggested herein may or may not be applicable to a particular claim rejection, and may or may not succeed in any particular case. My goal in presenting these arguments in “playbook” form is to make them available and ready for use, if and when applicable, with tailoring to the particular rejection at hand, and after due consideration based on the facts of each case, with an understanding that some of the arguments may not succeed all of the time, but with the intent of maximizing the extent to which the patent applicant community as a whole can encourage the USPTO to satisfy its burden of proof under Alice to the greatest extent possible in each and every patent application rejected by the USPTO under the auspices of the Alice opinion.
Some might argue that accepting the validity of the reasoning in Alice as the basis for arguments against Alice-based claim rejections is to concede defeat in the face of a decision that is not only founded on incoherent logic but also represents a step backward in relation to decades (at least) of precedent. To counter this objection, I would point out that applicants attempting to obtain patents to which they are entitled must take the law as they find it. The vast majority have neither the time to wait for the law to change nor the means to effect such a change. On the contrary, applicants must now accept the Alice decision as fact, even if not as justified fact.
Any steps that applicants can take in individual cases to require that the decisions rendered in those cases be fully substantiated by actual reference to the specific reasoning in the Alice decision and to the actual elements of the claims in those cases can only help in the effort to nudge the law back into harmony with the true first principles of patent law, even while other mutually supportive steps are taken in parallel to steer the courts and (dare I say it?) Congress back on course.