Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

We have previously written about the Supreme Court’s renewed interest in patent eligibility and seemingly unintended confusion between the patent eligibility requirements of 35 U.S.C. § 101 and the remaining patentability requirements under Title 35.  To paraphrase Judge Rich, whether we lawyers would take advantage of terminology available to us and stop talking nonsense is up to us.  Principles of Patentability, Geo. Wash. L. Rev., 28(2), 393-407, 407 (1960).  We tried to heed his guidance and aimed to be careful to differentiate between eligibility under § 101 and the remaining requirements of patentability.  Since our article, there has been significant commentary and angst regarding the failure of the courts to so differentiate, at least with respect to patent eligibility and the requirements of §§ 102 and 103.  But there has been less attention paid to possible changes in the relationship between § 101 and § 112, so we address the relationship of those two sections here.

The Way Things Used to Be

As described in our previous article (J.W. Cox, et al., A Brief  History of Supreme Court Interest in Patent Eligible Subject Matter Under 35 U.S.C. § 101, J. Tech. Law & Policy, 19(2), 181–226, (2014)) the law of § 101 was relatively stable from 1952 to 2010, with the Supreme Court opining on eligibility under § 101 only five times during that period.  In short, the law of § 101 was simple and well understood, and was only rarely invoked to prevent a patent right covering an actual abstract idea or mathematical formula.

As a result, claim scope was traditionally determined as a question of patentability under § 112.  These standards have not evolved dramatically over the last 50 years, with perhaps the greatest change being that of the new Nautilus standard for definiteness announced in 2014.  Nevertheless, as a matter of policy, patent applicants have needed to conform with the written description, enablement, and definiteness requirements in § 112 in substantially the same form over the last five decades.

The Way Things Are – Current Status of the Law – The Relationship Between Patent Eligibility and 35 U.S.C. § 112

Sections 101 and 112 provide their own separate limitations to the scope of patent protection in ways that are sometimes complimentary and sometimes contradictory.  The contours of these sections of the Patent Act are discussed below.

  1. 35 U.S.C. § 101

Patent eligibility under § 101 is traditionally understood as a “threshold” test: the first of multiple challenges to the sufficiency of a patented invention.  See Bilski v. Kappos, 561 U.S. 593, 602, 130 S. Ct. 3218, 3225 (2010).  Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  35 U.S.C. § 101.  Courts have limited the scope of patentable material by exempting laws of nature, natural phenomena, and abstract ideas.  See Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).

These subject matter qualifications have been observed for over 150 years.  Id.  Despite their venerable nature, however, courts have struggled in recent years to clearly define the proper scope of § 101.  In particular, it remains a vexing problem to describe exactly when an invention is entitled to patent protection, and when an invention is merely the recitation of an abstract idea.  The Supreme Court has developed a two-part analytical framework to identify claims that are directed to a patent-ineligible concept.  See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289 (2012), and Alice, 134 S. Ct. 2347.  This Mayo/Alice framework has courts first examine whether the patent claims “are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.  If so, courts must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”  Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).  This approach seeks to limit the protection of unpatentable subject matter, despite the fact that “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ ” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2354).  Above all, § 101 is concerned with weeding out claims that merely claim the “building blocks of human ingenuity” and thus threaten to preempt the use of those ideas for other innovations.  Alice, 134 S. Ct. at 2354-55 (quotations omitted).

  1. 35 U.S.C. § 112

Should a claim satisfy the threshold test of § 101, it can properly be subjected to the requirements of other sections of the patent statute, including 35 U.S.C. § 112.  Section 112 contains multiple requirements that relate to the adequacy of the inventor’s disclosure within a patent application.  The first requirement, the written description, “serves a quid pro quo function in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.”  Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quotation omitted).  This requirement requires an applicant to “convey with reasonable clarity to those skilled in the art that [. . . ] he or she was in possession of the invention,” by including sufficient disclosures in the specification.  Id.  (quotation omitted).

Under § 112, broader claims require broader disclosures.  Claims to the genus of an invention are patentable, just as claims to a species.  See Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204 (1980).  But broader claims must be accompanied by an equally broad disclosure.  “[A] broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.”  Carnegie Mellon, 541 F.3d at 1127 (quotation omitted).  “[C]laims may be no broader than the supporting disclosure.”  Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998).

The enablement requirement of § 112 is directed to disclosing how to make and use “the full scope of the claimed invention.”  Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quotations omitted).  As with written description, “[e]nablement serves the dual function in the patent system of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention.”  MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012).  Therefore, a patentee risks the invalidation of claims that are not fully enabled by the specification.  Id.

Finally, § 112 contains a definiteness requirement that serves as a check against claims broadened by vague and imprecise language.  While formerly understood as a requirement that claim language avoid being “insolubly ambiguous,” see, e.g., Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005), the Supreme Court recently clarified this standard: “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).  This standard mandates clarity, and requires a level of detail that discourages different reasonable interpretations of claim language.

Ultimately, the requirements of § 112 operate to incentivize substantial inventor disclosures to the public.  Furthermore, § 112 calibrates claim language to the bounds of the disclosed specification.  Compliance with § 112 results in claims that “avert[] the generality or vagueness or imprecision or over-breadth that characterize abstract ideas.”  Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1353–54 (Fed. Cir. 2016).

  1. The Relationship

Inventors are motivated to maximize the breadth of their claims.  But they may seek to do so by employing imprecise claim language.  Both §§ 101 and 112 corral this behavior, although in slightly different ways.  Section 101 safeguards against claims that are too abstract or overbroad to be patentable, being concerned with claims that would “wholly pre-empt” any other use of an inventive concept, thereby foreclosing independent innovations or application.  Bilski, 561 U.S. at 610 (quotation omitted).  Section 112 protects against claims that are not completely and functionally disclosed within the patent specification ensuring that patentees cannot claim more than what they have invented – and shared with the public.

In our second and final installment, we will examine how this dynamic is playing out in federal and district courts across the country. CLICK HERE to continue reading part 2:

The coupling of § 101 and § 112, and what it means for patent practitioners

The Author

John Cox, PhD

John Cox, PhD is a patent attorney with Womble Carlyle. He counsels and represents clients in patent litigation related to chemical, biotechnology, medical device and pharmaceutical matters and has significant experience in Abbreviated New Drug Application (ANDA) cases, including pre-litigation investigations. John has extensive experience related to discovery and motion practice, as well as developing both offensive and defensive strategies. He particularly enjoys dealing with complex subject matter and technical witnesses (inventors and experts), and counseling clients regarding litigation procedures and strategies.

John Cox, PhD

Michael Nullet is a patent attorney with Womble Carlyle. He focuses his practice on intellectual property and patent-related disputes for clients in a wide range of industries. He advises and represents clients in all stages of litigation, from pre-litigation investigation through discovery and trial. Michael has represented clients in various U.S. District Courts, including New York, New Jersey, Illinois, and Delaware, and has particular experience in pharmaceutical and biotechnology patent cases.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments. Join the discussion.

  1. Edward Heller March 13, 2017 1:01 pm

    Given that the Bilski court did not explain itself at all about what it meant by “abstract,” I do not think it is safe to assume that they meant anything particular by it. They seem highly reluctant at the time to put any loss on “abstract” whatsoever. While I always said that the original cases dating from the era of O’Reilly v. Morse were concerned with broad claiming, identifying a problem of claiming an invention at the level of an abstraction as a problem of scope and statutorily prohibited by the then analog of §112, is not so easily to say that the problem with the claims in subject matter of Benson, Flook, Bilski and later Alice had anything to do with scope except that they were claiming mathematics or business methods, and the business methods such as in Bilski were heavily involved with mathematics or other abstractions.

    The way the Federal Circuit has evolved the doctrine after again been given control of the issue is to basically follow the MOT without saying that it is following the MOT. If a claim is directed at a specific machine, such as a programmed computer, the Federal Circuit has approved such claims as either passing Alice step one or Alice step two. If a claim is directed to an abstraction such that is not directed to a specific machine or is not directed to some physical transformation of some physical thing to another state or thing, then it fails Alice step one and probably Alice step two.

    This is the way I see the law developing. So it is not entirely correct to say that only scope is involved or that a perfect solution is to take the issue and moved it out of 101 and into §112.

  2. Anon March 13, 2017 2:34 pm

    Bilskiwas 9-0 adamant on at least one thing, Mr. Heller – that was, pertaining to how you want to use MoT, that such was not the law.

    You probably should at least try to account for that in your attempts at revising history.

  3. Edward Heller March 13, 2017 4:27 pm

    anon, I?

    Anon, what difference does it make what I want? The question is, what I the Federal Circuit doing?

  4. Anon March 13, 2017 7:48 pm

    The difference good sir, is that what you want controls your proselytizing.

  5. Edward Heller March 13, 2017 8:18 pm

    anon, let’s slow down here. What is it that you want? To understand the cases, or do you understand and simply want to provide a statutory overrule? You seem to not want to engage in any discussion of the cases themelves.

  6. Anon March 13, 2017 8:41 pm

    Slow down…

    When the focus turns to your proselytizing, you want to change the subject – and then accuse me of not wanting to engage in a discussion?

    Unglaubich.

  7. Edward Heller March 13, 2017 9:22 pm

    Anon, as always, you derail and blame others for it.

  8. Anon March 13, 2017 9:56 pm

    What have I exactly derailed Mr. Heller?

    Your proselytizing?

    (That would be a good thing)

    As for “blaming,” clearly you are the one busy at doing that.

  9. Greg Aharonian March 13, 2017 11:13 pm

    The solution within the USPTO is simple – the Director of the USPTO should issue a Director’s memo ordering all PTO examiners and judges to stop using the completely undefined “abstract”. The use of an undefined term to invalidate a patent application or patent is a pure abuse of the Administrative Procedures Act. With one memo, the USPTO could end all of the nonsense involving “abstract” within the USPTO. Then if a pool for money is collecting to use to sue under antitrust, any litigator who asserts 101 in patent litigation, then we the abuse of 101 in the courts. Semantic nonsense game over. I wish you lawyers would stop writing these long and winding case law regurgitations and focus on solutions that as quickly as possible end 101 abuse. Deleting 101 immediately is one way to do so. Ordering examiners and PTAB judges NOT to use “abstract” is another.

  10. step back March 14, 2017 12:02 am

    This whole post is kind of weird.
    What do the authors mean by “broader disclosure”?
    Shouldn’t we say “enablement”? Enablement to the full extent of what the claims purportedly cover?

    But how can the SCOTeti determine enablement?
    They can’t. They are poet laureates and philosopher kings, not scientists. As far as they are concerned, King Tut’s Abacus man had a high speed satellite up/downlink connected to all points of the Pharaoh’s kingdom. That way he could mentally keep track (with aid of papyrus and quill) of where all the chits are.

  11. Night Writer March 14, 2017 9:10 am

    @9 step back

    Another very good post. Scope of enablement for the claims is the only thing that makes sense.

  12. step back March 14, 2017 11:36 am

    @9 Gregg

    Love your newsletters (emails).
    However there is nothing wrong inside 35 USC 101.
    It is a wide mouthed welcome mat into the patent system.
    ANY new and useful … or improvement thereof.

    The thing that is wrong is inside the heads of our less than esteemed SCOTeti.
    They are above and outside the law (aka outlaws) because they admit as “factual” the unsworn and un-crossexamined nonsense provided in briefs by their hand picked “friends” of the Court (amicus curie).

    There are no such things as laws “of nature”.
    There are no such things as “mental steps” (as you rant about in your latest newsletter).
    Man is part of nature and thus nothing is outside of nature (not “natural phenomenon”).

    And yet the SCOTeti persist with such nonsense.
    The USPTO gleefully follows suite.
    We are truly an “exceptional” nation.

  13. You Know Who I Am March 14, 2017 6:01 pm

    Here is a perfectly cogent dismissal of a clearly silly patent that never should have issued. Sure it could have gone out on 103 grounds too, but I don’t see much overlap with 112 because a PHOSITA would know what the patent was saying, clearly. But there is no invention at all. Nothing NEW, as 101 requires.

    Why should somebody have to spend a million bucks to arrive at the same place?

    http://cases.justia.com/federal/district-courts/illinois/ilndce/1:2015cv08550/316070/49/0.pdf?ts=1465474763

  14. Edward Heller March 14, 2017 6:41 pm

    To the authors, can you help just a little here? Just what were the problems with the claim in Bilski under 112? Anybody could understand what the claims covered — they were reasonably certain. They were enabled for the full scope — do this, do that, until the countervailing risks balanced. These techniques were so well known that they were taught in textbooks, and before that, by teachers on clay tablets in the ancient world.

    To me, the claims in Bilski did not have any obvious 112 problem.

  15. Edward Heller March 14, 2017 7:21 pm

    YouKnowWho@13, from the linked case: “[T]he
    specification describes no mechanism for breaking down the
    information into “blocks,” although plaintiff argues that this
    is an essential innovation of the patent…”

    In other words, what the essential feature was was not actually described — most likely because the alleged inventor never actually built his system before he filed.

    Had he built his system and claimed specifically how to break litigation items down into blocks, and then claim such, the patent may have been sustained.

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