The Implicit Exception to § 101 for Abstract Ideas Should Be Narrowly Construed

By Jeremy Doerre
August 12, 2018

A recent Federal Circuit eligibility decision is notable for involving “dissent from [the] court’s continued application of this incoherent body of doctrine.” Interval Licensing LLC v. AOL, Inc., no. 2016-2502, concurrence slip op. at 1-2 (Fed. Cir. July 20, 2018) (Plager, J., concurring-in-part and dissenting-in-part).

Specifically, the Federal Circuit’s recent decision in Interval Licensing includes both a superbly written majority opinion and an excellent concurrence by Judge Plager in which he indicates with respect to the abstract ideas eligibility exception to 35 U.S.C. § 101 that he “respectfully dissent[s] from [the] court’s continued application of this incoherent body of doctrine.” Id.

This article suggests that an alternative route is available to effectively accomplish much the same result while still holding true to Supreme Court eligibility jurisprudence: applying the Supreme Court’s standard approach of narrowly construing statutory exceptions to narrowly construe the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas.  This article is divided into three parts.

Part one (below) explains why a narrow construction is appropriate, and suggests that, under this approach, it would be reasonable to only apply the abstract ideas eligibility exception as a bright-line prohibition to concepts that have been indicated to be plainly and unmistakably within its terms and spirit.

Part two suggests that, with respect to the abstract ideas eligibility exception, the only things that the Supreme Court has plainly and unmistakably indicated to be within the terms and spirit of such a bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

Part three further suggests that this approach would not foreclose the ability of the judiciary and the U.S. Patent and Trademark Office to address issues raised by claiming at a level of abstraction that results in overbroad claiming, either under 35 U.S.C. § 101 or under 35 U.S.C. § 112.

 

The implicit statutory exception to § 101, like other statutory exceptions, should be narrowly construed.

The Supreme Court has made clear that statutory exceptions generally should be narrowly construed.  For example, in Commissioner v. Clark, 489 U.S. 726 (1989), the Court referenced its “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” Clark, 489 U.S. at 727, and noted that “[i]n construing provisions … in which a general statement of policy is qualified by an exception, we usually read the exception narrowly in order to preserve the primary operation of the provision.” Clark, 489 U.S. at 739 (citing Phillips, Inc. v. Walling, 324 U. S. 490, 493 (1945)).

The Court has even made clear why statutory exceptions should be narrowly construed, articulating in Phillips that: “[t]o extend an exemption to other than those plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Phillips, 324 U. S. at 493.

If this is true for explicit statutory exceptions enacted as part of a statute by legislative representatives of the people, it is even more true for implicit statutory exceptions inferred by the judicial branch.

The patent eligibility exception of 35 U.S.C. § 101 for abstract ideas is such an implicit statutory exception, as the Supreme Court made clear in noting that it has “long held that th[e] provision of [35 U.S.C. § 101] contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014).

In accordance with Supreme Court guidance regarding construction of statutory exceptions, the implicit statutory exception for abstract ideas should be construed “narrowly in order to preserve the primary operation of the provision” of 35 U.S.C. § 101. Clark, 489 U.S. at 739 (citing Phillips, 324 U. S. at 493).  To do otherwise would risk “frustrat[ing] the announced will of the people.” Phillips, 324 U. S. at 493.

This is especially true here, where the Supreme Court itself has reasonably declined to “labor to delimit the precise contours of the ‘abstract ideas’ category,” Alice, 134 S.Ct. at 2357, but has cautioned that one must “tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Alice, 134 S.Ct. at 2354.

 

The boundaries of the abstract ideas eligibility exception have not been defined.

In his concurrence in Interval Licensing, Judge Plager suggests that, with respect to the implicit exception for laws of nature, natural phenomenon, and abstract ideas, “[a]ll too often courts discussing these three judicially created exceptions to patent eligibility lump them together, as if all three present the same set of issues to be conceptualized and analyzed,” when in fact “[t]hey do not.” Interval Licensing, no. 2016-2502, concurrence slip op. at 1-2 (Plager, J., concurring-in-part and dissenting-in-part).  Judge Plager notes that “‘[l]aws of nature’ and ‘natural phenomena’ have understandable referents, and thus have proven more amenable to workable definitions, or at least a reasonable degree of boundary-setting,” Id. at 2-3, while “ideas can have an infinite range of abstractness” and “the phrase ‘abstract ideas’ is a definitional morass.” Id. at 5.

Judge Plager eloquently articulates that “[t]he problem with trying to define ‘abstract ideas,’ and why no court has succeeded in defining it, is that, as applied to as-yet-unknown cases with as-yet unknown inventions, it cannot be done except through the use of equally abstract terms.” Id.  This conclusion is reinforced by the Supreme Court’s reasonable choice in Alice to decline to “labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Alice, 134 S.Ct. at 2357. While the Court’s choice was eminently reasonable, it has left decision makers uncertain as to when to apply the abstract ideas eligibility exception.

 

The Mayo/Alice two-step framework implements a bright-line eligibility prohibition which serves as a proxy for a pre-emption inquiry.

As a bit of background, as noted above, the Supreme Court has “long held that th[e] provision of [35 U.S.C. § 101] contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134 S.Ct. at 2354.  The Court has “described the concern that drives this exclusionary principle as one of pre-emption.” Alice, 134 S.Ct. at 2354.

The Court has emphasized that “in applying the § 101 exception, we must distinguish between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more, … thereby ‘transform[ing]’ them into a patent-eligible invention.” Alice, 134 S.Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 89, 132 S.Ct. 1289, 1303 (2012); Mayo, 566 U.S. at 72, 132 S.Ct. at 1294).  The Court elaborated that “the former ‘would risk disproportionately tying up the use of the underlying’ ideas, … and are therefore ineligible for patent protection” while “[t]he latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.” Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 72, 132 S.Ct. at 1294).

The Court articulated its concern regarding disproportionate pre-emption even more clearly in Mayo when it noted that “the underlying functional concern here is a relative one: how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 566 U.S. at 88, 132 S.Ct. at 1303.

The Court made clear, however, that “cases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow” because “[c]ourts and judges are not institutionally well suited to making the kinds of judgments needed to distinguish among different laws of nature.” Mayo, 566 U.S. at 88-89, 132 S.Ct. at 1303.  As a result “cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 88-89, 132 S.Ct. at 1303.

In Mayo and Alice, the Court articulated a two-step analytical framework for determining whether a claim is directed to a patent-ineligible concept barred by this bright line-prohibition.  The Court indicated that “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355.  If so, the test proceeds to “a search for an ‘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.” Alice, 134 S.Ct. at 2355 (internal quotations and alterations omitted).

However, it is important to keep in mind that this two-step analytical framework is only designed to determine whether a claim is directed to a patent-ineligible concept barred by this bright-line prohibition which “serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

 

The bright-line eligibility prohibition should be narrowly construed, and the Mayo/Alice test implementing it only applied for concepts plainly and unmistakably within its terms and spirit.

As outlined above, the implicit statutory exception for abstract ideas should be construed “narrowly in order to preserve the primary operation of the provision,” Clark, 489 U.S. at 739 (citing Phillips, 324 U.S. at 493), as to do otherwise would risk “frustrat[ing] the announced will of the people.” Phillips, 324 U.S. at 493.  Given that such a narrow construction is necessary for the implicit judicial exception itself (for “patents that claim the ‘buildin[g] block[s]’ of human ingenuity,” Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 89, 132 S.Ct. at 1303; Mayo, 566 U.S. at 72, 132 S.Ct. at 1294)), one must be even more careful in construing the “bright-line prohibition … which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

Analogously to Phillips, there is an argument that “[t]o extend [such a bright-line prohibition] to other than those [concepts] plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Phillips, 324 U.S. at 493.

Here, one result of the Supreme Court’s very reasonable choice to decline to “labor to delimit the precise contours of the ‘abstract ideas’ category,” Alice, 134 S.Ct. at 2357, is that there are only a limited number of concepts which it is clear are “plainly and unmistakably within [the] terms and spirit,” Phillips, 324 U.S. at 493, of this bright-line prohibition.

 

CLICK to CONTINUE READING… In part two the article will address the fact that the bright-line eligibility prohibition was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level, and suggest that it would be reasonable to only apply the Alice/Mayo two-step framework implementing this bright-line prohibition for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Phillips, 324 U.S. at 493, of the bright-line prohibition, e.g. mathematical formulas and fundamental economic practices that are long prevalent.

 

Image Source: Deposit Photos

The Author

Jeremy Doerre

Jeremy Doerre is an associate at Tillman Wright, PLLC. Mr. Doerre focuses primarily on representing clients in patent matters related to software and computer technology. Mr. Doerre has ten years of experience preparing and prosecuting patent applications, but of late spends an increasing amount of his time working on post-grant proceedings before the Patent Trial and Appeal Board, and appeals to the Court of Appeals for the Federal Circuit.

For more information or to contact Mr. Doerre, please visit his Firm Profile Page.

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 33 Comments comments.

  1. Anon August 12, 2018 12:30 pm

    There is so much very wrong with this article that it is difficult to decide where to begin.

  2. Easwaran August 12, 2018 1:42 pm

    Anon, your comment is mean spirited and literally worthless. Articulate a problem if you have one.

    Anyway, I think the article sets out a prudent course; why make logical leaps premised on undefined language when we can simply apply the well-defined statute and construe the ill-defined exceptions narrowly?

  3. JCD August 12, 2018 5:40 pm

    Anon,

    Thanks for taking the time to read this article.

    As Easwaran was kind enough to suggest, if you would like to begin by articulating what strikes you as wrong, I would be happy to explicate my thinking. Given that the article was intended to mostly just highlight some quotations from existing precedent and present a possible approach for § 101 issues (that certainly isn’t the only possible approach), I’m a bit surprised at the ire, and curious to see constructive comments!

    I’m always open to, and in fact welcome, contrasting viewpoints, as existing eligibility precedent is very difficult to coherently synthesize, and the underlying issues are far from simple as well.

    In the mean time, given that I believe you also consider the Federal Circuit and Supreme Court to sometimes be very wrong in this area of law, I will consider myself in good company!

  4. Anon August 12, 2018 6:14 pm

    Respectfully Easwaran, you confuse “mean-spirited” with the absence of the opposite (fawning).

    This article simply does not apply any sense of critical understanding of the law and the respective players in how the statutory law is supposed to be handled.

    Being critical is just not the same as being mean-spirited. In fact, “tough love” is the order of the day when we see (and continue to see) fawning pieces attempting to defend the indefensible of what the US Supreme Court has done in regards to 35 USC 101.

    Overall, this article is in grevious error to think that the Supreme Court is somehow blameless in the 101 mess, and that it is merely the lower courts that are just not “applying properly” the decisions of the Supreme Court.

    I will go further and challenge your “prudence” by asking you which state you are barred in and to provide the attorney oath for your state. I know of only one of the fifty that even arguably permits attorneys to not challenge the Supreme Court when that Court attempts to place itself above the Constitution. Ethical duty is not displaced by your sense of “prudence.” At the very least, the Article – as I note on an overall scale – fails to uphold its duty of critical thinking with the attempted whitewash of the Supreme Court. Such whitewashing does no one any favors.

  5. Ternary August 12, 2018 10:53 pm

    “… the only things that the Supreme Court has plainly and unmistakably indicated to be within the terms and spirit of such a bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.”

    One of the most troublesome “bright-line prohibitions” for declaring patent eligibility is the use of mathematical formulas or expressions. I am very curious for you to explain (in part 2) the acceptability of such a prohibition in view of the role of mathematics as the basic language of engineering. Basically, it prohibits engineers to apply their tools of the trade in claiming their inventions.

    Many times people have explained to me that this prohibition pertains (or should pertain) to mathematical expressions “per se.” Unfortunately, that is not how this prohibition is applied. Any mathematical expression in a claim is a red flag to an Examiner or a Court.

    Earlier in response to another article on this blog I mentioned a device that has 8 XOR devices that performs a bitwise processing of 2 8-bit words. I presume (but who knows) that such a device (when it was novel) was patent eligible under Alice. A device processing two words of 8-bits in accordance with an addition over extension finite field GF(256) will almost certainly create a 101 rejection over Alice, though it describes the bitwise XORing. A device that performs an addition over modulo-251, is a device as much as the 8 XORs, actually more complex. A design for such a device in binary realization can be generated from a Karnaugh map. Other ways are also possible. Why should a mathematical description of such a device not be patent eligible? Because Courts are not aware of Karnaugh maps perhaps? Examiners are (or should be).

    One can realize a modulo-p adder in different ways. a) one can instruct a binary processor to perform such an operation and b) one can make a customized and minimized binary circuit to perform the operation. Especially if p is not a power of 2, a programmed processor is measurably slower than a customized circuit, when using equivalent circuitry, to evaluate an operation described by a mod-p addition. Credit chip cards using customized mod-p addition circuitry would be measurably faster than computers used by a hacker trying to break into an account. This allows to detect a hacking attempt. A device claiming the customized circuitry in a cryptographic device should be patent eligible in my opinion. Predictably, the first office action in such a patent application case issued an immediate 101 rejection over Alice, due to the modulo-p aspect. This places an enormous and unreasonable burden on an inventor to obtain a patent for a useful invention.

    The original drafters of the constitution never intended or implied to exclude any devices from patent eligibility. From that perspective there cannot be an “implicit exception” to patent eligibility of devices that “perform math.” Of course, at the time there were almost no devices that could evaluate any mathematical expressions or perform any programmed action. Jacquard and Babbage did their inventions in the 19th century. Calculators that were available were cheered as important technological breakthroughs to alleviate humans (who later were sometimes called computers) from the numbing task of performing computing.

    Right now we have come to the situation wherein computers that perform a calculation or evaluate a mathematical expression are “directed to an abstract idea” because “that is what computers do.” However, a claim of a device that includes an engine to provide power or movement, is not abstract, despite: “that is what engines do!”

  6. David Stein August 12, 2018 10:57 pm

    > Overall, this article is in grevious error to think that the Supreme Court is somehow blameless in the 101 mess, and that it is merely the lower courts that are just not “applying properly” the decisions of the Supreme Court.

    Well, that’s fair – the Supreme Court has fumbled this ball twice in the past decade.

    One of the many flaws of Bilski v. Kappos is that the majority opinion presented an extremely minimal analysis of the patent: literally two paragraphs, and mostly conclusory statements. At least Alice presented a much more detailed analysis, one with many principles that could inform various analyses. Unfortunately, it was not treated as it should have been: a call for a detailed analysis of claimed inventions from multiple perspectives. Instead, it was torn apart into a set of one-dimensional principles, each blown out of proportion into a broad patent-eligibility categorical exception.

    > I will go further and challenge your “prudence” by asking you which state you are barred in and to provide the attorney oath for your state.

    These kinds of demands are a pet peeve of mine. For any domain-specific conversation like this, each participant demonstrates their familiarity and experience pretty clearly from the content of their own statements. If you think somebody is wrong, demonstrate it by refuting their statements, not by attacking their credentials. It’s more persuasive, less malicious, and frankly much more interesting.

  7. JCD August 13, 2018 1:48 am

    Anon – It sounds like a lot of your issue is with Supreme Court and Federal Circuit eligibility jurisprudence. I personally feel that this jurisprudence is the result of well-intentioned actors trying to grapple with difficult issues, but I understand that we may disagree on this. I am not intending to express opposition to a more wholesale reworking of the framework for eligibility analysis, but, to be honest, I have not spent enough time investigating and considering the policy issues to have an intelligent opinion at the moment. (Also, I’m not sure it’s really fair to call out a commenter for simply suggesting an approach is prudent, but you are welcome to take umbrage with me.)

    Ternary – With apologies for any confusion, I was not intending to take a position one way or another on whether there *should* be a bright-line prohibition for mathematical formulas. The Supreme Court has “endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Mayo, 566 U.S. at 88-89, 132 S.Ct. at 1303, and this article was intended to simply suggest that this bright-line prohibition should be narrowly construed.

  8. Lost In Norway August 13, 2018 5:11 am

    My reading of your argument, and the comments, is that you feel that SCOTUS did not mess up so much as their decisions were applied in ways that they did not intend. Additionally, that in some cases the application of the rulings were done in ways that was specifically cautioned against. You provide a number of quotes to back up this position, which I appreciate.

    I am not sure if it was intentional or not, but I do feel that this article is attempting to absolve SCOTUS of some or all of its responsibility after the Alice (and other) ruling leading to the current 101 issues that we are having. I cannot fully agree with this position, but I am going to reserve any final judgement for parts 2 and 3.

    Thank you for the article and I look forward to the next two.

  9. Anon August 13, 2018 7:56 am

    David Stein – you misunderstand the request. Such was not an attack on credentials. Such was an invitation to read (again, and perhaps for the first time with a certain specific intent) the oath that an attorney takes and to critically examine the relative place between the Supreme Court and the Constitution.

    FAR too many attorneys think that the word “Supreme” in the description of the highest level of the judicial branch means that the judicial branch (or at least that one element) supersedes the Constitution.

    I have seen only one state oath that even comes close to provide an arguable “justification” for NOT properly treating the judicial branch as merely one of the three branches that exist and operate UNDER the Constitution. That one single exception (so far) was from David Boundy and was the state oath for the Commonwealth of Massachusetts (which arguably calls for attorneys to treat the judicial branch as a type of ‘favored client’).

    Otherwise, attorneys are not recognizing just what their oath entails, and like here and other recent posts, leave out any critical reasoning as to the Supreme Court simply being wrong.

    Defending the indefensible, and starting with a score from the broken scoreboard (when critical thinking is demanded TO note that the score is coming from a broken scoreboard in the first instance) – THAT is a pet peeve of mine.

  10. Anon August 13, 2018 8:00 am

    One small and quick note:

    where the Supreme Court itself has reasonably declined to

    What the Supreme Court did in using a term that it refused to define is not – and cannot be – defined as “reasonable.”

    If it is reasonable to NOT define the term, then the reasonable thing to do is NOT use the term.

    Instead of on-point (but critical) reasoning, we have a placation of what the Court did. I brook no such “easy pass.”

  11. Curious August 13, 2018 9:24 am

    The Mayo/Alice two-step framework implements a bright-line eligibility prohibition which serves as a proxy for a pre-emption inquiry.
    If Mayo/Alice provided such a bright-line eligibility test, then why was Plager’s dissent necessary? Regardless, Plager’s dissent is spot on. The next time SCOTUS grants cert on a a 101 case, someone should just cut and paste that into an amicus brief.

  12. Curious August 13, 2018 9:44 am

    Defending the indefensible, and starting with a score from the broken scoreboard (when critical thinking is demanded TO note that the score is coming from a broken scoreboard in the first instance) – THAT is a pet peeve of mine.
    Just some well intentioned advice … you have a tendency to be abstruse with your comments. For example, instead of asking about the state in which one is barred, you could simply preface your comments by stating “The Supreme Court is not infallible and your duty as a lawyer does not require that you assume that the Supreme Court is infallible.” it is a simple point. Make it and move on to the main course.

  13. Jianqing Wu August 13, 2018 9:48 am

    Those cited cases demonstrate that courts are unable to use any reasonable standard for section 101 analysis. My comment is long, but I try to show the root problem and potential solution. Accuracy and precision that some of the readers want does not exist in the common-law enforcement model. If you see the root problem, it is unnecessary for you to argue.

    The approach provided by the author is what a good attorney would take within the accepted legal framework. However, I predict that it will not work well. A fundamental flaw the common law enforcement model: The statutory definition (e.g., the model) comes with a kilogram precision, doctrines (e.g., measuring devices) come with a gram precision, and litigants fight for a milligram precision. It is a joke system because it cannot achieve precision That is why society can consume 1/3 GDP to achieve little justice in all criminal, pro se, family cases, and the nation could consume 90% of its wealth on settling disputes. This is why Britain lost its dominance from running the world to getting lost even in the EU community, and all common law nations are in decline at speeds that were RARE in human history. If readers really care about their own future and the national future, entertain my idea.

    A bright line rule might be good for simply things like a few common law crimes or torts. Any bright rule most probably fail to work in a good portion of invention cases. The courts need to find solutions from choices outside those left by common law courts. My suggestion is codifying the entire patent doctrines, abolishing all court precedents (new cases can be codified), and using damage apportionment model in deciding patent infringement cases. This will give inventors to get 20% to 80% damages (upon to 300%). Infringers can get off by paying much smaller damages, are free to fight only resulting in much bigger judgments. I will prove why it will work the best. I believe that inventors, patent owners, corporations, and third parties all will like that system.

    Many patent law doctrines were developed before science age. None of the early case law makers knew about today’s technology. There is no point to take doctrinal approach as the only right approach. One good reason is cited in the article: “[t]he problem with trying to define ‘abstract ideas,’ and why no court has succeeded in defining it, is that, as applied to as-yet-unknown cases with as-yet unknown inventions, it cannot be done except through the use of equally abstract terms.”

    Judge Plager notes that NEW things cannot be understood within the existing knowledge framework. Even an abstract concept that was once clearly understood as abstract in 700 will be given new, real and great substances. For example, a person may repeatedly articular distinctive sounds to cure unique diseases. Why? Articulation of a distinctive sound sends a unique sound wave in unique paths to hit certain organs and part of the brain. I can prove elsewhere that such a “witchcraft” will become a real science for cure. Ancient people correctly used it in multiple cultures for thousands of years. Inventions mean more than NEW and judges should not use obsolete doctrines to preclude inventions.

    This abstract idea prohibition should be merged into the 103 analysis. One must note, however, that a high non-obviousness standard based upon worldwide prior art plus the broadest [reasonable] at-will interpretation standard will rapidly reduce the population of the small number of non-corporate inventors. An inventor who succeeds at lightening odds with the massive long-term investment (prosecution fees, plus attorney fees, and plus maintenance fees) will be REWARDED WITH invalidation, denial of recovery, expiration, no-value, even humiliation like patent troll after 10 to 30 years later. This patent system is in a process of shutting down itself.

    Without codifying patent law, the courts cannot achieve much. Besides, the PTO is entirely controlled by leaders’ wills. The PTO official records generated from 2015 to today reflect great policy bias to non-corporate inventors. Entering ten rounds of ARBITRARY rejections, using IMAGINARY steps in replace of mental steps, creating and distorting facts, charging huge amount of fees for little work (e.g. a petition for perfecting a priority requires a generous price of $2,000. It is just one single item!), frequent bad restriction requirements, and routine frivolous double patenting rejections. Those are well known facts. Most inventors can prove, and I have volumes of data to back up. Due to the restriction and repeated rejections, an invention that could be protected in one patent in other nation would have to file two to three applications to cover all disclosed subjects. After an adjustment is made to patent scope, U.S. application and patent numbers actually mean much fewer. PTO performance data lies in many aspects. If one deeply looks into nature of inventions! What all those inventions are. I do not know how to compare thousands of well drafted patents on technical improvements with a rejected invention that can cure cancer. For society, the patent system should have some ability to favor this single invention over those thousands of tiny patents. Maybe, PTO leaders do not care, I am sure that most citizens do WANT important inventions that affect their lives. Thus, any blank limit by invention subject matter is unnecessary, wrong, and may hurt the entire population in the nation and the world. What is the point to keep using it? I would completely abolish section 101. Many people are afraid of witchcraft, but most people eventually may rely upon witchcraft to achieve health.

    I hope judges will ask this question: who will invent and patent if they have a really great idea in this patent landscape? I have spend years to study witchcraft in the most rigid way. What is the meaning to continue developing case laws that will only continue making the only few inventors disappear? Maybe, they should take a look at the bottom line of the patent system: figuring out who would be like to work with the U.S. patent system. Many current inventors may still hold on what they are doing because they have pending applications, have entered the field, or are not in a position to exit for various reasons. If the patent system had been in this state ten years sooner, many of the very few inventors probably would not have bothered patent. This patent system state will keep driving away future inventors.

  14. Bemused August 13, 2018 10:15 am

    JCD, its a tough, smart and uncompromising crew that makes up the regular posters on this blog. You handled their thunderbolts well and with professionalism.

    Keep posting and don’t be surprised (depending on the issue and the side you’re taking) to see some of your most vociferous critics turn into some of your most ardent supporters.

    B

  15. Easwaran August 13, 2018 11:24 am

    To Anon @4:

    “Being critical is just not the same as being mean-spirited.”

    Correct. Being critical requires providing a critique.

    “Overall, this article is in grevious error to think that the Supreme Court is somehow blameless in the 101 mess”

    At least now you’ve identified your hangup. The article attempts to engage with the law as interpreted by the Supreme Court. That’s not a grievous problem; it’s the hallmark of a sane advocate. Jeremy is so tactful in his writing that he didn’t cast needless aspersions where they aren’t helpful, and literally that tact is your issue. Come on, that’s not a real critique of his actual proposal.

    “Ethical duty is not displaced by your sense of ‘prudence.'”

    ::eye roll:: How would you propose that we “challenge the Supreme Court” mess regarding section 101? I’m all ears if you have a real suggestion, but it seems like you just want us all to say mean things on message boards.

  16. An inventor August 13, 2018 11:45 am

    I thought about this concept and i am happy to see someone approaching it.

    In reality, to capture and nurture innovation, none of the exceptions should be allowed. Innovative activity is what is being rewarded or should be rewarded. Protecting meritorious inventors from jackals is a worthy goal. If the world was honorable, no patent system would be needed, as all would have the sense to duty to recognize and reward the various levels of genius. So it is to memorialize, protect and reward valuable inventions and inventors against the behaviors of unsavory copycats and combines that makes patent law valuable to the society.

    true innovators rarely gain the economic traction to bring their genius to broader and broader audiences; and the industrial combines, through trickery and lies, act as a repressive force in economic society.

    The sad irony of the current period is that the more abtruse the innovation, the more groundbreaking, the more likely it winds up evicerated in Federal Court.

    It’s almost as if there is some secret panel somewhere deciding economic winners and losers with respect to IP.

  17. Paul Morgan August 13, 2018 12:00 pm

    A thoughtful article on this problem for anyone not limited to mere pointless, hopeless, rants against unanimous or near-unanimous Sup. Ct. decisions and attacking anyone who does not join in that activity.
    Note however that even a good argument for narrowing 101 decisions has to also take prohibited “preemption” claiming into consideration. Or,to put it another way, a patent that indicates a major problem to be solved and only broadly claims that as the result, covering every other possible solution to the problem and not claiming how the result is accomplished. Yes, this should also be a 112 rejection, but it can also be part of a Sup. Ct. 101 “exception” issue.

  18. Anon August 13, 2018 12:00 pm

    curious @12,

    Thank you for the tip, but I would reply that one man’s “abstruseness” is another man’s layered and subtle multi-point reply. There is a reason for having the person themselves take the step to read their own state attorney oath. Yes, I could have made the simple statement you offered (and hen be met with “why is that?”). Further, your simple statement, while true, does not carry the same gravity.

    Contrast:
    One need not assume the Supreme Court is infallible.
    To:
    One has a duty to not put the writings of the Supreme Court above the Constitution.

    Your phrase, while indeed simple and eloquent, provides a passive stance.
    My phrase shows the requirement of more.

    Further, the writer here seems unaware of any assumption even being made as to infallibility. There appears to be no critical thinking at all and a rather bland and meek acceptance. One does not combat blandness and meekness with a bland and week “need not assume.”

    Easwaran @ 14, point taken – to a limited extent. However, the message was one that so many errors are present that one hardly knows where to begin. That in itself is a critique.

    I “get” that the article is trying to engage with the law as interpreted by the Supreme Court, but that in and of itself is an error – and an unhelpful one (for without more, and in the tones of the article lauding the Court, the message is one being equivalent to an abdication – without more – of the ethical responsibility that I added).

    It IS a grievous problem because it does not arrest the larger underlying problem.

    It is not the hallmark of a sane advocate to not even be aware of the larger problem.

    There is a huge difference between “so tactful” and being a mindless sycophant, and the writing in the article hews closer to the latter.

    It’s not as if the idea of the errors of the Supreme Court exist in a vacuum, and that the author should somehow not be aware of them.

    Should I in turn take your own “::eye roll::” as merely you wanting to say mean things?

    The proposition to challenge the Supreme Court is easy enough to do: simply note that the larger problem exists, and then state that while not solving that larger problem, here are some steps worth considering. That way, one acknowledges what needs to be acknowledged and offers advice that does not placate (or worse) the larger error.

    I have the same issue with Mr. Cole. Note that Mr. Cole offers excellent advice (on the advice that he offers), but that by “excusing” the Supreme Court, the take away is that the Supreme Court has done no wrong.

    Being aware is a first step.
    Acknowledging that awareness – no matter what other advice is being offered is a next step.
    Offering advice that does not acknowledge the larger error, that is obsequious to the body that makes the error (lauding them even) and effectively condoning the error is a misstep.

    And your thinking that such is not grievous is likewise grievous.

  19. Paul Cole August 13, 2018 1:20 pm

    @ JD

    May I congratulate you on your article, and on selecting a topic on which I have been writing comments and submitting briefs for some 5 years now.

    If you look at the recent Supreme Court decisions you will find numerous statements of caution and limitation, consistent with an awareness of the Justices that they were dealing with an area of law and technology with which they were unfamiliar.

    The rule that exceptions to statutory provisions should be narrowly construed is so long-standing and so well-known that it is surprising that it is surprising that it is not invoked more often. The cautious approach was set out by Justice Burger in Diamond v Chackrabarty where he explained that courts “should not read into the patent laws limitations and conditions which the legislature has not expressed” citing United States v. Dubilier Condenser Corp.,289 U. S. 178, 289 U. S. 199 (1933). In particular, an expansive interpretation of the judicial exceptions risks holding ineligible subject matter that positively falls into one of the statutory categories, giving rise to problems under the doctrine of separation of powers.

    @ Anon

    Firstly many thanks for the kind mention.

    Secondly I do NOT hold the Supreme Court blameless, although I sympathize with them in their difficulties in trying to resolve issues involving technical subject-matter that they may find difficult to comprehend combined with a specialised body of statute and case law with which they will be unfamiliar and of which inevitably they will be presented with only small portions.

    Thirdly, if there is blame, I would cast it in two directions. Firstly our profession is by no means innocent in the cases we bring forward. As those who have followed my comments will recall, the Alice application was objected to in the EPO for lack of eligible subject matter and lack of inventive step and was abandoned without even a formal hearing at first instance if my memory serves. Presumably there must have been a very compelling commercial case in the background that impelled the legal advisors to pursue the case to the Supreme Court. If the appeal was prompted purely on the legal advice that the case was winnable and a fit case to put forward, then given what happened at the EPO I would seriously question the professional judgment of those involved. Secondly I cannot absolve decision-makers, and especially the judges of the CAFC, for “gold-plating” what should be regarded as cautious narrow decisions and deriving broad principles that arguably were never intended and which have lead to unfair results. Anyone who thinks that Ariosa v Sequenom was a fair and just decision has obviously never had a wife, girlfriend or daughter who has had a child in the last few years and does not appreciate how preferable a blood test during pregnancy at 12-14 weeks is over the previous invasive procedure of amniocentesis at about 16-18 weeks. It is notable that Judge Reyna who gave the lead judgment in that case was a relatively new judicial appointment and is an economist with (as he freely admitted in a session before AIPA) limited understanding of technical subject matter and limited understanding of patent law.

    As a UK resident, it is not for me to criticise the opinions of the US Supreme Court. But we can interpret its opinions expansively or narrowly, and insofar as the present article points towards the narrower approach it is in my opinion helpful.

  20. B August 13, 2018 1:47 pm

    @ JCD,

    Great article, Jer.

    There’s history the CAFC fails to appreciate. I’ll call you

  21. Easwaran August 13, 2018 1:58 pm

    Anon @17:

    “Should I in turn take your own “::eye roll::” as merely you wanting to say mean things?”

    You questioned my fitness for the bar because I asked you to stop being an Internet troll. I rolled my eyes in the real world, too.

    “The proposition to challenge the Supreme Court is easy enough to do: simply note that the larger problem exists, and then state that while not solving that larger problem, here are some steps worth considering.”

    So your problem is the absence of a one-sentence caveat at the outset of the article? That’s a lot different than saying there is “so much very wrong with this article that it is difficult to decide where to begin” or that “so many errors are present that one hardly knows where to begin.” And even then you allege that the author “hews closer” to “being a mindless sycophant.” You’re using wildly inflammatory language to make what we can now see is a minor point that doesn’t even conflict with the substance of the article.

    Finally, we’re all familiar with the many problems in the Supreme Court cases. The decision not to point them out again is not “condoning the error”; to the contrary, I take that omission as the author choosing not to patronize us.

    Anyway, sorry to the extent I’ve sidetracked the comment here. I’ll see myself out.

  22. Anon August 13, 2018 2:16 pm

    Bemused,

    I agree with you. And while stinging (deservedly so), it is my hope that awareness comes from that sting.

    Simply recognizing some of the bigger picture elements will certainly help advice provided be presented n the more aware context; thereby providing helpful advice without losing sight of present ills (and their causes).

    I would draw comparison again to Mr. Cole. On nearly most all topics, Mr. Cole provides a reasoned and thoughtful view. I agree and appluad his contributions often. That is, outside of his penchant for elevating Supreme Court decisions. Part and parcel of the 101 problem is the players involved (chiefly, the Supreme Court). Not only should we be aware of the fact that the Supreme Court is not infallible, we should be aware of our greater duty to not let others believe that the Supreme Court is infallible.

    Their screw-ups should not be painted as “wise.” Their overreach whether in disregard of separation of powers, Void for Vagueness, or current case or controversy (witness the calls to prospective conjectural future “May” happenings in regards to “pre-emotion” of future innovation) should not be ignored or worse “celebrated.”

  23. JCD August 13, 2018 2:40 pm

    Paul,

    Great point. As IPWatchdog is kind enough to publish this article, I don’t want to steal any thunder from the later postings, but I try to briefly address that in part 3.

    In particular, I try to suggest that even if the bright-line eligibility prohibition is construed narrowly, this would not foreclose the ability to address issues raised by claiming at a level of abstraction that results in overbroad claiming, either under § 101 or under § 112. (Many commentators have previously noted and emphasized the role of overbreadth in the Court’s eligibility jurisprudence much more exhaustively and eloquently.)

    I also try to suggest that even when used to police overbroad claiming, the eligibility exception should be narrowly construed.

    My treatment of this is unfortunately far from exhaustive. I think there are a lot of very reasonable approaches to narrowly construing the eligibility exception, and reasonable minds could easily differ on preferred approaches.

  24. Anon August 13, 2018 3:16 pm

    for anyone not limited to mere pointless, hopeless, rants against unanimous or near-unanimous Sup. Ct. decisions

    I chuckle as I summarily dismiss the pointless hopeless rant of the IPR cheerleader.

    As I do so, I warmly invite Mr. Morgan to dig into and share his own state attorney oath. I would be curious as to whether we find a second exception (even a mere arguable one at that) to the duty to not place the Supreme Court over the Constitution (I daresay even those cases decided on an unanimous or near-unanimous basis – because we all know how much that affects our duty).

    Who knows, maybe the states might amend the bit about attorney ethical duties only applying “if everyone else is doing it” or “no one else is doing it,” which appears to be the logic de jure.

    Where is my “dripping in sarcasm” emoticon…

  25. Anon August 13, 2018 6:43 pm

    Easwaran at 21,

    You questioned my fitness for the bar because I asked you to stop being an Internet troll.

    No. That is not what I did. Try again. Add the additional point in reply to David Stein at post 9 (well before your “::eye roll::”).

    Let’s make this easy. With no impugning, what state are you barred in? Do you have a copy of the attorney oath that you swore when you became barred in that state?

    The reason I ask is because I want you to post the oath. I want you to see (as well as all of us), what your oath states. Heck, if you do not care to share the state, I am fine with that. Share the oath.

    Then we can continue the discussion without any bruised feelings.

    As to “So your problem is the absence of a one-sentence caveat at the outset of the article?

    Clearly not. I suggest that you read my posts again. What you glommed onto was but one manner of showing recognition of the larger problem. There was an abundant lack of such showing. This abundant lack was coupled with compliments of the Court where derision would be more appropriate.

    Finally, we’re all familiar with the many problems in the Supreme Court cases.

    That’s a statement reflecting facts NOT in evidence – for the very reasons I have provided in my posts. One cannot – in all fairness – state “we are all familiar” when compliments are being handed out on items that are part and parcel of those same many problems.

  26. JCD August 13, 2018 7:12 pm

    My apologies for any confusion, as my post at 23 was intending to respond to Mr. Morgan’s post at 17.

    Re Mr. Cole’s post at 19 – Thanks; I always enjoy reading your briefs and I’m still hoping to see the issue of the impact of TRIPs on eligibility addressed squarely at some point. Also, that’s a great cite to Chakrabarty.

  27. PatentMan August 13, 2018 10:57 pm

    The Supreme Court in Alice said, “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” That does not mean that they should or would decline to delimit the precise contours of the “abstract ideas” “test” for all other cases, assuming it is even their job to create extra-statutory “tests” at all. At present, that there is no defined “test” presents an unworkable state of the law for those who must judge in district courts and the Fed Cir (and examiners, too). That the Court punted is not acceptable or “eminently reasonable” as the author concluded.

    That is the point of Plager’s brilliant dissent. He said it is “near impossible to know with any certainty whether the invention is or is not patent eligible”. The “abstract idea” “test” “cannot thus function as a valid rule of law” if the “test” cannot even be defined. Importantly, that comment was directed to the “test” being applied “before . . . a patent is issued” as well as after. He’s as much as telling the PTO not to use any “abstract ideas” “test” in rejecting applications and that 3 or more Fed Cir judges agree. That’s a big deal, in my view, and the PTO ought to listen. If Fed Cir Judges Plager, Linn, and Laurie “who have devoted their careers to the practice and explication of patent law publicly proclaim that there is a real problem, there is a real problem”.

    Judge Newman’s concurrence in Bascom said the same thing in recognizing there is “no guide to when a claim crosses the boundary between unacceptable abstractness and acceptable specificity”. How can any patent examiner be reasonably expected to apply an “abstract idea” “test” when it cannot be defined? I find compelling the argument that the “abstract idea” “test” is void for vagueness because the “test” cannot be defined.

    Rather, examiners should be provided a terse form paragraph to accompany allowances, similar to this, for the “safe” way to comply with 101 and governing law:

    The claimed invention meets the requirements of 35 U.S.C. §101. Section 101 of the Patent Act provides that anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may obtain a patent. 35 U.S.C. §101. The language of Section 101 is well-recognized as providing a wide and permissive scope for patent eligibility. Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)) (“In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.”). The claimed subject matter does not fall within any judicial exception to patent eligibility, and there exists no substantial evidence to show the claims are directed to any abstract idea. The claims are in condition for allowance.

  28. Ternary August 13, 2018 11:23 pm

    JCD- It is unclear what a “narrowly construed mathematical formula” means. The court mentions mathematical “formulas”, “expressions”, “principles” and “processes” in their approach to mathematics. What to make of this?

    Is a description like: “evaluating an expression including a variable representing a frequency and a parameter representing an inductance” a mathematical formula in a narrow sense? I would argue not. It is not a formula at all. I would argue that it is not the mathematics that bothers the court, but it is the computer doing the mathematics or calculations that gets them upset.

    It is unclear why this exception of mathematical formulas in patent claims exists in the first place. I believe that this exception mainly occurred because of computers being able to perform calculations. Before that, the use of mathematical tools to do useful things in an invention was fairly well accepted.

    There is no criterion for what “narrowly construing” a mathematical formula in a patent claim or elsewhere is. Considering that mathematics is the language of science and engineering, mathematical formulas, when the other criteria of 101 are fulfilled, should specifically not be a judicial exception to patent eligibility. I understand that you don’t advocate any judicial exception (what you call a statutory exception). But you advocate a narrow interpretation. I am extremely curious to know what such a narrow interpretation possibly would be related to mathematical formulas.

  29. concerned August 14, 2018 5:29 am

    Anon @10: What the Supreme Court did in using a term that it refused to define is not – and cannot be – defined as “reasonable.” If it is reasonable to NOT define the term, then the reasonable thing to do is NOT use the term.

    An Inventor @16: It’s almost as if there is some secret panel somewhere deciding economic winners and losers with respect to IP.

    All symptoms of a hidden agenda. And you do not have to be an attorney or schooled in law to know this observation.

    Hidden agenda symptoms as applied to my patent application:

    Bahr puts out official memos that his own patent examiners refuse to follow. Examples: Difference in concrete steps that solve a real problem (Nov 2016) and that evidence matters (April 2018). Nice for an official position, then the examiner blows them both off.

    Both Alice court and the EPG (appellate court) said concrete steps that solve a real problem also matter. I assume problems experts readily admit in writing that they cannot solve qualify as a real problem.

    And then again, good luck trying to rationalize a hidden agenda. It is my only hope, keep shoving the hard evidence, keep throwing in their face official USPTO memos, maybe one day it miraculously sticks.

    B@20: I reached out to you. Not sure email address correct. Is it crossroards or crossroads? Thank you for the kind consideration.

  30. Anon August 14, 2018 2:19 pm

    Ternary @ 28,

    Yet again I am struck with the parallel form your comments to past ruminations on how to approach patent law (in line with the notion that software innovation is eminently the type of innovation that should be protected under patent law).

    In particular, when it comes to math, I would think that a necessary distinction is to keep in mind that each of the following, while certainly having overlap, are fundamentally different in regards to treatment under the law.

    These items are:

    math (the basic “stuff” itself)

    applied math (the “engineering” stuff, or how the basic stuff is used), and

    Math(S) (this is the Philosophy of Math, often confused by those in academia for math itself, and will also often envelope both the basic stuff and the applied stuff).

    It is critical to be able to separate these and then, after separating, taking a step back and simply realizing WHY the patent system exists (to protect the work of man related to utility).

  31. Anon August 14, 2018 6:58 pm

    …and I should add that “basic building block” while also left undefined, cannot include any applied math. By definition (and distinction with ‘just’ “math”). The second you ‘apply’ is the second it is no longer basic, as it is then something built ON a basic building block.

  32. step back August 14, 2018 10:43 pm

    while still holding true to Supreme Court eligibility jurisprudence

    JCD: There is nothing “true” in what the SCOTeti say –except for the fact that they don’t want to belabor themselves. The rest is all jaberwhocky.

    Section 101 explains that “usefulness” (utility) is a criteria and so too is novelty. After that it is ANY machine, ANY process, ANY manufacture, ANY composition of matter, ANY improvement thereof so long as it is enabled and nonobvious.

    The SCOTeti have certain “friends” (amici) who do not like the import of that statutory language. Hence the Alice/Mayo debacle.

  33. Anon August 15, 2018 8:52 am

    “Holding true” to a broken scoreboard only guarantees that the scoreboard will never be fixed.

    The necessary (and missing) critical thinking is whether or not holding to the mess created by the Supreme Court is itself proper in light of the higher authority of the Constitution (and to certain parties, a duty as such).

    “Supreme” does not place the Supreme Court above the Constitution.

    Further and separately, whether or not one is a US citizen places NO impediment to criticizing the Court (Mr. Cole). As I have noted previously, you find no compunction critizing the lower courts – the only possible source of compunction is some unsubstantiated fealty. I fully grant that your status means that you do not have a duty that a US National may have (under a suitable State attorney oath). That lack of duty however in no way translates to a prohibition. Quite in fact, being an independent third party should free you to be more vociferous (if one feels that “tact” comes from the chance of having to appear before the judicial body).

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