Narrowly Construing the Bright-line Eligibility Prohibition Does Not Prevent Policing of Overbroad Claiming

By Jeremy Doerre
August 19, 2018

This is part three of a three-part article suggesting that the Supreme Court’s “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” Commissioner v. Clark, 489 U.S. 726, 727 (1989), should be applied to narrowly construe the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas.

https://depositphotos.com/home.htmlIn part one noted that “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 Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 88-89, 132 S.Ct. 1289, 1303 (2012).  Part one suggested that this bright-line prohibition should be narrowly construed, and 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, Inc. v. Walling, 324 U.S. 490, 493 (1945), of the bright-line prohibition.

Part two noted 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 suggested that, with respect to an abstract ideas eligibility exception, the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Phillips, 324 U.S. at 493, of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

Part three of this article suggests that even if the bright-line eligibility prohibition is construed narrowly, this 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.

[[Advertisement]]

Even if the bright-line eligibility prohibition is construed narrowly, § 101 can still serve to police claiming at a level of abstraction that results in overbroad claiming.

As noted in part two, nothing in this article is intended to suggest that there is any sort of “talismanic significance” to mathematical formulas and fundamental practices that are long prevalent.  Similarly, nothing in this article is intended to suggest that it is not possible to still apply the abstract ideas eligibility exception to other concepts which are not a mathematical formula or fundamental practice that is long prevalent.

For example, even if the Alice/Mayo test is not applied because a claim isn’t directed to a concept that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition, a claim could still be found ineligible under § 101.

However, absent application of this bright-line prohibition, it is necessary to more explicitly consider the underlying pre-emption concerns and “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 Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014) (citing Mayo, 566 U.S. at 89, 132 S.Ct. at 1303; Mayo, 566 U.S. at 72, 132 S.Ct. at 1294).  As noted in part one, this requires considering “how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 566 U.S. at 88, 132 S.Ct. at 1303.

This is perfectly in accord with the Supreme Court’s eligibility jurisprudence, as there exist a number of cases in which claims were found ineligible based on claiming at a level of abstraction that results in overbroad claiming disproportionate to the scope of disclosure and risks pre-empting future use of the building blocks of human ingenuity.  Indeed, many commentators have previously noted and emphasized the role of overbreadth in the Court’s eligibility jurisprudence much more exhaustively and eloquently than this article does. See, e.g., Lemley, Risch, Sichelman, & Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011).  An emphasis on overbreadth can be seen in the earliest Supreme Court cases which were subsequently characterized as eligibility decisions.

For example, in O’Reilly v. Morse, 56 U.S. 62 (1853) the Supreme Court indicated that the patentee “claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent.” Morse, 56 U.S. at 113.  As noted by the majority in Interval Licensing, no. 2016-2502, slip op. at 12 (Fed. Cir. July 20, 2018), the Supreme Court in Morse made clear that “the claim [was] too broad, and not warranted by law.” Morse, 56 U.S. at 113.

All of this is directly in accord with the foundational quid pro quo theory of patents, where “the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.” Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 63 (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151 (1989)).  Indeed, eligibility jurisprudence can perhaps be understood as using 35 U.S.C. §101 as a vehicle to continue to incorporate the foundational concern that applicants provide sufficient quid pro quo for a patent.

In this regard, eligibility decisions in which claims were found ineligible based on claiming at a level of abstraction that results in overbroad claiming disproportionate to the scope of disclosure can be characterized as finding insufficient quid to support the quo of a patent claim.  In contrast, eligibility decisions based on a bright-line prohibition for specific subject matter, such as laws of nature and mathematical formula, can be characterized as finding a patent claim to be directed to subject matter which cannot be the quid to support the quo of a patent.

Both of these situations fall under the umbrella of the implicit statutory exception to 35 U.S.C. § 101, and thus, both 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).

For 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, as noted above, it would be reasonable to only “extend [such a bright-line prohibition] to … those [concepts] plainly and unmistakably within its terms and spirit,” Phillips, 324 U.S. at 493, e.g. mathematical formulas and fundamental practices that are long prevalent.

For the issue of claiming at a level of abstraction that results in overbroad claiming disproportionate to the scope of disclosure, there are various possible approaches for narrowly construing the implicit exception while still policing this practice.

35 U.S.C. § 112 can also be utilized to address overbroad claiming.

As a first matter, as some observers have previously noted and articulated much more exhaustively and eloquently than this article does, see, e.g., Risch, Everything is Patentable, 75 Tenn. L.Rev. 591 (2008); Lemley, Risch, Sichelman, & Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011), there is another statutory section that already operates to protect against overbroad claiming in at least some instances: 35 U.S.C. § 112.

In Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1344 (Fed. Cir. 2005), the Federal Circuit emphasized that “section 112 of the Patent Act requires a patent specification … to contain ‘a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.’” Lizardtech, 424 F.3d at 1344.  The court specifically noted that “[t]hat obligation… forms an essential part of the quid pro quo of the patent bargain,” Id., and indicated that “[t]he trouble with allowing claim 21 … is that there is no support for such a broad claim in the specification.” Lizardtech, 424 F.3d at 1344 (citing Morse, 56 U.S. at 112-113).

Notably, the court in Lizardtech cited to Morse in its decision, characterizing the Supreme Court in Morse as “denying a claim for use of ‘electro-magnetism, however developed for marking or printing intelligible characters . . . at any distances’ because others ‘may discover a mode of writing or printing at a distance . . . without using any part of the process or combination set forth in the plaintiff’s specification.’” Lizardtech, 424 F.3d at 1344 (citing Morse, 56 U.S. at 112-113).

The citation to Morse makes a lot of sense, as the Court in Morse was focused on many of the same issues that have since come to be associated with 35 U.S.C. § 112.  The Court in Morse was in fact very explicit in articulating its reasoning, noting that “[t]he act of Congress … requires that the invention shall be so described that a person skilled in the science to which it appertains … shall be able to construct the improvement from the description given by the inventor,” and indicating that the “[t]he words of the acts of Congress … show that no patent can lawfully issue upon such a claim … [f]or he claims what he has not described in the manner required by law.” Morse, 56 U.S. at 120.

When Morse was decided, there was no 35 U.S.C. § 112, and there was less emphasis on creating clear delineations between various rationales for finding a claim improper.  To at least some extent, however, the enactment of 35 U.S.C. § 112 and development of jurisprudence under that section serves to address and police many of the same overbreadth issues that the Court in Morse was concerned about. See, e.g., Lizardtech, 424 F.3d 1336; ICU v. Alaris Medical, 558 F.3d 1368 (Fed. Cir. 2009).

Even when used to police overbroad claiming, the eligibility exception should be narrowly construed.

Some commentators have suggested that 35 U.S.C. § 112 can now do the work of policing overbroad claims, and that there is no need to use 35 U.S.C. § 101 to do this work, see, e.g., Risch, Everything is Patentable, 75 Tenn. L.Rev. 591 (2008), while others have argued that there is a distinction between overbreadth issues addressed by 35 U.S.C. § 112 and overbreadth issues addressed by 35 U.S.C. § 101, see, e.g., Lemley, Risch, Sichelman, & Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011).

In Mayo, the United States proposed an approach resembling this first position, arguing that “virtually any step beyond a statement of a law of nature itself should transform an unpatentable law of nature into a potentially patentable application sufficient to satisfy § 101’s demands” and that “other statutory provisions—those that insist that a claimed process be novel, 35 U.S.C. § 102, that it not be ‘obvious in light of prior art,’ § 103, and that it be ‘full[y], clear[ly], concise[ly], and exact[ly]’ described, § 112—can perform this screening function.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303 (quoting Brief for United States as Amicus Curiae).

The Supreme Court rejected this approach, reasonably believing that the eligibility exception for certain subject matter such as laws of nature serves an important purpose that isn’t currently captured by other statutory provisions.  This makes sense, as the eligibility exception can operate to find a patent claim to be ineligible as directed to subject matter which is prohibited by a bright-line exception (i.e. subject matter that cannot be the quid to support the quo of a patent), a situation which §§ 102, 103, and 112 are not designed to address.

However, because § 112 already operates to protect against overbroad claiming to at least some extent, it is less clear that an implicit exception to 35 U.S.C. § 101 is needed for this purpose.  Even if it is, and it serves to police overbroad claiming that isn’t addressed by § 112, it is clear that this implicit exception operating to screen out overbroad claims still must 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).  For example, it might be reasonable to narrowly construe the implicit exception to only apply in situations that § 112 is insufficient to address.

Moreover, in situations in which the bright-line prohibition is inapplicable, this implicit exception could reasonably be narrowly construed to require determining whether a claim “claim[s] 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), and evaluating “how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 566 U.S. at 88, 132 S.Ct. at 1303.

Conclusion

Overall, Supreme Court jurisprudence has evolved to define an implicit exception to 35 U.S.C. § 101 to screen out “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).  Although all eligibility jurisprudence is grounded in this concern, it encompasses both (i) rationales based on improper claiming at a level of abstraction that results in overbroad claiming disproportionate to the scope of disclosure (which can be characterized as finding insufficient quid to support the quo of a patent claim), and (ii) rationales based on a bright-line prohibition for specific subject matter, such as laws of nature and mathematical formula (which can be characterized as finding a patent claim to be directed to subject matter which cannot be the quid to support the quo of a patent claim).

Both of these situations fall under the umbrella of the implicit statutory exception to 35 U.S.C. § 101, and thus both 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).

The Court’s “bright-line prohibition … 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, and it would be reasonable in view of the required narrow construction to only “extend [this bright-line prohibition] to … those [concepts] plainly and unmistakably within its terms and spirit.” Phillips, 324 U.S. at 493.  The two-step analytical framework of Alice and Mayo is only designed to determine whether a claim is directed to a patent-ineligible concept barred by the bright-line prohibition, so it would likewise be reasonable to only apply the Alice/Mayo two-step test for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition, e.g. mathematical formulas and fundamental practices that are long prevalent.

Importantly, this would not foreclose the ability of the judiciary and the PTO to address issues raised by claiming at a level of abstraction that results in overbroad claiming disproportionate to the scope of disclosure.  This could be addressed under either 35 U.S.C. § 112 or 35 U.S.C. § 101, although it might be reasonable to narrowly construe the implicit exception to § 101 to only apply in situations that § 112 is insufficient to address.

Regardless, for concepts for which the Alice/Mayo test is not appropriate because they are not plainly and unmistakably within the terms and spirit of the bright-line prohibition, it would likely be reasonable to narrowly construe the implicit exception to require a determination of whether a claim “claim[s] 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), and an evaluation of “how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 566 U.S. at 88, 132 S.Ct. at 1303.

Narrowly construing the § 101 eligibility exception for abstract ideas is not only suggested by Supreme Court guidance regarding construction of statutory exceptions, but also could potentially allow for increased coherence and consistency while simultaneously serving to solicit further Supreme Court guidance on eligibility.  But most importantly, to do otherwise risks “abus[ing] the interpretative process and [] frustrat[ing] the announced will of the people.” Phillips, 324 U.S. at 493.

 

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 15 Comments comments. Join the discussion.

  1. Night Writer August 19, 2018 11:58 am

    Scope of enablement is the way to police over broad claims. 112. LizardTech lays out how.

    101 is nothing more than a pretext to enable judges to invalidate any claim they feel is not worthy. Disgraceful. Abstract was for something like make the same machine with fewer parts. Things that lack enablement.

  2. Anon August 19, 2018 12:04 pm

    Launch point into nonsense:

    this requires considering “how much future innovation is foreclosed

    How does one EVER determine how much of something that currently does not exist is within any current “container” to be evaluated?

    Does not the attorney in you rankle at the subjective, prospective and conjectural nature of what MAY happen (and since MAY necessarily includes “may NOT,” how is the Supreme Court’s limited authority due to present case or controversy even amenable to such “determinations”?

    Even if one could “foretell the future” and determine the level of future innovation, we are still left with undefined “how much is too much?” questions.

    Yet another Constitutional infirmity is whether or not this type of thing is even what the Judicial Branch should be doing at all with 35 USC 101, which contains NO hint from Congress that this is an area of law that Congress has (explicitly, as such sharing must be) shared its Constitutional grant of authority. This is NOT “interpretation” under any stretch of (reasonable) imagination.

    This is law writing of the “common law” law writing variety.

    This is something that Congress revoked in the Act of 1952.

    The triumvirate of infirmity remains:
    Void for Vagueness
    Lack of present case or controversy
    Separation of powers

    You want to stop frustrating the will of the people? You want to stop the abuse of “interpreting?”

    Let’s stop defending the indefensible.

  3. Night Writer August 19, 2018 12:25 pm

    The thing too about most of the information processing 101 cases is that the judges are essentially saying that structure doesn’t matter. They say things like making something more efficient doesn’t bring it into 101? So new functions only come with new structure and the judges ignore the structure and say things about an ethereal form of information.

    The current state of 101 is an outrage beyond measure. It violates common sense, science, and a system of jurisprudence. Basically the SCOTUS just said the patents are out of control so let’s put together a test a judge can use to invalidate any claim by private reasoning at SJ. An outrage beyond measure.

    And then you get justices like Sotomayor saying that we are becoming a barbarian culture. And yet Sotomayor is leading the way and acting as if a decision by the SCOTUS cannot be barbarian. Alice is lawlessness and the barbaric decision in patents since the founding of the USA. And then we have justices like Ruth Ginsburg that tell us things like patents are for organizing human behavior when the ignorant thing doesn’t even seem to realize that all new technology organizes human behavior. RBG’s willful ignorance is violence and barbarian.

    (by the way, I predicted Alice years before it was actually decided. I said the SCOTUS would figure out some way to allow judges to invalidate claims with SJ.)

  4. B August 20, 2018 11:04 am

    @ NightWriter “101 is nothing more than a pretext to enable judges to invalidate any claim they feel is not worthy.”

    EXACTLY. It’s a 103 rejection, except you don’t need to address all the claim limitations or need evidence

    ————————————–

    Jer – great article. Your point about Morse being “focused on many of the same issues that have since come to be associated with 35 U.S.C. § 112” is 100% correct. Morse is actually the origin of the single means claim.

  5. Night Writer August 20, 2018 3:33 pm

    The problem with Morse is that it has “any” as part of the claim. This is not enabled.

    There are issues with Morse that have never been resolved. But most of the references to Morse fail to understand it is a simple scope of enablement issue.

  6. anonymous August 20, 2018 5:16 pm

    Judge Plager’s dissent in Interval Licensing should be re-read by everyone. The Emperor has no clothes. Let’s stop pretending otherwise. Lawyers and judges should not continue to treat these doctrines as if they were gospel. There is a “definitional morass” that “cannot thus function as a valid rule of law”.

    We’re now a banana republic where every judge first determines the outcome he desires, then cites whatever he can to make it seem that’s not what he has done.

  7. B August 20, 2018 11:03 pm

    @ Anon ‘How does one EVER determine how much of something that currently does not exist is within any current “container” to be evaluated?’

    Simple: you ask a judge. They just know.

  8. Anon August 21, 2018 8:09 am

    B,

    Your answer, while granting that it was tongue in cheek, is the epitome of Void for Vagueness. Laws – even (especially?) Judge/Justice written laws – need to be able to be understood and followed before one gets to a point of “ask the judge.”

    (And that is not even bringing up the point that ‘ask the judge’ need be qualified to ‘ask a specific judge to get a specific desired answer // judges will give different answers to the same questions and same pattern of facts)

  9. Anon August 21, 2018 8:17 am

    Let me add that the judicial act of “Gisting” is tantamount to a direct violation of the directive of Congress in 35 USC 112.

    Nowhere did Congress ever give the inkling that it was the Judicial Branch that gets to “interpret” a claim by “Gisting.” The moment any one limitation is “dropped” so the judicial branch may deign to not be swayed “by a scrivener,” is the moment that it is no longer the ascribed inventor who was granted the authority/responsibility of setting out what the invention is.

    This judicial preoccupation with scriviner’s wording claims to “get around” what the Justices want to see in patent law is an ultra vires overreach of the Bench. It is NOT their job to keep “scriveners in their place.”

    The Constitution has allocated that authority to a different branch of the government.

  10. B August 21, 2018 9:28 am

    @ Anon ‘Your answer, while granting that it was tongue in cheek, is the epitome of Void for Vagueness. Laws – even (especially?) Judge/Justice written laws – need to be able to be understood and followed before one gets to a point of “ask the judge.”’

    Are you sure you’ve followed 101? Because the be all / end all answer to preemption in every circumstance for judges to date is “Ariosa.”

  11. Anon August 21, 2018 3:14 pm

    Because the be all / end all answer to preemption in every circumstance for judges to date is “Ariosa.”

    Just because such may be attempted to be said, does not make it either true or right.

    Yes, B, I am aware that you have been royally shafted. That just does not mean that I acquiesce.

  12. Paul Cole August 21, 2018 3:56 pm

    A VERY useful and important series of postings. Congratulations.

  13. Ternary August 21, 2018 5:53 pm

    Take a look at patent 10,057,057. Related to cryptography. Promptly rejected over Alice, and allowed due to an insignificant amendment. Basically the response to a Non-Final Office Action was used to educate the Examiner who then allowed the case.

    This case is not broadly claimed, no mathematical formulas are used in the independent claims, (but even if so, so what?). Still, predictably a 101 rejection was issued. Even now issued, it remains questionable if the patent will survive a patent eligibility challenge.

    My point: this type of invention, using mathematical modeling and implementation on a computer exists only in the context of a computer. The invention is enabled in the form of pseudo-code. To me there is no question that this is an invention “of our time.” To have discussions if this should or should not be patent eligible is not “of our time.”

    To imply or suggest that there is some truth or validity in judicial exceptions of patent eligibility is completely out of touch with where technology is nowadays and where it is going in an unstoppable manner. Congress should step in, if only to keep the patent system relevant to inventors.

  14. B August 21, 2018 8:45 pm

    @Ternary “This case is not broadly claimed, no mathematical formulas are used in the independent claims, (but even if so, so what?). Still, predictably a 101 rejection was issued. Even now issued, it remains questionable if the patent will survive a patent eligibility challenge.”

    This is Electric Power Group and Investpic. Taranto unlawfully created a categorical exception having nothing to do with the language of s101. Just try to resolve this with Berkheimer and Aatrix.

  15. B August 21, 2018 9:12 pm

    @ Anon “Just because such may be attempted to be said, does not make it either true or right.”

    That was my point. You speak of the way things should be (positive); I remark about how things are (normative). I’m not trying to be smarmy or disagreeable, and I’m 100% on-board with your position.

    “Yes, B, I am aware that you have been royally shafted.”

    Not me – my hardworking clients. That may change on round two. It’s been four months, two weeks, three days and nine hours since oral hearing. I called last Friday to hear that the case is still in panel. A new record for the CAFC. I suspect that all three judges on the panel cannot agree on any of several issues. Evidence is just so last Berkheimer, and so what if the claims have an undeniable advantage in lowering on-line latency, the PTO didn’t address the claims as a whole and the PTAB prejudiced my client!!!

    As an attorney you are aware that issues of fact and fact-based conclusions decided in other cases cannot be used against your client if your client wasn’t involved in said other cases.

    I referred to this in briefing as an improper application of collateral estoppel, but in reality it’s a violation of 5th Amendment due process. Once Berkheimer was decided en banc, the CAFC officially decided that a determination of whether something is well-known, routine and conventional is factual and not purely legal, the rules changed, and the PTO and CAFC don’t quite realize this yet.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website

Our website uses cookies to provide you with a better experience. Read our privacy policy for more information.Accept and Close