Unintelligible and Irreconcilable: Patent Eligibility in America

By Gene Quinn
November 4, 2018

Unintelligible and Irreconcilable: The Law of Patent Eligibility in AmericaThe Freeman-Walter-Abele test has been defunct for many years, dating back to when the United States Court of Appeals for the Federal Circuit finally did away with the test in In re Alappat, 33 F.3d 1526 (1994). Still, the Freeman-Walter-Abele test, named for the three cases contributed to the tortured test, remains an important part of software patent history in the United States for several reasons.[1]

Under the Freeman-Walter-Abele test some physical, tangible link to process steps of a claim needed to be present, which sounds eerily similar to the machine component of the Bilski machine or transformation test. Furthermore, under the Freeman-Walter-Abele test it was not enough that the patent claim be drafted as a method, but rather the process had to be linked to one or more elements of a statutory apparatus claim that itself would meet the requirements of section 101. Again, similarity with the machine-or-transformation test is again striking.

The Freeman-Walter-Abeletest was widely criticized (rightfully so) as being so flexible that any district court judge or three-judge panel of the Federal Circuit could apply it to justify any preconceived notions and ideological preferences.  Indeed, while the Freeman-Walter-Abele test was an attempt to interject objectivity into the patent eligibility inquiry, the test proved to be anything but objective. The FWA test was unworkable.

The FWA introduced uncertainty and unpredictability into matters of business and property law. It is axiomatic that business law must be certain to allow individuals and corporations to have confidence in decision making as they adjust and define their commercial affairs. It is essential that matters of property law be well-settled to the point of boredom so everyone can know what is owned and by who. The FWA test was an abysmal failure, which is why the Federal Circuit finally dismissed it, being no longer willing to perpetuate the charade.


While the presence of physical, tangible elements in a claim is no longer the touchstone of patent eligibility under the Alice/Mayo test, we have come full circle in many important respects. The two-part Alice/Mayo test is unintelligible and every bit as unworkable as the Freeman-Walter-Abeletest had become. Although it presents a framework that gives the appearance of objectivity, the truth is the framework allows any and every decision maker to reach whatever final determination they philosophically and ideologically are predisposed to reach.

The Alice/Mayo framework does not mandate a conclusion, it tolerates – even enables – whatever conclusion the decision maker prefers. This is allowed because of a universe of irreconcilable opinions from the Supreme Court. So bad is the situation that you can’t hope to know the likely result unless you know which precedential opinions the decision maker will apply. Unfortunately, there are precedential opinions that support every proposition, all of which remain good law and have not been overruled, at least according to the Supreme Court.

It is hardly shocking that the Federal Circuit is having an impossible time applying the test. The Supreme Court said in Diamond v. Diehr that it is improper to allow considerations of novelty to seep into patent eligibility determinations, but then that is precisely what the Court did in Mayo, but somehow we are all to pretend that Diehr hasn’t been overruled because the Supreme Court says they didn’t overrule Diehr. Perhaps they don’t understand the issues well enough to realize that the ruling in Mayo impossibly irreconcilable with Diehr. This is but one example. The Supreme Court overruled Diamond v. Chakrabarty in Myriad and we are similarly to operate under the charade that both are good law.

To make matter worse, the Supreme Court detests bright line rules, but the front lines of U.S. patent laws implemented by nearly 8,500 patent examiners most of whom are not attorneys. It is hardly shocking that the Patent Office is likewise having an impossible time applying the Alice/Mayo test.

The private sector is confused and uncertain, which creates an untenable climate for innovation in such critically important areas as artificial intelligence, blockchain technologies and autonomous driving, medical diagnostics – all critically important technologies for the economic future of America.

The constellation of the problems that lead to the demise of the Freeman-Walter-Abele test are again present, this time it is a Supreme Court test that has led us into the morass. Unfortunately, the Supreme Court cannot be depended upon to come to their collective senses. The Justices actually believe their patent jurisprudence is consistent (which it isn’t) and they seem simply incapable of appreciating the havoc they have wrought. That is why so many in the industry believe the solution requires a legislative fix.

Meanwhile, startup companies in China are receiving more funding in the area of artificial intelligence development than startup companies in the United States, which should be a warning sign – a giant red flag waving. This is not to suggest that Chinese startups are unworthy of investment, they absolutely are worthy of investment and smart money is leaving the United States and heading to China and Europe where the climate for startups that require heavy R&D budgets is far friendlier. It should, however, be a wake-up call to American leaders. The future of the high-tech global economy is finding it easier in Europe, and even in a tightly regulated single-party economy such as China.

A decade ago it would have been unthinkable, even laughable, that high-tech startups in a field as critical as artificial intelligence would face greater headwinds in America than startups in places like Europe and China. But a decade ago software was largely only meaningfully protectable in the United States. As the rest of the world has increasingly followed the historical American tradition of a broad view of what is patent eligible, our Supreme Court has taken us in the opposite direction.

Today the law of patent eligibility is a mirror image of what it was just a decade ago. Less and less is patent eligible in the United States, while the rest of the world continues to expand their view of what can be and should be patent eligible. That is why Europe and China are poised to win the future, while America can expect to see its economic fortunes decline relative to other countries that actually value innovation.


[1] In re Freeman, 573 F.2d 1237 (CCPA 1978); In re Walter, 618 F.2d 758 (CCPA 1980); and In re Abele, 684 F.2d 902 (CCPA 1982).


Image Source: Deposit Photos.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 17 Comments comments. Join the discussion.

  1. Anon November 4, 2018 1:05 pm

    Three words:

    Void for Vagueness.

    (and yes, this DOES apply outside of criminal law, most especially for property, being the third leg of “Life, Liberty and Property.”

  2. BP November 4, 2018 3:37 pm

    Excellent observations!

    Part 1: Freeman-Walter-Abele and Mayo/Alice
    (1) determining whether the claim recites an “algorithm” within the meaning of Benson,
    [1] First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts

    Part 2: Freeman-Walter-Abele and Mayo/Alice
    (2) determining whether that algorithm is “applied in any manner to physical elements or process steps.” Abele, 684 F.2d at 905-07.
    [2] 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.”

    Some Examiners/PTAB panels have reached absurd levels in contorting the factual holdings of Abele. It is certainly sad how they “invent” things that were never said to enforce policy. Scientific/diagnostic digital image processing as in Abele is no longer eligible, “X-ray attenuation data” are just “data” as in EPG. 35 USC 101 rejections rely on unreasonably broad interpretations to apply EPG, they then carry those interpretations over to 102/103. The search for “abstract” under 101 has impacted BRI.

  3. Ternary November 4, 2018 4:44 pm

    Great article Gene, as always.

    The problem was created by the Supremes and there is no rational solution to their own created problem. Words in SCOTUS decisions have no longer their common meaning and can mean whatever one wants it to be. Applying SCOTUS decisions is becoming more and more like exegesis of scripture.

    In re Alappat, 33 F.3d 1526 (1994) held:
    “Under Benson, Flook, and Diehr the posing and solution of a mathematic function is nonstatutory subject matter. It is nonstatutory even if the particular mathematics is limited to performance in digital electronic circuitry or a general purpose digital computer, even if the mathematic operations are alleged generally to have some application in one or various technologies, and even if the solution of the function is said generally to “represent” something of physical or technologic relevance.”

    This, while the next sentence maintains:

    “On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter.”

    How to reconcile: “even if the mathematic operations are alleged generally to have some application” and “in which a mathematic operation is practically applied.” They cannot be reconciled. They are irreconcilable. SCOTUS went off the rails with this in Benson and it has gotten worse ever since. The CAFC is left to pick up the pieces and it cannot, because of the logic defying and inconsistent SCOTUS decisions. Something cannot be abstract in a first instance and not abstract in a second one. To bridge that chasm, SCOTUS came up with “directed to.” That is an invention may be directed to an abstract idea, but is not abstract (or it may be). It is such nonsense that attorneys now are able to allege without any sense of shame or irony that measuring a heartbeat is an abstract idea and a Judge will accept that argument AND DEFEND IT. It is a world gone mad.

    The Supreme Court had it right when they held: “We have also cautioned that courts `should not read into the patent laws limitations and conditions which the legislature has not expressed.'”), quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199, 53 S.Ct. 554, 561, 77 L.Ed. 1114 (1933).”

    Mayo/Alice is in direct contradiction with the current state of technology. SCOTUS overreached and has created a mess that is unsolvable. Congress should step in.

  4. Curious November 4, 2018 8:14 pm

    the truth is the framework allows any and every decision maker to reach whatever final determination they philosophically and ideologically are predisposed to reach
    That’s the truth. The Federal Circuit can choose to go whatever way they want and plenty of case law exists to support whatever conclusion they arrive at. There is no “patent eligibility law.” There is only pro-patent eligibility panels and anti-patent eligibility panels. Whether your patent survives or not is solely based upon the Federal Circuit panel you get and their preconceived notions as to whether your technology is patent eligible or not.

  5. Concerned November 5, 2018 12:57 am

    Curious: Agree!. The examiner upon my examination conveniently overlooked the “concrete steps that solve a real problem” portion of Alice and EPG to arrive at dead on arrival.

    It is the perfect storm to award patents based on (fill in the blank but exclude rule of law as a choice).

  6. B November 5, 2018 8:11 am

    @ Gene

    Amazingly, I’ve recently discovered that Graham v. Deere speaks to this problem, although the SCOTUS doesn’t admit the insanity it caused pre-1952 Patent Act. It does bad-mouth the word “invention” though.

    @ Anon: “Void for Vagueness.”

    Without doubt the Vagueness doctrine applies as the outcome of the Alice/Mayo test is completely arbitrary. FYI, not a single 101 case has survived the CAFC since Exergen. The CAFC ignores its own law, the APA, the language of 101 – whatever it wants. The CAFC’s reputation is below the gutter.

  7. EG November 5, 2018 8:30 am

    Hey Gene,

    Couldn’t agree more with what you’ve said in the article. The nonsensical and broken Mayo/Alice framework is the “Ouija board” of patent-eligibility law. That SCOTUS allows this chaos created by them to continue unabated is appalling arrogance on their part.

  8. B November 5, 2018 10:13 am

    @ Ternary “The Supreme Court had it right when they held: ‘We have also cautioned that courts `should not read into the patent laws limitations and conditions which the legislature has not expressed.'”

    And yet, the Supreme Court did exactly this in Mayo and Alice by making “invention” part of the test for patent eligibility.

  9. B November 5, 2018 11:06 am

    @ Gene “While the presence of physical, tangible elements in a claim is no longer the touchstone of patent eligibility under the Alice/Mayo test, we have come full circle in many important respects. The two-part Alice/Mayo test is unintelligible and every bit as unworkable as the Freeman-Walter-Abele test had become.”

    One problem I see that every claim that uses a mathematical expression necessarily preempts it to some degree. Unfortunately, there is no standard as to what level of preemption is okay. Lesser minds, such as those responsible for the Ariosa decision, have removed the idea of preemption altogether from 101.

  10. Anon November 5, 2018 9:07 pm

    One problem I see that every claim that uses a mathematical expression necessarily preempts it to some degree

    Let me modify that in a small but important manner:

    Every claim preempts something.

    That is what claims do.

    That is what claims are meant to do.

    The something preempted is the claim – as a whole.

  11. step back November 5, 2018 10:58 pm


    You ask the SCOTUS justices to come to their senses.

    Unconstitutional as it is, Alice/Mayo “is” their sense of things.
    They have arrived.

  12. Anon November 6, 2018 11:12 am

    step back,

    THAT is why Congress needs to employ their Constitutional power of jurisdiction stripping.

    The Supreme Court in their hubris have forgotten that they too are a branch of the government under the Constitution. They have become so accustomed to being able to “interpret” what the Constitution (or any law) means, that they have lost sight of the difference between interpretation and legislating from the bench.

    Further irony here, is that their “aim” in dealing with patent law is geared to what they perceive as “mere scriviners” — at the same time that THEIR scrivining is absolutely atrocious (and creates OTHER Constitutional infirmities).

  13. step back November 8, 2018 12:08 pm

    Anon @13,

    Fully agree with you.
    SCOTUS has by self-proclaimed fiat extended its power well beyond that granted to them by the US Constitution.

    The weakness lies in Congress. Few there have any understanding of science let alone the invention process and how that affects our American economy. We are not going to become great again if we kill off all our Thomas Edisons, Alexander Bells, etc. (and yes I know about tainted true histories of those ‘legends” –it’s meant metaphorically).

    As noted elsewhere, a few new “scientists” have joined the ranks of Congress in the midterms. Maybe one of them will be a champion for the much maligned American inventor.

  14. LazyCubicleMonkey November 9, 2018 11:00 pm

    I think you’re placing waaaay too much importance on patent law when it comes “winning the future”.

    While I can’t speak for China, (software) startups in the US tend to go with the facebook mentality of “move fast and break things” – a mentality that overlooks patents (and patentability entirely).

    If you’re talking about venture capital (as opposed to the entrepreneurs starting the start-up), then the calculation has indeed changed a whole lot in the last decade – but I’d still argue that patents (and patentability) isn’t at the forefront of this change. I’d venture that the biggest change is mindset – startups of the last decade mostly tried to be the next Facebook/Uber/etc. Today’s startups are trying to be sold to one of the large tech companies for their payday.

  15. Anon November 13, 2018 7:42 pm


    My client book begs to differ.

    While I fully grant that it remains the providence of the client to decide whether or not to protect innovation by way of patents (or by other means, such as by Trade Secret), your rather conclusory assertion (and attempts to speak for the entire industry) simply are not born out by reality.

    Sorry, but once again I find you merely mouthing the Dogma and Kool-Aid of the anti-patentists.

  16. LazyCubicleMonkey November 13, 2018 9:34 pm

    Perhaps I should’ve qualified my statement better. These are general trends – not a hard & fast rule.

    Your dogmatic response regarding that it’s all about the patents goes both ways – if we’re using anectodal evidence, I have friends that have hopped around from start-up to startup in the Bay Area and their goal was indeed to get sold to one of the large tech companies. Patents were definitely not at the forefront of their work.

  17. PTO-Indentured November 14, 2018 10:11 am

    SCOTUS U.S. Inventor-Quashing Credo — Interpet Patent Law Until:

    Vague = Vulnerable = Defenseless = Patentee Loses Patent / Pays all attorneys fees (profession vanquished).

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