Posts Tagged: "Diamond v. Diehr"

Everybody in the patent world is talking about the latest atrocity from the Federal Circuit known as the American Axle decision, but few actually appreciate the true level of absurdity. Yes, 35 U.S.C. § 101 swallowed §§ 112(a), 112(f), 102, and 103 in a single decision (a new feat of judicial acrobatics), and Judges Taranto and Dyk displayed their technical ignorance. For example, in citing the Flook decision Judges Dyk and Taranto assert that Flook’s mathematical formula (known to a million-plus engineers as the steepest-descent algorithm) is a “natural law.” American Axle, slip op. at p. 19. Seriously? Are Federal Circuit judges so technically ignorant that the entirety of the country is doomed to believe such an idiotic fantasy that a particular adaptive mathematical algorithm associated with no natural law must be a natural law? 

The state of patent eligibility in America is shocking. Between the passage of the 1952 Patent Act and 2012, when the U.S. Supreme Court decided Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the patent eligibility threshold was an exceptionally low hurdle. A group of Senators and Representatives are currently considering a legislative fix to this patent eligibility debacle created by the Supreme Court and perpetuated by a Federal Circuit unwilling to define the contours of a sensible patent eligibility test. These talks, which are being held in closed-door roundtable format, will seek legislative language to introduce soon. It is anticipated that bills will be introduced in both the House and Senate sometime this summer. What those bills will look like seems to be genuinely up in the air—or perhaps it’s better to say open for discussion. If the discussion should turn to the one thing Congress could do that would have the most impact, the answer would be clear. In order to have the most immediate, positive impact Congress must expressly overrule Mayo. The root of all the patent eligibility evil lies with that single Supreme Court decision.

In Part I of my recent interview with IBM, I spoke with Mark Ringes, IBM Vice President and Assistant General Counsel, and Manny Schecter, Chief Patent Counsel, about the company’s commitment to innovation and approach to patenting. Our conversation took place at the IBM offices on Madison Avenue in New York City and touched on topics ranging from Section 101 to startups to the USPTO. Below, the conversation continues with an in-depth discussion of Section 101 law, software patents, and how the Federal Circuit and Supreme Court have contributed to the situation in which we find ourselves today.

contrary to popular notion, U.S. Patent No. 4,344,142 to James Diehr was not the first attempt to patent the idea of performing a real-time simulation of the Arrhenius equation using periodic temperature measurements of a rubber mold in order to cure rubber.  In fact, nearly two years prior to Diehr’s filing, Thomas Smith filed for a device that performed the very same algorithm using dedicated logic, which was granted as U.S. Patent No. 3,819,915. Smith was also granted U.S. Patent No. 4,022,555 for another rubber-curing device based on discrete logic. Similarly, William Claxton filed for patent protection in 1974 for an Arrhenius-based rubber-curing device using analog components, which issued as U.S. Patent No. 4,044,600.  

George Santayana is attributed with the aphorism: “Those who cannot remember the past are condemned to repeat it.” This is modern § 101 in a nutshell. Every horror we in the patent community are now experiencing under Alice/Mayo isn’t new, but a repeat of a drama played out long ago… Every great horror story has a monster… In the patent world, the monster is “invention.”

It’s been over eight years since the Supreme Court issued its Bilski v Kappos decision, over six years since the Supreme Court issued its Mayo v. Prometheus decision and over four years since the Supreme Court issued its Alice Corp. v. CLS Bank decision.  In case anyone missed it, each of these three landmark cases was decided based on evidence on the record.  Thus, the Supreme Court not only contemplated the need for evidence when determining patent eligibility for abstract ideas of man-made origin, but wholly embraced the practice. Yet despite the Supreme Court’s trio of evidence-based holdings, it was February of this year before a single three-judge Federal Circuit panel definitively ruled on the evidence issue in Berkheimer v. HP, and it was the end of May before a majority of the Federal Circuit signed on to the idea that determining whether a man-made something is well-understood (or well-known), routine and conventional is an issue of fact that should be based on objective evidence. That’s the better part of a decade of the Federal Circuit wandering the desert.

The recent Federal Circuit decision in Elbit Systems of America, LLC v. Thales Visionix, Inc. affirmed a final written decision issued by the Patent Trial and Appeal Board (PTAB), which upheld some claims in an inter partes review (IPR) proceeding challenging the validity of Thales’ U.S. Patent No. 6474159, titled Motion-Tracking and issued in November 2002. The patent claims a system for tracking the motion of an object relative to a moving reference frame using a first inertial sensor mounted on the tracked object, a second inertial sensor mounted on the moving reference frame and an element that receives signals from both inertial sensors to determine an orientation of the object relative to the moving reference frame. The resulting invention enables the use of inertial head-tracking systems for platforms including flight simulators and other vehicular applications.

In RecogniCorp, LLC v. Nintendo Co., the Federal Circuit affirmed the district court’s decision that RecogniCorp’s patent claims are directed to an abstract idea, and do not contain an inventive concept sufficient to make them patent-eligible under 35 U.S.C. § 101… Adding one abstract idea, such as math, to another abstract idea, such as encoding- decoding, does not make the claim non-abstract. A claim containing a mathematical formula can satisfy § 101 when it applies the formula in a structure or process which, as a whole, is performing a non-abstract function that the patent laws were designed to protect. Under Alice step two, a claim that is directed to a non-abstract idea is not rendered abstract simply because it uses a mathematical formula. However, the reverse is also true: A claim directed to an abstract idea does not automatically become patent eligible by adding a mathematical formula. The elements of the claim must be examined to determine whether there is an inventive concept beyond the addition of a mathematical formula, e.g. to be implemented on a computer. The claims must make it clear how the invention improves a specific technology, rather than simply stating to an abstract end-result.

As we approach the fifth anniversary of the Supreme Court’s decision this is what I know — Mayo is a lawless decision by a Court that has become too powerful. Mayo continues to wreak havoc on the patent system and innovators, and has resulted in patent protection being easier to obtain for cutting edge software, biotech, genetic and medical innovations in Europe, Canada, Australia and even China. Mayo is at the root of all of the problems facing the industry relative to patent eligibility, and if I could repeal only one Supreme Court decision in the patent space it would be Mayo. Indeed, the Supreme Court’s decision in Mayo is probably the worst, most wrongly decided case by the Supreme Court in the patent field ever. I say “probably” only because there are so many contenders to choose from that picking only one is truly difficult. Only the Supreme Court’s decision in eBay v. MercExchange comes at all close to Mayo in terms of damage to the patent system. Only the Supreme Court’s decision in Association of Molecular Pathology v. Myriad Genetics comes close to Mayo in terms of intellectual dishonesty.

Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof. These categories however have only rarely been used to limit patentablity. The Court has in fact described these terms as expansive. Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable. As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms. They come from Supreme Court precedent established BEFORE section 101 existed.

David Kappos, the director of the USPTO under President Obama from 2009 to 2013, recently called for congress to repeal section 101 of the patent act. According to Kappos, the current chaotic “I know it when I see it” 101 test that must be somehow consistently applied by thousands of USPTO examiners and hundreds of judges, means American inventors are better off seeking protection in China and Europe. While America “is providing less protection than other countries”, European countries are “putting their foot down in favor of innovation”.

Our Judicial Mount Olympus pays, at best, lip-service to Chakrabarty’s observation that, in enacting 35 U.S.C. § 101 in 1952, Congress chose the statutory classes (in Chakrabarty, referring specifically to “composition” and “manufacture” but which would be equally applicable to “apparatus” (i.e., machines) and “process”) to be given an “expansive” and “broad” construction. That command in Chakrabarty would suggest that rulings of patent-ineligibility under 35 U.S.C. § 101 would be the exception, not the rule. By contrast, this unending stream of patent-ineligibility rulings from the lower courts after Alice suggests a serious disconnect, showing no adherence to, or even observance of this command by Chakrabarty to construe 35 U.S.C. § 101 to be “expansively” and “broadly” inclusive, but to be instead very restrictive. As former Chief Judge Rader might characterize it, this restrictive two-part test of Alice has made 35 U.S.C. § 101 not a “coarse screen,” but instead an extremely “narrow funnel.” In other words, the draconian two-part test of Alice was broken from the start.