The Broken Patent-Eligibility Test of Alice and Mayo: Why We Urgently Need to Return to Principles of Diehr and Chakrabarty*

By Eric Guttag
September 25, 2014

Chief Justice Warren Burger (L) authored Diamond v. Chakrabarty, while then Justice William Rehnquist (R) authored Diamond v. Diehr.

For those in the patent law world who may have been hiding under a rock, we have been flooded recently with lower court rulings on patent-eligibility under 35 U.S.C. § 101 after Alice Corp. v. CLS Bank International. Like a tsunami, these lower court rulings are uniformly sweeping away any patent in its wake as being directed to merely an “abstract idea” that doesn’t provide “something more.” Those quoted words are taken from Our Judicial Mount Olympus’ two-part test in Alice which is derived largely in part from the so-called “framework” of Mayo Collaborative Services v. Prometheus Laboratories, Inc. for separating patent-ineligible “claims to laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” See Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International*

Briefly, the two-part Alice test says: (1) “determine whether the claims at issue are directed to one of those patent-ineligible concepts”; and (2) “search for the ‘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.” In every court case I’ve read so far, all of those lower court rulings have dogmatically (and restrictively) applied this two-part Alice test to rule the patent claims on systems and/or methods (all involving so-called “business methods”) to be patent-ineligible under 35 U.S.C. § 101. In fact, I’ve only seen one reported PTAB decision (U.S. Bancorp. v. Solutran, Inc.) where patent claims on systems and/or methods involving these so-called “business methods” passed muster under this two-part Alice test.

That all these lower court rulings have found patent claims on such systems and/or methods to be patent-ineligible might be sheer coincidence, but I think not. Instead, in my opinion, it reflects an utterly broken test for judging patent-eligibility under 35 U.S.C. § 101, one where Our Judicial Mount Olympus: (1) provides no objective standard for judging patent-eligibility, especially for patent claims relating to systems/methods involving data processing/data management (which are often characterized as “business methods”); (2) fails to define key terms of this Alice test (i.e., what do “abstract idea” and “something more” mean?) other than by analogy to patents in prior cases; (3) fails to provide any meaningful and logical guidance for how to reach the “patent-eligibility zone,” especially for systems/methods involving these so-called “business methods”; (4) provides conflicting patent-eligibility standards with respect to their own prior precedents, most notably those of Diamond v. Diehr and Diamond v. Chakrabarty; (5) is “tone deaf” to Congress’ intent by brazenly overreaching its constitutional authority to interpret (not make) law, including asserting “policy” considerations to support the two-part Alice test that are the province of Congress (not Our Judicial Mount Olympus), as well as having no support in the factual record before it; and (6) focuses on the so-called “inventive concept,” and thus improperly comingles patent-eligibility under 35 U.S.C. § 101 with what is more appropriately an issue of patentability under 35 U.S.C. § 102 and/or 35 U.S.C. § 103.

My indictment of the two-part Alice test can largely be found in the lower court rulings that have applied it, two of which, Planet Bingo, LLC v. VKGS LLC and Buysafe, Inc. v. Google, Inc., were Federal Circuit panel decisions authored by Judge Taranto (one a two-judge panel decision from which former Chief Judge Rader was dropped from the panel). But most telling for my points (1) through (3) above for why the Alice two-part test is broken is a motion to dismiss ruling by the Central District of California in Eclipse IP, LLC v. McKinley Equipment Corporation where Judge Wu held a communications method for computer-based notifications patent-ineligible as being essentially no more than an “abstract idea” that was implemented “in connection with” a general computer system:

  1. Provides no objective standard for judging patent-eligibility. In Eclipse IP, Judge Wu says the “the two-step [Alice] test may be more like a one step test evocative of Justice Stewart’s most famous phrase,” citing and quoting Justice Stewart’s concurring opinion in Jacobellis v. State of Ohio: “I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description [referring to “obscenity”]; and perhaps I could never succeed in intelligibly doing so. But I know when I see it .   .   .   .” In fact, Judge Wu further says “so far, the two-part test for identifying an abstract idea appears to be of limited utility.” In other words, the two-part Alice test is completely subjective.
  1. Fails to define key terms of this Alice test, especially what an “abstract idea” and “something more” in this test mean, other than by analogy to patents in prior cases. In Eclipse IP, Judge Wu also says “comparisons to previously adjudicated patents – or more precisely, to past cases’ characterizations of those patents – have done the heavy lifting,” citing Bilski v. Kappos. Judge Wu also cites Alice where Our Judicial Mount Olympus said: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” In other words, other than by resort to analogy to specific patented inventions in prior cases, there is no definition of what “abstract idea” or “something more” means in the Alice test.
  1. Fails to provide any meaningful and logical guidance for how to reach the “patent-eligibility zone.” Perhaps “tongue in cheek,” Judge Wu makes reference to Justice Holmes oft-quoted phrase “[t]he life of the law has not been logic: it has been experience.” (By the way, I’m not a fan of Justice Holmes for this very reason, as for example, his decision granting baseball an exemption from the anti-trust laws as being a “profession,” not a “business.”) But without some meaningful and logical guidance for how to reach the “patent-eligibility zone,” and especially some concrete examples of what are not “abstract ideas,” as well as what does constitute “something more,” us “mere mortals” are left with entirely unhelpful (negative) analogies for reaching the “patent-eligibility zone.” So far, Our Judicial Mount Olympus has provided no such concrete examples in Bilski, Mayo or Alice that lead the lower courts to anything other than patent-ineligibility.

[Varsity-3]

With respect to my point (4) above, no matter how much Our Judicial Mount Olympus says their two-part Alice test (as well as the “framework” from Mayo for that test) is consistent with their prior precedent, especially Diehr, that’s simply disingenuous sophistry. There is absolutely no logical or objective way to reconcile the two-part Alice test with Diehr’s principles for patent-eligibility:

In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. (Emphasis added.)

The first part of the Alice test does exactly what Diehr’s principles explicitly say not to do: dissect the claims to find out whether it contains an “abstract idea.” In fact, Diehr warns very clearly about the danger of carrying out the first part of the Alice test with respect to process/method claims:

This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter. (Emphasis added.)

With respect to my point (5) above, the so-called “exceptions” (including “abstract ideas”) to patent-eligibility expressed in Bilski, Mayo, and Alice are nowhere to be found in 35 U.S.C. § 101. In my opinion, that is not accidental, but is, in fact, the intent of Congress to leave those so-called “exceptions” out when 35 U.S.C. § 101 was enacted in 1952. Frankly, I grow weary of Our Judicial Mount Olympus, and now the Federal Circuit in Buysafe woodenly incanting that “§ 101 and its predecessors . . . for more than 150 years” have been interpreted to “‘contain[] an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” That suggests, instead, that Our Judicial Mount Olympus is completely “tone deaf” to Congress’ intent as to what is and is not patent-eligible. Indeed, subsequent to Bilski and Mayo, Congress has, in fact, spoken on what so-called “business methods” may be patent eligible in the AIA, and has said (explicitly) that only “business methods” involving “tax avoidance schemes” are to be excluded. Such blithe ignorance by the Royal Nine of Congress’ intent is not how a principled judiciary operates, but is, instead, unprincipled judicial activism (at best), and a brazen overreach (at worst) by the Royal Nine into Congress’ constitutional authority (and responsibility) to “Promote the Progress of the Useful Arts.”

With respect to my point (6) above, the second part of the Alice test (i.e., the search for the “inventive concept”) essentially (and in my opinion improperly) commingles patent-eligibility under 35 U.S.C. § 101 with the issue of patentability that includes novelty under 35 U.S.C. § 102, as well as obviousness under 35 U.S.C. § 103. See Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International* In fact, the second part of the Alice test simply encourages the courts (as well as patent examiners at the USPTO) to engage in unrestricted dissecting of the claimed invention into its component parts in search of that illusive “inventive concept” which Diehr (wisely) warns shouldn’t be done. Even worse, several lower court opinions after Alice have tried to resolve what that “inventive concept” is early in the litigation process (e.g., at summary judgment) with minimal (or possibly no) factual record to establish (and especially support) what is really “known” or “old” in the art.

In addition, 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.

The so-called “policy” to support the restrictive patent-eligibility standard of this two-part Alice test is also all too frequently based upon sheer speculation, and is certainly not based on anything within the factual record of the Alice case, what Hal Wegner rightly calls the “mythology.” One of those “myths” that is repeated in the Buysafe case is that patents “inhibit research.” As Hal Wegner correctly observes: “The idea that patents block research is contrary to two centuries of case law dating back to Joseph Story [referring to Story’s 1813 cases of Whittemore v. Cutter and Sawin v. Guild]: There is a fundamental right of the public to experiment on a patented invention.” (Hal’s observation is also ironic, given that Our Judicial Mount Olympus in Alice, as well as the Federal Circuit in Buysafe also refer to the so-called “exceptions” to patent-eligibility (e.g., “abstract ideas”) as being around for 150 years or so). Even more problematic is that the factual record for patents allegedly “inhibiting research” is nowhere to be seen (or referred to) in these cases that rely upon this “mythology.”

Those of us who even suggest that the Our Judicial Mount Olympus has misinterpreted what patent-eligibility means under 35 U.S.C. § 101 with the broken two-part Alice test, or especially has overstepped its constitutional authority by doing so are often told to stop griping and deal with this test. There are two problems with that comment. First, no one is above the law, and that includes the Royal Nine. Constitutional overreach (as well as statutory misinterpretation) is no less abhorrent when it is committed by our judiciary, and that includes the Royal Nine engaging in what I (and others) believe to be unprincipled judicial activism. Put it this way: if Our Judicial Mount Olympus is above such criticism, then who, pray tell, can tell the Royal Nine that they are not “infallible”?

Second, if the only result that any lower court can come to by applying the two-part Alice test is patent-ineligibility, how are we to logically (and especially rationally) counsel our clients on how to claim their data processing/data management technology so that it has any chance (much less a “reasonable chance”) of reaching the “patent-eligibility zone”? Telling us to focus on Diehr’s rubber molding process is small comfort, given that the two-part Alice test ignores the “prime directive” of Diehr (i.e., don’t dissect claims into allegedly “old” and “new” components), as well as having no rulings yet from the lower courts (only one PTAB decision) that apply the two-part Alice test so as to reach “patent-eligibility zone.” In other words, if all we’ve got now for how to apply the two-part Alice test is by analogy to patents in prior cases (as Judge Wu suggests in Eclipse IP is what we’re currently forced to do by the Alice test), not having any post-Alice court case that provides at least one “success story” for how to reach the “patent-eligibility zone” leaves us completely adrift with no positive point of reference, only many negative points that don’t get us to that “zone.”

Accordingly, in my opinion, the two-part Alice test is so completely broken as to be unsalvageable, unless all you’re looking for is an endless stream of patent-ineligibility decisions that will provide absolutely no objective guidance whatsoever on how to reach the “patent-eligibility zone.” Instead, what is required is a return to the principles enunciated in Diehr and Chakrabarty: (1) patent-eligibility should be judged by what is defined by the claims as a whole (from the Diehr standard) and which absolutely prohibits the claim dissection which is rampant in Alice, as well as Mayo; (2) the claimed subject matter will be presumed to be patent-eligible if it falls within at least one of the current statutory classes (from the Chakrabarty standard), and without regard to whether its characterized as encompassing an “abstract idea,” “product of nature,” “business method,” “software,” etc., unless the claimed subject matter “as a whole” merely defines a “law of nature, natural phenomena, or abstract idea” (from former Chief Judge Rader’s standard in Research Corp. and Ultramercial that the claimed subject matter must be “manifestly abstract” to be patent-ineligible under 35 U.S.C. § 101); and (3) without respect to what the so-called “inventive concept” is, i.e., leave that issue to current 35 U.S.C. §§ 102/103 to deal with. In other words, patent-eligibility will be an objective “coarse screen” as former Chief Judge Rader correctly suggests (and Chakrabarty says) 35 U.S.C. § 101 should be, not a subjective “narrow funnel” as has happened with the broken Alice test.

Unfortunately, I see no current hope that the Royal Nine will recognize the brokenness of two-part Alice test, and, in fact, may prefer that test with all its “subjective” brokenness. (From the first two decisions by the Federal Circuit in Planet Bingo and Buysafe, I see nothing to suggest that the judges of the Federal Circuit will do anything but to meekly comply with the current mandate from the Royal Nine to apply that two-part Alice test restrictively.) That leaves Congress to tell the Royal Nine to “cease and desist” from engrafting onto the patent-eligibility standard any “exceptions” not explicitly stated in 35 U.S.C. § 101, and to interpret patent-eligibility more expansively and generously according to the principles of Diehr and especially Chakrabarty. Given that Congress is more politically focused on the so-called “patent troll” problem, our hope for relief from “Alice in Patentland” by the federal legislature may be dim, but is certainly more promising than expecting Our Judicial Mount Olympus to change course. (The last time Our Judicial Mount Olympus reversed course from a restrictive patent-eligibility standard under 35 U.S.C. § 101 was the time between Parker v. Flook and Diehr, or 12 years, i.e., over a decade.) So at least asking Congress for relief from “Alice in Patentland,” even with less than cheery prospects, is certainly better than a “snowball’s chance in hell” of getting the Royal Nine to change its mind anytime soon. Frankly, I find enduring (for potentially a decade or so) the broken two-part Alice test for patent-eligibility an even less palatable alternative.

 

*© 2014 Eric W. Guttag. Posted September 25, 2014 on IPWatchdog.com.

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

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 23 Comments comments.

  1. Anon September 25, 2014 10:38 am

    One of the largest myths is the purely speculative, forward-looking, “broad patent” MIGHT inhibit progress, and thus a “constitutional” issue is reached on purely speculative reasoning.

    The fact that this is policy driven is easily seen when viewed with the Court’s otherwise reticence with stepping into the future, such as with issues of standing and the case-or-controversy notion of NOT providing advisory opinions.

    For more, see http://law2.umkc.edu/faculty/projects/ftrials/conlaw/caseorcontroversy.htm

    The abuse of power is no less when the entity is the Supreme Court then when the entity is any body that goes beyond its authority. Power to make law, when it is obfuscated as merely “interpreting” the law is power abused.

    How many that say, “Well, it is the Supreme Court” would be willing to say the same thing if a decision like Dred Scott were rendered today? While invoking a case on race may seem to be overtly inflammatory, I would point out that it is the principle involved – and that Justice Taney also penned the Morse case, and that a recent academic paper has identified similar critical judicial activist elements that span the centuries with harmful effects on patent law.

    I would posit that more scrutiny, not less, be applied in such situations of misapplied power.

  2. Anon2 September 25, 2014 1:00 pm

    Excellent article.

    BTW Articles and comments on this site are so much better than the anti-patent rights rants on the “leading” patent blog.

    Keep it up!

  3. EG September 25, 2014 2:59 pm

    Anon2,

    Thanks for the kind words. I think I know which “leading” patent blog you’re referring to and do occasionally comment on it, although I’m often hesitant to do so because it often not a debate but as you refer to it, a “rant.” I don’t mind folks disagreeing with my views/positions/opinions , but I’m not fond of “character assassination” which even that “leading” patent blog is finally starting to “tone down.”

  4. Steve September 25, 2014 7:04 pm

    Thanks Eric — one more in a long list of great articles.

    Can you kindly point me to the U.S. Bancorp v. Solutran PTAB decision you reference?

    Thanks!

  5. EG September 25, 2014 8:03 pm

    Hey Steve,

    Thanks for the kind words. I first heard about the Solutran case from a Patent Docs article written by Mike Borella: http://www.patentdocs.org/2014/09/us-bancorp-v-solutran-inc-ptab-2014.html .

  6. NWPA (Night Writer Patent Attorney) September 25, 2014 10:53 pm

    I think one aspect of this that is overlooked is that Alice really does at least modify Graham if not over-turn Graham. When client counseling I used to get a search and then talk to the inventor regarding 103. Now, one must modify that conversation with whether or not the judge will find it obvious, which may mean they use their Alice powers to invalidate the claim.

    To my mind the problem with that other blog is that it appears to me there are paid bloggers on there that just post and post in what appears to be a full-time job.

  7. step back September 26, 2014 6:31 am

    Eric,

    Your article mentions the word “under” several times.
    Are we “under” a rock?
    Is there eligibility “under” 101?

    You forgot to ask if we are under some Salem witch trials spell in granting to the fallible folk-miesters at the Supreme Court unchecked powers to step “over” their boundaries? To step “outside” the limited powers granted them by the US Constitution? To trample underfoot the plain language of 35 USC 101 and to add to it words that were never there? (And still aren’t there) To ignore the statutory right of the inventor under 112 to determine by the totality of his claim, what he regards as his invention? To be totally clueless on what an invention is, what a “computer” is and what “science” is. To destroy the English language? (The word “computer” is generic for all computers. WTeff is a “generic” computer?)

    The fallible folk-miesters of the Supreme Court are not demi-gods living on Mount Olympus. They are more like clueless country cousins who crawled out from “under” an 18th century rock. Let’s give anti-credit to where anti-credit is due.

  8. EG September 26, 2014 8:00 am

    To all:

    Application of the broken Alice test is only getting worse. Here’s another case (McRO v. Activation Publishing) by Judge Wu which ruled patents on an “automatic lip synchronization for computer-generated 3D animation using rules-based morph target approach” a patent-ineligible “abstract idea”: http://patentlyo.com/media/2014/09/BlizzardPatentInvalid.pdf . Wu even admitted that these patents “do not preempt the field of automatic lip synchronization for computer-generated 3D animation,” but nonetheless (do preempt the field of such lip synchronization using a rules-based morph target approach.” Also, Wu said: “But the section 101 defect does not mean the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea.” The Alice test has truly “jumped the shark.”

  9. EG September 26, 2014 8:03 am

    SB,

    I hear you. But most believe my characterization of SCOTUS as “Our Judicial Mount Olympus” appropriate. Just remember that the Greek gods were highly fallible and were also prone to create a chaotic mess on Earth.

  10. Gene, but not Gene Q September 26, 2014 8:29 am

    I’d like to see Alice discussions focus on the crux of the matter—claim drafting. Too many computer-implemented invention claims are directed to what a user sees on a computer monitor, what the inventions DOES, the results of the invention, etc., which IS an abstraction and monopolizes the field for the thousands of other computer-implemented algorithms that can achieve the same.

  11. EG September 26, 2014 8:31 am

    NWPA,

    It’s interesting that you bring of the impact of Alice on Graham. My primary concern with 1st part of the Alice test is that it completely violates the principle of Diehr that the claimed invention must judged “as a whole” for patent-eligibility under 35 USC 101. The Diehr principle is derived first from the 35 USC 112 which essentially says the claims define what the invention is; that’s even more so under the AIA where what the claimed invention is also determines what your effective filing date.

    The second component of the Diehr principle, and where Graham comes is, is that 35 USC 103 requires that claimed invention be assessed for obvious “as a whole.” That doesn’t mean, like Alice has improperly done, that you look for the “inventive concept,” but it does mean that you must evaluate/construe/judge the claim consistently (and the same) across all the validity statutes, i.e., Sections 101, 102, 103, and 112, as well as for infringement purposes. In other words, if you are commanded by 35 USC 103 to evaluate/construe/judge the claimed invention for obviousness “as a whole,” you must likewise evaluate/construe/judge the claimed invention “as a whole” (and without dissection as Alice and Mayo have improperly done) for patent-eligibility under 35 USC 101. That’s what the Diehr principle recognizes at least implicitly, if not explicitly.

  12. Anon September 26, 2014 8:41 am

    NWPA @ 6,

    Graham is not so much overturned as it is rendered moot.

    As is the Act of 1952.

    This may be a distinction without a difference as to the ends achieved, but the path of the means should not be so quickly overlooked, as it is the path that highlights the fact that the Court cannot be correct in its path taken.

    The 101 that the Court speaks of does not align with the 101 that Congress wrote in 1952. This is evident from the fact that Congress created 103 from the previous “words” of law that also spawned the 1952 version of 101.

    The somewhat “new” Supreme Court concoction of “jurisprudential stare decisis” – term of recent and certain vintage and uncertain sturdiness – cannot ignore the fact that the Court is playing fast and loose with pre-1952 decisions that address a different set of laws.

    Any Court decision addressing the law of 101 from before 1952 is simply not addressing the same law of 101 as the law after 1952, and it is plain legal error to simply assume that the 1952 cases carry over.

    In other words, this is bootstrapping of the worst kind. This is not only re writing of the law, but re writing of history by ignoring the historical fact that Congress was not happy with the way that the Court was interpreting the words of Congress and was so unhappy that it took the steps to eliminate the Court ability to use common law to define “invention,” or “inventive step,” or “gist of the invention,” or “patentable novelty” or “the new of 101” or any number of a dozen other variants that the courts were creating in order to limit patent rights and Congress chose instead to use the newly created 103 instead of all of the judicial interference.

    Statutory interpretation cannot happen in a vacuum and those words of 101 that exist after 1952 cannot simply be assumed to have the same meaning that the Court wants them to have in a pre-1952 sense when one understands where the new section 103 came from and what that section is for.

    When a law is “interpreted” out of existence, the interpretation cannot be correct. So even though it can be recognized that “business methods” have not been explicitly written out of patent coverage with the recent line of Supreme Court cases (as the minority in Alice would have it), a far more pernicious grab of power has in fact taken place, as the words of Congress have been “interpreted” to remove their meaning for all intents and purposes and to empower the judiciary with the same common law power that Congress removed when it changed the prior-1952 “101 version” of law with the combined 1952 Act and creation of 103 and separation from the new 101 of that new section of law.

  13. ScottE September 26, 2014 8:51 am

    Eric-Way to call a spade a spade. The Supreme Court does not believe in what I have always viewed as one of the most basic tenets of patent law and one of its strengths: that all inventions should be treated equally. They have trampled over this principle using 35 USC 101 as a bludgeon to render unpatentable any inventions they see as disruptive or anti-competitive or that they just do not understand. If an invention is new, useful and nonobvious it should be patentable no matter what form it takes or what field it arises from.

  14. Anon September 26, 2014 8:55 am

    Gene, but not Gene Q at 10,

    All claims “abstract” as you indicate. That is the nature of language. Try as you might not to dos o, try as you might to nail down your claim to be the ultimate singular picture claim and you will still fail to have not abstracted to a certain degree, because language itself is an abstraction – as it must be as it is a tool of describing something.

    Not understanding this is what leads to the rabbit hole of legal logic you see unfolding all about you.

    Your concern is simply misplaced. You apparently want the equivalent different means of computer implementation to not be covered by a computer invention. That is not what patent law provides. Your concern is not that there is no invention, but rather, that invention is too easy. This too is reflected in the Flash of Genius mindset that 103 was created to eliminate. The point of the matter with computer invention is the plain fact that invention has been made extremely easy.

    But this fact is not within the domain of the judiciary to reset the law based on policy.

    Blatant misapplication of law – even if you believe in the ends achieved should never ever be embraced. Yes, the ends achieved may be “good” today, but who knows what tomorrow will bring and once you have the precedent of ignoring the parameters of how the law is to be written, that same path can be – and will be – taken for other “justifiable” ends.

  15. EG September 26, 2014 12:08 pm

    ScottE,

    Thanks for the confirming comment. Only slightly less infuriating than dealing with “Alice in Patentland” is a “soon to be published” article by Professor Robin Feldman entitled “Coming of Age for the Federal Circuit”: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2496763 . It won’t take you long in reading this article as to why it makes my blood “boil.” What Feldman says is not only very uncomplimentary of the Federal Circuit, but also, and contrary to what Feldman suggests, misses the point as to what the real problem is here: a Royal Nine that is “out of control” and not adherent to the patent statutes (at least any reasonable interpretation of them that I and others would agree with); is completely abusive of the Federal Circuit’s role in articulating patent law jurisprudence; and as completely unwilling, after torching whatever standards/tests the Federal Circuit has articulated, to offer anything approaching an understandable and especially objective standard/test that us “mere mortals” can apply and can rationally counsel our clients on how to deal with. Frankly, I grow weary of these IP law academics (Feldman and Mark Lemley are my “poster children” in that regard), especially those from the California law schools, that chastise the Federal Circuit, and yet: (1) have no undergraduate degree in science or engineering; (2) have never been registered patent attorneys; and (3) as far as I can tell, have no significant “real experience” in practicing patent law, especially patent application drafting and prosecution. Unfortunately for us, these IP law academics are being given far more credence (including by the Royal Nine) than they deserve.

  16. Anon September 26, 2014 1:16 pm

    EG,

    Not to twist the handle of the instrument protruding from your back, but do you know how much money that same California University System made from patents last year…?

    Of course, I am talking about a different side of the university system…. (the side that believes in patents).

  17. EG September 26, 2014 2:15 pm

    Anon,

    Oh, could you be referring to the tech transfer offices (TTOs) of certain California universities (which also includes Stanford where Lemley resides.)?

  18. Anon September 26, 2014 2:40 pm

    Most definitely.

    I have worked with some tech transfer offices (unfortunately not those in California), and I can tell you personally, the side of the university that is putting patents to work and the side of the university where Ivory Tower academics dwell, have vastly different viewpoints on the patent system.

  19. Anonymous September 26, 2014 5:58 pm

    Relative to the question of whether or not Graham was overruled by Alice, check out Newman’s dissent in Calcar today and how the majority finds but for unpatentability.

  20. EG September 27, 2014 9:58 am

    Anonymous,

    I saw that case with the Newman dissent. Sigh. Newman is the only true “beacon in the wilderness” on the Federal Circuit that calls her “colleagues” (as she calls them) to account, and especially tells them they need to “toe the line” in obeying the patent statutes. Newman is often demeaned by certain commenters on that “other patent blog” which causes me no end of “heartburn.”

  21. EG September 30, 2014 12:55 pm

    To all:

    In the last paragraph of my article, my math was off about when SCOTUS last reversed course from a restrictive patent-eligibility standard: it was 9 years (almost a decade) and was also the time period between Gottschalk v. Benson (1972) and Diamond v. Diehr.

  22. Sally December 1, 2014 11:39 am

    My problem with this blog post is that it asserts that Diehr is the proper standard. The Supreme Court has been fairly consistent with respect to patent eligibility going back to the 1800s, and the case that is inconsistent with that long and unbroken precedent is Diehr. Isn’t the real problem that the Supreme Court avoids overturning Diehr, and pretends that it is consistent with Flook…even Marchand v. Emken…? Of course, Diehr basically makes usefulness dead letter, so self-interested patent prosecutors love it.

  23. Guy McClung January 21, 2015 8:02 pm

    Dear Mr. Guttag-Did you take the PLI Patent Bart Review course in winter 1978 in NYC – blizzard and all? head admn: Ruth Druss? Guy McClung, San Antonio