Alice’s Tourniquet: A Solution to the Crisis in Patentable Subject Matter Law

By Kip Werking
March 7, 2016

solution-clock-2Unless Congress acts first, which is unlikely, it seems inevitable that the Supreme Court will soon revisit the abstract idea doctrine. The Court is likely to revisit the abstract idea doctrine simply because its recent decisions on the doctrine are incomplete and unsatisfying. In many ways, the Court “punted” in both the famous Bilski and Alice cases by issuing decisions that left many questions unanswered. Bilski v. Kappos, 130 S. Ct. 3218 (2010) (“Bilski II”); Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014) (“Alice II”). Since these two recent cases, the Patent Office and the lower courts have ran with the thrust of these decisions by routinely rejecting patent applications and invalidating or revoking issued patents. In view of these recent developments, I would argue that the lower courts, by interpreting these precedents so broadly, have begun to realize the Supreme Court’s fear of the abstract idea doctrine “swallow[ing] all of patent law.” Alice II, 134 S. Ct. at 2354. What is needed, then, is concrete guidance from the Supreme Court that establishes an appropriate limiting principle to prevent these precedents from doing more unintended harm. We need a new pro-patent case to end the modern trilogy of abstract idea cases, just as the Diehr case ended the earlier trilogy of abstract idea cases on a happy note (and left the doctrine dormant for about three decades). Gottschalk v. Benson, 409 U.S. 63 450 (1972); Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr, 450 U.S. 175 (1981). Note that the Supreme Court’s notorious Mayo decision is technically classified as a natural law case rather than an abstract idea case. Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289 (2012). In this article I sketch what a solution to the crisis in patentable subject matter law may look like—a tourniquet to stop the bleeding.

When considering what a winning strategy on patentable subject matter would look like, it is important to consider what previous losing strategies have looked like. Since 2010, the patent bar and innovation community have had two opportunities to persuade the Supreme Court to issue a ruling that respects patent rights and establishes appropriate limiting principles. Yet, in both cases (Bilski and Alice), we all failed. With that in mind, it is helpful to perform an autopsy to consider what strategies went wrong, so we can further learn what other strategies might go right in a future case. Based on my review, I count at least the following previous strategies that the Supreme Court, rightly or wrongly, simply refuses to accept:

  • arguing the plain language of the statute;
  • arguing to abolish the abstract idea doctrine (e.g., in the context of computer-implemented inventions);
  • arguing the tangibility of the invention;
  • arguing to shift the analysis to other sections of the Patent Act.

To be sure, I genuinely believe that all of these strategies have great merit and the Supreme Court should find them persuasive in general. Nevertheless, as I outline below, the modern Supreme Court simply refuses to accept these arguments.

First, attorneys have argued for the Supreme Court to simply follow the statute. Former Chief Judge Rader famously implored everyone, “[w]hen all else fails, consult the statute!” CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1335 (Fed. Cir. 2013) (en banc) (“Alice I”) (J., Rader, additional views). The parties framed the debate throughout the Bilski appeal on “what the term ‘process’ in § 101 means.” In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc) (“Bilski I”). And, in fact, the Supreme Court agreed with Bilski that the term “process” is so broad that it cannot exclude all business methods or all inventions failing the machine or transformation test. Bilski II, 130 S. Ct. at 3228. But this victory proved to be pyrrhic, because the Court went on to affirm the rejection of Bilski’s patent application under the Court’s precedents on the abstract idea doctrine, which is decidedly non-statutory. So, in the end, the Supreme Court simply does not strive for strict fidelity to the statutory language, because the abstract idea doctrine has almost no connection to the statutory text. Accordingly, although this argument has merit, and may even reflect the most accurate construction of the statute, we cannot expect the argument to yield desired results at the Supreme Court.

Second, some have asked for the Supreme Court to simply abolish the abstract idea doctrine. These critics observe that the Court’s prohibition against patenting ideas conflicts with its other precedents stating that patents protect inventions, which are essentially ideas conceived by inventors. Compare Benson, 409 U.S. at 71 (“It is conceded that one may not patent an idea.”) with Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 60 (“The primary meaning of the word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception rather than to a physical embodiment of that idea.”). These critics also contrast patents with copyrights, from which Congress excluded ideas by statute. See Ultramercial, Inc. v. HULU, LLC., 722 F.3d 1335, 1349 (“After all, unlike the Copyright Act which divides ideas from expression, the Patent Act covers and protects any new and useful technical advance, including applied ideas.”) and 17 U.S.C. § 102(b). In this spirit, IBM argued in Alice II that the abstract idea doctrine “has proven unworkable” for computer-implemented inventions and that these inventions “will always fall outside the abstract idea exception.” If the Court had agreed with IBM and adopted its suggested conclusion, then the Court would have essentially eviscerated the abstract idea doctrine, because the doctrine has traditionally and predominately applied in the context of computers (see Benson, Flook, Diehr, Alice).

Ultimately, asking this Supreme Court to abolish or eviscerate the abstract idea doctrine is simply asking too much. The Court declined to adopt IBM’s suggestion in Alice II and, instead, followed CLS Bank and its supporting amici by applying the abstract idea more aggressively than ever before. Although the Supreme Court is fallible, and sometimes reverses its errors, the abstract idea doctrine is one area where the Court concedes nothing. Indeed, the abstract idea doctrine is another area in patent law where the Court decides cases primarily based on its own precedent rather the statutory text. See also Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011); Kappos v. Hyatt, 132 S. Ct. 1690 (2012); Kimble v. Marvel Enterprises, Inc., 135 S. Ct. 1697 (2015). Perhaps the Court will be more receptive in the future, with a different membership that expresses greater concern for reliance on property rights and business investments.

Third, it is a mistake to focus on the tangibility of the invention when arguing before the Supreme Court. In fact, that is the essence of the mistake that the Supreme Court found in the Federal Circuit’s decision in Bilski I. Although the patent bar remembers Bilski II as an anti-patent decision (e.g., because the decision upheld the rejection of Bilski’s application), the decision also includes several pro-patent aspects, including especially its refusal to limit patent eligibility to inventions that satisfy the famous “machine-or-transformation test.” In other words, according to the Supreme Court, it is simply a mistake to focus on the tangibility of the claimed invention. At best, the machine-or-test transformation test is a “useful clue,” although the clue has not proven to be that useful. Bilski II, 130 S. Ct. at 3227. In Alice I, Judges Rader and Moore stated, in exasperation, “[i]f tying a method to a machine can be an important indication of patent-eligibility, it would seem that a claim embodying the machine itself, with all its structural and functional limitations, would rarely, if ever, be an abstract idea.” 717 F.3d at 1305. Yet, if there was any doubt that the tangibility argument had limited relevance to the Supreme Court, the Court’s later decision in Alice II settled the question by invalidating patent claims to a physical data processing system and corresponding computer program product. More recently, in dissenting from the denial of the petition for rehearing en banc in Ariosa, Judges Moore and Lourie argue that “[a]bstract steps are, axiomatically, the opposite of tangible steps.” In my view, that argument is admirable in terms of candor and common sense but the argument is, nevertheless, doomed to failure before a recalcitrant Supreme Court.

Fourth, it is similarly a mistake to argue that the Court should shift some of the work from the abstract idea doctrine and § 101 to other sections of the Patent Act, including especially §§ 102, 103, and 112. Various parties have employed this strategy in the Court’s recent patent eligibility cases, mostly notably by the Solicitor General in Mayo, by IBM in Alice II, and by former Chief Judge Rader in Alice I and various other Federal Circuit opinions. Yet, each time, the Court has resoundingly rejected this argument, even refusing to follow the Solicitor General in Mayo (which is rare for the Supreme Court in patent cases). The error underlying all of these failed arguments is thinking that the Supreme Court is simply using the abstract idea doctrine as a shortcut for invalidating patents directed to old or obvious inventions. Instead, as Professor Lefstin has persuasively argued in an excellent law review article, Inventive Application: A History, the Court’s judicial exceptions to § 101 carve out certain subject matter from patenting regardless of their novelty. As Justice Stevens wrote in Flook, patents can be invalid even if “we assume that respondent’s formula is novel and useful and that he discovered it.” 437 U.S. at 588. Of course, legal scholars have argued persuasively that these remarks in Flook constitute dicta that the Court later repudiated in Diehr. See Diehr, 450 U.S. at 189, n. 12 (rejecting the “claim dissection” interpretation of Flook). Nevertheless, the modern Supreme Court continues to selectively follow the spirit of Flook by focusing on “well-understood, routine, conventional activit[ies]” dissected from the overall claim language under review. See Alice, 134 S. Ct. at 2359 (internal citation omitted).

In my view, the Flook rule is unfortunate and unnecessary, because patents on nonobvious inventions can cause only minimal harm to the public. No matter how sweeping a nonobvious patent claim is, the claim simply prevents the public for a brief time from freely practicing an invention that the public never practiced before. Perhaps for this reason, the architects of the Patent Act focused on novelty and nonobviousness as the primary “conditions of patentability.” Yet this public policy insight falls on deaf ears at the Supreme Court.

All of the above arguments have great merits but they also share one fatal flaw: the Supreme Court, rightly or wrongly, rejects them. Accordingly, what is needed is a new argument. The new argument should satisfy all of the following criteria:

  • the argument should avoid all of the above failed strategies;
  • the argument should avoid criticizing the Supreme Court’s precedents and instead provide cover for the Supreme Court to justify its earlier decisions;
  • the argument should be moderate enough for the Supreme Court to accept;
  • the argument should nevertheless establish a limiting principle that effectively serves as a tourniquet to prevent the abstract idea doctrine from further eviscerating patents and patent valuations.

I believe that I have such an argument, which we can call the Cluster Argument. I will summarize the Cluster Argument’s premises in the following brief introduction:

  • The Supreme Court’s abstract idea cases are divided into two clusters: looped mathematical algorithms (Benson, Flook, Diehr) and fundamental business practices (Bilski and Alice).
  • In each of both clusters of cases, there are certain narrowing hallmarks that every case in that cluster shares. Every math case involves a looped mathematical algorithm involving numerical values. And every business method case involves a “fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
  • Although the Supreme Court has not explicitly limited the abstract idea doctrine to cases that involve these narrowing hallmarks, we should invite the Supreme Court to do so, because:
  • In the context of patentable subject matter, the Supreme Court has repeatedly told us to interpret its precedents narrowly and to avoid reading new limitations into the patent statutes that Congress has not expressed.

Let me expand on the argument. I believe that the patent community generally fails to appreciate how similar the first cluster of cases are (Benson, Flook, and Diehr) and also how much they differ from the later cluster of business method cases (Bilski and Alice). Consider the claims in the first cluster of cases:

Benson Flook Diehr
A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of

(1) testing each binary digit position `1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary `0′ or a binary `1′;

(2) if a binary `0′ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

(3) if a binary `1′ is detected, adding a binary `1′ at the (i+1)th and (i+3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and

(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.

A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of

Bo+K

wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:

(1) Determining the present value of said process variable, said present value being defined as PVL;

(2) Determining a new alarm base B[1], using the following equation:

B[1]=Bo(1.0—F)+PVL(F)

where F is a predetermined number greater than zero and less than 1.0;

(3) Determining an updated alarm limit which is defined as B[1]+K; and thereafter

(4) Adjusting said alarm limit to said updated alarm limit value.

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

providing said computer with a data base for said press including at least,

natural logarithm conversion data (ln),

the activation energy constant (C) unique to each batch of said compound being molded, and

a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is

ln v=CZ+x

where v is the total required cure time,

repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates equivalence.

As quoted above, each of these claims recites a mathematical algorithm in the literal sense. For example, all of the claims literally recite mathematical variables (a “binary digit position” in Benson, which is either “1” or “0”; “Bo,” “K,” “F,” and “PVL,” in Flook; and “v,” “C,” “Z,” and “x” in Diehr). Similarly, all of the claims are directed to repetition, whether conditional or absolute, of all or part of the mathematical algorithm (“repeating steps (1) through (4)” in the Benson claim; “[t]he process is repeated at the selected time intervals” in the Flook opinion, 437 U.S. at 598; and “repetitively comparing in the computer at said frequent intervals” in the Diehr claim). In other words, all of these claims are directed to a programming loop. We can summarize the narrowing hallmarks of the first cluster of cases as follows:

  • a mathematical algorithm;
  • that involves numerical values;
  • that manipulates and/or compares the numerical values;
  • either explicitly recites or suggests (through context) a looped or iterative calculation.

In contrast, the second cluster of business method cases has a different set of narrowing hallmarks. In Bilski II, the Supreme Court quoted Judge Rader, from Bilski I, when describing these narrowing hallmarks. According to the Court, Bilski’s claim was unpatentable under the abstract idea doctrine because it was directed to a:

  • “fundamental”
  • “economic practice”
  • “long prevalent in our system of commerce and”
  • “taught in any introductory finance class.”

130 S. Ct. at 3231 (quoting Bilski I, 545 F.3d at 1013 (Rader, J., dissenting)). Importantly, when invalidating the Alice patent, the Supreme Court quoted the same language from Judge Rader in Bilski I. Accordingly, even though the Alice patent(s) recited a computer implementation, the Supreme Court invalidated the corresponding claims based on the recitation of a fundamental economic practice. Thus, Alice II belongs squarely within the second cluster of recent business method cases rather than the earlier trilogy of mathematical algorithm cases.

Presumably, like everyone else, the Supreme Court would like to find a solution to the crisis in patentable subject matter law. Justice Scalia famously stated that the most difficult case is “probably a patent case,” perhaps referring to the heavily delayed, fractured, and criticized decision in Bilski II. The Supreme Court went on to grant certiorari for the question presented in Alice II of “[w]hether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?” During oral arguments, the Supreme Court expressed concern about a need for clarity in the law. Nevertheless, the Court ultimately punted again by issuing a decision that did not reference the term “software” and explicitly declined to define the key term “abstract idea.”

A future abstract idea case will provide the opportunity for the Supreme Court to stop punting and to finally define the term “abstract idea” in a manner that respects the Court’s precedents while also establishing a limiting principle to prevent the abstract idea doctrine from further eviscerating patent law. The Court can do this simply by first observing that the term “abstract idea” is a legal term of art. That “abstract idea” is a legal term of art follows naturally from the fact that, if the term is interpreted according to its plain and literal meaning, the term is redundant. All ideas are abstract. Moreover, the Supreme Court’s own precedents establish that patents protect inventions and that “[t]he primary meaning of the word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception rather than to a physical embodiment of that idea.” Pfaff, 525 U.S. at 60 (italics added). Thus, interpreting “abstract idea” as referring to all ideas would violate the Court’s own instruction to interpret its precedents narrowly and consistent with the Patent Act. Instead, the Court may observe that the term “abstract idea,” as a legal term of art, simply refers to the kinds of unpatentable inventions that the Court’s precedents identify: (A) looped mathematical algorithms that manipulate numerical values and (B) “fundamental economic practice[s] long prevalent in our system of commerce and taught in any introductory finance class.”

At this point, having acknowledged that the term “abstract idea” constitutes a legal term of art that defines a set including these two clusters of unpatentable subject matter, we should invite the Supreme Court to simply close the set. There is nothing in common between these two clusters that justifies their unpatentability in a way that should include an additional cluster beyond these two. The first cluster is justifiably unpatentable, to the extent it is, because it raises concerns about the First Amendment and mental processes. As Justice Douglas observed in his original opinion, the algorithm in the Benson method claim could be performed in the human mind. 409 U.S. at 67. In contrast, the second cluster raises primarily concerns about nonobviousness (and perhaps a distrust of financial engineering). If an “invention” is “long prevalent in our system of commerce” and “taught in any introductory finance class” then the invention was surely obvious. Thus, in my view, the common thread between these two has nothing to do with intangibility or abstraction. Instead, the common thread is simply historical happenstance and a shared legal moniker, the “abstract idea” doctrine. Out of judicial convenience, the Supreme Court has used the same term to invalidate, perhaps justifiably, two markedly different clusters of subject matter.

The Court, and the parties before it (including amici), can easily justify the Court adopting this narrow “cluster” definition of the term “abstract idea,” because the Court itself has repeatedly instructed lower courts and tribunals to interpret its precedents in this area of law narrowly:

  • “We should not read into the patent laws limitations and conditions which the legislature has not expressed.” United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933);
  • “We have also cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (quoting Dubilier Condenser Corp.);
  • “[I]n dealing with the patent laws, we have more than once cautioned that ‘courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’’” Diehr, 450 U.S. at 182 (quoting Chakrabarty and Dubilier);
  • “As in Chakrabarty, we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result.” JEM Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124, 145-46 (2001);
  • Bilski I, 130 S. Ct. at 3226 (same);
  • “The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law.” Mayo, 132 S. Ct. at 1293;
  • “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Alice II, 134 S. Ct. at 2354 (citing Mayo).

In view of the above, the Court’s own precedents provide overwhelming authority for interpreting § 101 broadly and, conversely, interpreting its judicial exceptions to § 101 narrowly. These precedents provide ample support for the Cluster Argument: (1) observing that the term “abstract idea” constitutes a legal term of art that, according to stare decisis, properly refers to looped mathematical algorithms and old and fundamental business practices and (2) declining to expand the set of “abstract ideas” beyond these two clusters without a signal from Congress.

Some readers of earlier versions of this article questioned whether the Cluster Argument would actually result in a significant change in the law. Absolutely, I believe that it would. Most importantly, it would immediately delete two out of four of the Patent Office’s categories of abstract ideas: “ideas themselves” and “certain methods of organizing human activity.” See 2014 Interim Guidance on Subject Matter Eligibility. That would be a huge relief to the patent prosecutors trying to handle the thousands of seemingly arbitrary section 101 rejections coming from the PTO after Alice.

Consider also the Federal Circuit decision in Planet Bingo. Appeal no. 2013-1663 (August 26, 2014) (nonprecedential). The game of bingo has a tangential connection to money and business, but bingo does not constitute a “fundamental economic practice.” Nor is bingo “taught in any introductory finance class.” Bingo does not resemble the fundamental economics concepts of hedging (Bilski) and escrow (Alice). Similarly, the District Court for the Central District in California invalidated claims directed to automating animation of computer-generated characters’ lips moving. See McRo, Inc., d.b.a. Planet Blue v. Bandat Namco Games America, Inc., et al., Case No. 12-cv-10322-GW (FFMx) (October 31, 2014). Yet, the claimed method does not recite a mathematical algorithm or the iterative manipulation of mathematical variables, even if the method if implemented using underlying mathematical logic on a general purpose computer, like virtually all software. The claimed method simply does not resemble the mathematical equations explicitly recited in Benson, Flook, and Diehr, as shown above. Many other recent federal court decisions that invalidate patent claims as impermissibly directed to abstract ideas would be similarly undermined by the logic of the Cluster Argument.

Although the Supreme Court is not obligated to accept this Cluster Argument, the Argument may represent our best hope for solving the crisis in patentable subject matter law. The Cluster Argument avoids all of the pitfalls that I outlined above in previous failed strategies. It also respects the Court’s precedents while providing a strategy for the Court to untangle itself from the web that is has spun. The Cluster Argument is a tourniquet and, if we give the Court the opportunity, the tourniquet can stop the bleeding.

The Author

Kip Werking

Kip Werking is a registered patent attorney with ALG Intellectual Property, LLC who has a wealth of patent-prosecution experience in the electrical and computer-engineering arts. Throughout his career, Mr. Werking has participated in all aspects of U.S. patent prosecution, including hundreds of in-person examiner interviews at the U.S. Patent & Trademark Office, appeals, and personal appearances before the Board of Patent Appeals and Interferences.

Prior to joining ALG, Mr. Werking practiced as a patent attorney with a nationally recognized law firm in Alexandria, Virginia. Mr. Werking also clerked for the International Trade Commission in Washington, D.C.

Professional Activities
Registered Patent Attorney, U.S. Patent & Trademark Office
Member, Virginia State Bar (Inactive Status)

Education
William & Mary School of Law, J.D.
Graduate Fellow
The University of Texas at Austin, B.S
Electrical Engineering
National Merit Scholar
Engineering Scholar

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 38 Comments comments.

  1. Paul Cole March 7, 2016 9:34 am

    This is a most valuable addition to the online literature, although I am not sure that the proposed solution will suffice.

    One possibility is to go back to Festo and KSR and argue that the dicta in the various earlier Supreme Court cases should not be treated as inflexible rules. The lower courts appear to be applying the two part Mayo/Alice test in a mechanistic manner.

    Another possibility is to argue that where a claim can be shown to fall as a matter of substance and not mere outward form within one of the statutory categories, then the judicial exclusions are effectively a de minimis check and should be construed narrowly.

    Some commentators have suggested the following addition to the statute:

    Claimed subject matter that provides a useful, concrete, and tangible result shall not be denied eligibility for a patent on the ground that it is directed to a law of nature, natural phenomenon, or abstract idea, and shall be evaluated in accordance with the other provisions of this title.

    It can be argued that Supreme Court case law from Evans v Eaton (1822) to KSR supports this proposition already, and that where the claimed features in combination produce such a result, that should be accepted as evidence against judicial exception.

  2. Anon2 March 7, 2016 10:22 am

    Please excuse the lack of precision or depth, I have not had time to research this fully.

    Identifying the first cluster as:

    •a mathematical algorithm;
    •that involves numerical values;
    •that manipulates and/or compares the numerical values;
    •either explicitly recites or suggests (through context) a looped or iterative calculation.

    as such, may be an overly broad (possibly superficial) definition of the principle that underlies those cases, even though these factors are common to them. It is not the math/algorithms as such which we (as practitioners) would identify as the thread of un-patentability running through these cases. In fact the first cluster may reduce to the second as outlined below.

    Many novel. unobvious, and useful, real time feedback controlled processes are killed by identification of the above as the only factors.

    Perhaps, if one were to make a broader abstraction, we have a set of cases where, broadly, when the desired result is known, when it is known what particular parameters to measure and what values must exist which corresponds to the known desired result, when requisite laws according to which the process develops are known: then iteratively and incrementally applying a known change/input to a process according to the known laws which lead towards the known desired result, and iteratively measuring the known parameters to determine when the known conditions of the desired result obtain, (perhaps combined with everything you identify above) is nothing more than an abstract idea: why?

    Because it is merely the application of the “fundamental”, “long known” principle in the useful arts, that automated iteration of applying incremental inputs/changes to a process, monitoring with parameter measurement, and ceasing when the desired results are obtained, will generally work no matter what the particular process is. It is analogous to essentially claiming “automating a process of trial and error while judiciously nudging the system towards the desired result”. This could qualify as ubiquitous, fundamental, etc. if nothing substantially more (e.g. is everything about the nonautomated noniterated process is known) is claimed.

    It is as though instead of the purported invention being a specific solution to a particular problem, what is presented is nothing more than the fundamental long known standard method of “iteratively solving a problem”.

    I have not looked into each of these cases closely enough to determine whether each is merely application of the general “iteratively solving a problem”. I suspect the first cluster might be moved closer to being framed from that perspective. The more the process is known, the desired result is known, the methods of monitoring/measurement are known, the more this would appear to be mere application of the general principle.

    In the same way we practitioners do not want to allow the mere presence and/or participation of a general purpose computer to kill a claim which inventively utilizes a computer, we feel the need to distinguish a specific machine away from merely applying a known computer arrangement to a known problem, and assert that the mere presence of the general purpose computer is not determinative,

    I would respectfully submit that mere presence of :

    •a mathematical algorithm;
    •that involves numerical values;
    •that manipulates and/or compares the numerical values;
    •either explicitly recites or suggests (through context) a looped or iterative calculation.

    also is not determinative.

    Further I would distinguish specific inventive real time iterative processes from the situation where there is presence of the above factors merely to perform the longstanding known solution of iterative processing of a known process (and nothing more), those kinds of mere applications of iteration as such being abstract ideas we could all (practitioners and court) live with NOT being patentable.

  3. Anon March 7, 2016 10:24 am

    Kip,

    An excellent synthesis, but one that will likely need to wait until this weekend for me to digest and discuss (one of those weeks…).

  4. Simon Elliott March 7, 2016 11:12 am

    Interesting, ‘tho I chortle at “Presumably, like everyone else, the Supreme Court would like to find a solution to the crisis in patentable subject matter law.” Who exactly created the crisis?

  5. BOB March 7, 2016 12:38 pm

    What is proposed here is not a turniquet. It is a precise surgery to excise a very small fragment of the useful arts (the two identified ‘clusters’).

    For an article which seems to pride itself on a realistic approach, it doesn’t take in the apparent reality of the Supreme Court’s intention. The Supreme Court meant to apply a turniquet to the body of useful arts, to slowly but surely remove a limb of that domain. Any proposal which does not cleave off a meaningful amount of material will not satisfy their bloodlust.

    That said, this is a much better than average article on subject matter eligibility.

  6. Night Writer March 7, 2016 1:05 pm

    The way to think of this is as follows. A claim is composed of a number of elements A, B, C, etc. Anytime anyone starts to say that an element or elements of the claim are some abstract category (e.g., abstract idea, mathematical algorithm, etc.) that was made up by judges then you have a problem–you have moved into witch hunting territory.

    Simply apply 112, and then simply find the elements in the prior and use 102 and 103. That is all that is ever needed. In fact, despite a challenge for years to show me one claim that needs Alice (101) to invalidate it, I have seen no such claim. You know why? They do not exist. Everyone Alice invalidation is little better than a witch trial.

    That is reality. If a claim passes 112, then it can be built or performed. Try to live in the real world. The SCOTUS has moved into witch psychopathic nonsense.

  7. Night Writer March 7, 2016 1:06 pm

    Also, a claim’s breadth is never a problem. If it broad and you can’t find 102/103, then it deserves a patent. If it so broad that new innovation occurs within the claim scope, then the claim can be invalidated as claiming too much. Very simple to police. LizardTech goes through an analysis of this before the great witch trials began.

  8. Night Writer March 7, 2016 1:12 pm

    So, you see there is no problem. What we have is judicial activism where the SCOTUS has made-up nonsense to invalidate information processing claims. They have turned into a legislative body. That is why it is fine that the Senate refuses to hold confirmation hearings. The SCOTUS is not following the Constitution so why should the Senate. Reality.

    Reality that the justices don’t get: the conservation of information is the most important law of physics. It takes time, space, and energy to transform represented information. It is a physical process. (Stevens believes that his thinking occurs in the spirit world and unrelated or tenuously related to his brain. This is the belief of Ginsburg as well.) Anyway, that is reality. The rest of this nonsense is a judge fabricating some abstraction and then saying that your machine or method is that abstract (witch) so we are going to invalidate (burn) your claims (body.)

  9. A Rational Person March 7, 2016 2:31 pm

    “Fourth, it is similarly a mistake to argue that the Court should shift some of the work from the abstract idea doctrine and § 101 to other sections of the Patent Act, including especially §§ 102, 103, and 112.”

    One problem is that the Court’s abstract doctrine with respect to § 101 has rendered §§ 102, 103 and the enablement requirement § 112 unnecessary. Because the Court has interpreted § 101 and its abstract doctrine to have no evidentiary requirements, the decision with respect to rejecting a claim under § 101 is ALWAYS easier to do than under §§ 102, 103 and the enablement requirement § 112, which all require evidence.

    “Various parties have employed this strategy in the Court’s recent patent eligibility cases, mostly notably by the Solicitor General in Mayo, by IBM in Alice II, and by former Chief Judge Rader in Alice I and various other Federal Circuit opinions. Yet, each time, the Court has resoundingly rejected this argument, even refusing to follow the Solicitor General in Mayo (which is rare for the Supreme Court in patent cases). The error underlying all of these failed arguments is thinking that the Supreme Court is simply using the abstract idea doctrine as a shortcut for invalidating patents directed to old or obvious inventions. Instead, as Professor Lefstin has persuasively argued in an excellent law review article, Inventive Application: A History, the Court’s judicial exceptions to § 101 carve out certain subject matter from patenting regardless of their novelty.”

    But this ignores what the justices actually said in Alice. For example, see this passage:

    “This conclusion accords with the preemption concern that undergirds our §101 jurisprudence.” (This reason for the “necessity” of the “abstract idea doctrine” has nothing to do with “novelty” and is based on the Court’s erroneous belief that there is no other part of the patent laws, §101, such as that address the concept of “preemption”,”

  10. didoo March 7, 2016 5:02 pm

    why would the supreme court or the government accept the author’s proposals when its the government that is against the patenting of software?

  11. Edward Heller March 7, 2016 5:28 pm

    The table you provided, Kip, gives the clue. The preambles in Benson and Flook essentially said the claim was directed to a data processing method, the Flook preamble being too broad to limit the data processing method to a specific application. Diehr, in contrast, was directed to specific molding method.

    Also recall that Alappat held the claims eligible to the extent they read on a programmed computer equivalent because the preamble limited the claim to a rasterizer, a specific machine.

    In Bilski, the heart of the novelty of Bilski was in its data processing. It did not purport to improve a conventional process or machine, nor was it limited, like in Alappat, to a specific machine.

    While data processing can be the invention, it is its application to an otherwise eligible context, even if such is present only in the preamble, is required. Flook is on point that preamble limitation on use has to be somewhat specific.

    I think all the cases since have been consistent with this view.

  12. Appearance of ... March 7, 2016 6:09 pm

    In my opinion, these Alice discussions are not unlike trying to determine “how many angels can dance on the head of a pin?”

    Personally I am not that enamored with medieval theology. The simple fact of the matter is that SCOTUS clearly had no idea what it was doing.

    The present situation is not unlike what would have happened if SCOTUS had made a ruling that pi = 3. No amount of legal argument, short of overturning the case(s), will fix this sort of thing.

    Deference to SCOTUS should not extend to logically inconsistent decisions. The only reason that “Alice” has gone so far is that both Federal Judges and the USPTO find it convenient to have a quick way to kill a large number of patents. But, for these reasons, neither of these groups can be considered to be “neutral” decision makers.

    I suspect that eventually, once there is sufficient damage to the economy, a later SCOTUS will undo the damage by “affirming” these earlier cases, but with the clarification that the scope of these rulings, going forward, will now be limited to the specific fact patterns of these cases.

  13. Alex in Chicago March 7, 2016 6:40 pm

    Kip, I’m sorry but a fundamental issue with your analysis is that no application of the Abstract idea process that comports with the previously issued applications is going to overrule Planet Bingo. The difference between a “fundamental economic practice” and a “fundamental senior citizen practice” or “taught in any introductory finance class” and “taught in a first grade class” are not getting you close.

    The reality is that you need to give SCOTUS a line it can draw that helps examiners (and defendants, but this applies most importantly to examiners because of the time limitations) when they have a gut feeling that a claim is overbroad and claiming functions previously executed in the real world, but now being executed on a new medium (that the patentee did not create).

    In fact, I think the central disagreement SCOTUS has with you is your statement, “In my view, the Flook rule is unfortunate and unnecessary, because patents on nonobvious inventions can cause only minimal harm to the public.” In fact SCOTUS would say, “The Flook rule is necessary because patents that are obvious, but difficult to demonstrate as being obvious, cause enormous harm to the public.” With Planet Bingo and Mayo v. Prometheus being the tip of the spear of why they felt compelled to extend the Flook rule. In Mayo the court said, “We cannot possibly prevent doctors from thinking about facts that exist in the world, no matter who discovered those facts.” In a hypothetical grant of cert in Bingo they would say, “We cannot possibly allow someone to have a monopoly on Bingo playing with a computer system.”

    Thus, I would say the path forward (if you want to be successful) is to argue why your set of claims actually does not grant you a monopoly over an idea. In particular, you should describe a device or computer program that achieves your results without infringing.

  14. Edward Heller March 7, 2016 7:10 pm

    Alex, while monopolization of an idea is at the core of “abstractness,” it has nothing to do with why Bilski claims were declared ineligible. Those claims were highly specific to a risk adjustment process.

    This is why I personally focus on the facts of the cases to detect a pattern.

  15. Anon March 7, 2016 8:49 pm

    Mr. Heller,

    You are conveniently omitting several items of which are known to you and making other similar mistakes at 9 above..

    To the extent that your view merely repeats the Machine or Transformation clue and attempts instead to make that clue into a law, you are in clear error.

    You are also neglecting to view both Benson and Flook as they were modified by the Diehr case – see Bilski.

    To this last error, you are not alone, but that makes the error no less significant.

    Your attempt to rewrite Bilski with your emphasis on novelty and “heart of” merely repeats the very real error (and shenanigans) that the Court engages in. After all, the “heart of novelty” in Diehr was software, yet you never seem able to admit (leastwise recognize) that. And (again) you should note that Diehr changes Flook – and not the other way around.

    Your “focus” is not what you pretend it to be.

  16. Kip March 7, 2016 8:59 pm

    Rational Person: you wrote: “But this ignores what the justices actually said in Alice.” I don’t see the conflict. The passage I wrote and the other passage that you quote both say that the Supreme Court views the abstract idea doctrine as solving a different problem than the novelty requirement.

  17. Kip March 7, 2016 9:01 pm

    Edward Heller – your argument about preambles seems bizarre to me. The law on giving preambles patentable weight or not is itself arbitrary sorcery. I don’t see it as having any real relevance to SCOTUS law on 101.

  18. Kip March 7, 2016 9:06 pm

    “Appearance of…” – you wrote: “Personally I am not that enamored with medieval theology. The simple fact of the matter is that SCOTUS clearly had no idea what it was doing. ”

    Ha, I like that analogy. There is a lot of truth to the idea that SCOTUS case law on 101 is like saying 2+2=5. I think it’s not quite that bad, but it’s close. If you read good law review articles (like Lefstin, Lemley, Mossoff), you’ll see that there is a lot of meat to chew on, and a lot of great points to make. The SCOTUS opinions themselves are rich with details and footnotes that provide ample material for good scholarship. Even if scholars can’t make all of the cases 100% consistent, they can still draw many helpful insights and lessons and make the cases mostly consistent. Hopefully. I’m trying to write in that same tradition, but from the informal platform of a blog and from a more practical perspective.

  19. Kip March 7, 2016 9:10 pm

    Alex, you wrote: “Kip, I’m sorry but a fundamental issue with your analysis is that no application of the Abstract idea process that comports with the previously issued applications is going to overrule Planet Bingo.”

    You make a great point. Perhaps the SCOTUS would agree that the Planet Bingo should be invalid under 101. But what is the *better* strategy for solving the crisis in patentable subject matter?

    Eventually the Court (or Congress) will realize that its precedents are causing unintended blowback that is devastating the patent system. At that point, the Court (or Congress) will have to reverse course and stop the bleeding. How do they do that? My article here sketches one possible strategy, but I agree with you that it is flawed and a tough sell to the Supreme Court. I just don’t know of any better solutions that would be easier to sell to the Supreme Court.

  20. Anon March 7, 2016 9:32 pm

    Kip,

    Without going into your writings (which I will later this week), there is a solution that does merit discussion (even as it is painful in the short term):

    Step on the gas.

    Take the logic provided and apply it full force to its logical conclusions.

    The faster we crash – and more violently so – the better the ability for the Court to see its own handiwork and perhaps someday STOP trying to write statutory law from the bench.

    If every single judge across the land uses the logic and (lack of) definitions provided by the Court to show just how bad the decisions – as written – are, we will accelerate the day when the return to sanity must be made.

  21. Alex in Chicago March 7, 2016 10:17 pm

    Mr. Heller, that is simply an untrue assertion about the text of claim 1 of the Bilski patent application. They were not highly specific, the text is reproduced below:

    1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
    a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said
    fixed rate corresponding to a risk position of said consumer;
    (b) identifying markets participants for said commodity having a counter-risk position to said consumers; and
    (c)initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

    While its true that in claim 4 had some interesting equations to further define the relationships, I would say 1) You are already screwed when you are trying to convince a judge the mathematical relationship in a dependent claim is not abstract; and 2) You are lying if you make any such arguments, because the Bilski patent is infringed when a corn farmer buys insurance for his crops, heck, its probably infringed when a kid sells lemonade at his lemonade stand.

    And whence, why the judges have been stepping the line ever forward on abstractness. And the only way to win at SCOTUS is to bring them a computer implemented claim that doesn’t smell of dishonesty.

  22. Through the Looking Glass March 7, 2016 10:26 pm

    This was a very intriguing and creative solution. I’m not sure it really addresses the key issue. My understanding of your approach is that you essentially concede the Abstract Idea doctrine is okay, but should be confined to two kinds (clusters) of cases, namely looped mathematical algorithms, and fundamental business practices. The problem that I see is that too many inventions could be lost because they fall into one of these arbitrary categories.

    I think a better approach would be to focus on the public policy underpinnings of the Abstract Idea doctrine to limit its application. Specifically, I mean that its purpose is to prevent patentees from preempting others from practicing an “abstract idea”. For instance, I have noticed that examiners routinely identify an abstract idea in a claim and then arbitrarily neglect to consider all of the limitations that follow. The result is a 101 rejection for what usually amounts to the preamble while failing to consider the non-preemptive effect of the claim elements. No other area of technology is subjected to this ridiculous standard. You would never see a claim to a “widget comprising A+B+C” rejected for merely being a widget without ever considering A, B, and C.

    The common theme that I see running through *most* of the 101 cases, especially as it relates to computer implemented inventions, is that the claims are overly broad. My point is essentially, that I believe the best argument is to show that a claim is something more than the abstract idea by focusing on narrowing effect of the elements.

    For what it’s worth, that’s my two cents.

  23. Through the Looking Glass March 7, 2016 10:30 pm

    And, I should clarify that what I mean by “abstract idea”, and what I think the courts are dancing around, is that “abstract idea” really means an insufficiently specific idea. You can take that right from Merriam-Webster:

    Abstract:
    1
    a : disassociated from any specific instance
    b : difficult to understand : abstruse
    c : insufficiently factual : formal

  24. A Rational Person March 8, 2016 10:00 am

    Kip@14

    “Rational Person: you wrote: ‘But this ignores what the justices actually said in Alice.’ I don’t see the conflict. The passage I wrote and the other passage that you quote both say that the Supreme Court views the abstract idea doctrine as solving a different problem than the novelty requirement.”

    What I was trying to point out, poorly I admit, is that the Court’s says in Alice that its “abstract idea doctrine” is not just justified based on the “subject matter”, but is also based on the idea that claims can be so broad that they preempt economic and/or technological activity, regardless of the subject matter of the claims.

    And, based on the Alice decision, the conclusion that claims cover an “abstract idea” can be reached by a court as a matter of law regardless of the scope of the claims supported by the specification and drawings of the application, i.e., if the Court thinks the claims are too broad, the claims are abstract, regardless of any evidence to the contrary.

  25. A Rational Person March 8, 2016 10:18 am

    Appearance of@10

    Very well said.

  26. Edward Heller March 8, 2016 2:26 pm

    Kip @ 17, nevertheless, compare Flook and Alappat. The it was the definiteness of the preamble that provided the decisive difference. One can ignore everything else in both cases.

  27. Edward Heller March 8, 2016 2:40 pm

    Alex @21, You said, “[T]hat is simply an untrue assertion about the text of claim 1 of the Bilski patent application. They were not highly specific…”

    Well Alex, you hit the nail on the head here. Just what does it mean to be specific? To mean, the Bilski claims directly covered the invention: balancing risk using fixed rate contracts. I don’t know how more specific the claim can get.

    Abstractness as defined in Le Roy v. Tatham and O’Reilly v. Morse was claiming an invention at the level of an idea — simply some suggestion to achieve a result divorced of any of the novel means or methods the inventor discovered. The Bilski claims were not abstract in that sense, not at all.

    That means, to me, the Supreme Court is using the word “abstract” in a way that inconsistent with the meaning it had in its original cases. This forces one to look at the claims themselves in each case to find out why they were found ineligible or eligible. We should not get lost in the words of the court, but they are themselves not willing to commit to a definitive rule. They are simply finding claims eligible or ineligible without really saying why — and that is exactly what Stevens said in his dissent in Bilski.

    So, my take remains — don’t get lost in the words of the Court. Look at the facts.

  28. Night Writer March 8, 2016 4:51 pm

    Ed @27: that was the only intelligent thing I have ever read from you on 101.

    Now apply that same common sense reasoning on Benson and you will see there is simply no way to classify Benson as anything but garbage meant as judicial activism to exclude information processing (including much of EE) from patentability. The reality is that the SCOTUS thinks nothing of not following the Constitution.

  29. Edward Heller March 8, 2016 5:33 pm

    Night, as I have said repeatedly, you and I seem to see eye to eye on 101 we we get down to actual examples.

    As to the Supreme Court, I don’t know why they insist on dancing so much around the point they are trying to make, skipping, circling, drawing misty lines in wavering sands. Had Scalia been given the opportunity to write even one 101 case, I am certain he would have figured it all out and given us a clear rule. As I have said before, Scalia absolutely abhorred “totality of circumstances” brand of thinking. That is equity, not law. Law is about clear rules.

  30. Anon March 8, 2016 6:40 pm

    But what the Supreme Court did was most definitely not a totality of the circumstances setting forth. What they did was wave their hands around and clamor for their desired ends and without giving any clear guidance that would be set forth in a totality of the circumstances type of test .

  31. Night Writer March 8, 2016 7:55 pm

    Ned, no. You buy Benson hook, line, and sinker. Sounds like you get that Alice is nonsense.

  32. Edward Heller March 8, 2016 8:06 pm

    Night, I think Benson was as clear as mud. That is why it is better to look at the facts in that case and not the court’s reasoning.

    Alice? Well Alice to me should be understood as an extension of the printed matter exception where there is no controversy that the means is old and conventional and the novelty is in non statutory subject matter. Now under the printed matter exception, if the printed matter (the non statutory subject matter) is functional in a new way so as to produce a new result, like in Diehr, then it is “applied.”

  33. Night Writer March 8, 2016 8:55 pm

    Ned, I still have not seen a claim where 102/103/112 wouldn’t correctly police the claim with the invalidation with LizardTech of a claim that is too broad can be invalidated if a non-obvious solution is invented that is covered by the claims.

    That is all that is needed. The 101 jurisprudence is witch law and an excuse to legislate.

  34. Anon March 9, 2016 12:23 am

    Gene,

    One caught in the filter – please release.

  35. A Rational Person March 9, 2016 9:50 am

    Night@33

    I agree. The Supreme Court has failed to discuss why 102/103/112 are inadequate and therefore require the Supreme Court to legislate from the bench by rewriting 101. The Supreme Court’s decisions in Alice and Mayo are a “solution” in search of a problem that does not exist, and a really poorly thought out “solution” at that.

  36. Gene Quinn March 9, 2016 12:22 pm

    Anon-

    I did not see a comment in the spam filter. There may have been an error in transmission.

    -Gene

  37. Night Writer March 9, 2016 4:26 pm

    @35 Rational: also, don’t forget the rational used in LizardTech of saying that if you claims something too broad and then an innovation that comes later is covered by your claim, then your claim is invalidated as having been too broad.

    That takes care of all of their broadness nonsense that they use to justify legislating.

    I have had a challenge out at patentlyo for years to show me one claim where this is not true. No claim has been presented.

  38. Night Writer March 9, 2016 4:27 pm

    To my mind, this is part of the fantasy world people like Lemley have created. Like his functional claiming nonsense, or leaving out how one skilled in the art would interpret the claim. All judicial activism with no legitimate purpose.