“It is past time for the courts to understand that the patent law does not begin and end with Section 101.”
The Investpic v. SAP America case (Supreme Court Dkt. No. 18-1199), which is the 44th patent eligibility case to be considered for certiorari since the notorious Alice Corp. decision, was announced earlier this week. Cert. denied.
Unlike almost any other case, the Investpic decision represents a hostility to the patent rights of software developers based on capricious foundations. The Federal Circuit’s holding is inconsistent with the statutory language of Section 101, the holding is hostile to Section 112(f), and the holding has no nexus to preemption. Investpic is just one of Judge Taranto’s latest monstrosities that holds that a patent must be based on a “physical realm improvement” of the sort that has an “inventive concept.” Investpic also holds that one isn’t allowed to use functional claim language, and that algorithms are unworthy of patent protection.
Contrast Hewlett Packard, Inc. v. Berkheimer, Case No. 18-415 and Hikma Pharmaceuticals v. Vanda Pharmaceuticals, Case No. 18-817, which are two of those rare cases where the Federal Circuit held for patent eligibility. In Berkheimer, Petitioner Hewlett Packard asked whether patent eligibility is a question of law based on the scope of the claims or a question of fact based on the state of the art at the time of the patent, e.g., whether evidence is necessary to determine whether additional claim limitations constitute well-understood, routine, and conventional activity under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 79 (2012). The issue in Vanda Pharmaceuticals is more muddled than the particular question set forth to the Supreme Court by Hikma. Indeed, the actual issue appears to be whether or not a specific method of treatment developed by the respondent is patent eligible, with the Federal Circuit majority treating the additional claim elements under step two of the Alice/Mayo test in a completely different (evidence-based) manner than the Federal Circuit dissent.
Well-Understood, Routine, and Conventional Officially a Meaningless Test?
What happens when you have software claim limitations that are new and nonobvious? Why, you declare the claim limitations “abstract” because they involve math, algorithms, and computers, and then you don’t need to actually address the underlying issue. See Investpic Pet.App. at p. 3a. As with Investpic, one of the more recent holdings from the Federal Circuit is known as ChargePoint Inc. v. SemaConnect, Inc., Appeal No. 2018-1739 (Fed.Cir. 2019). ChargePoint is a case where the Federal Circuit ignored every limitation in relatively narrow claims to arrive at an absurd conclusion that the claims preempted a string of random words that the Federal Circuit declared (without evidence or rationale) must constitute an abstract idea. In addition, during the ChargePoint step two analysis (slip op. at p. 22), the Federal Circuit stated:
“Where a claim is directed to an abstract idea, the claim must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’ These additional features cannot simply be ‘well-understood, routine, conventional activit[ies]’ previously known to the industry. Indeed, adding novel or non-routine components is not necessarily enough to survive a § 101 challenge. Instead, the inventive concept must be ‘sufficient to ensure that the patent in practice amounts to significantly more’ than a patent on the abstract idea.’” (internal citations omitted)
This quote above is nothing less than mockery of reason itself. In one sentence the Federal Circuit proclaims that additional claim features cannot be ‘”well-understood, routine, conventional activit[ies]’ previously known to the industry.” However, in the very next sentence the Federal Circuit proclaims “adding novel or non-routine components” still isn’t enough. So the test for avoiding preemption of abstract ideas by adding limitations that are not well-known, routine, and conventional is not satisfied by adding claim limitations that are not known, not routine, and not conventional?
The first questions that arise are: How do judges determine what man-made things (not just an idea of itself) are abstract without any evidence and without any legal standard? Do they just stare at the claims until they receive an epiphany from God? Apparently, any judge who never read Diamond v. Diehr would declare “well, math must be abstract.” To those judges who did read Diehr, I would ask what are the exact processes used to determine what man-made things qualify as abstract?
A number of following questions also arise, including: What is an “inventive concept?” How exactly does an inventive concept transmute the abstract into the “something more?” What alchemy is involved? Is there some sleight of hand the patent community should be aware of, or is industry left to wander the desert for the next 40 years?
Functional Claiming Not Allowed?
The Federal Circuit’s Investpic holding demands that claims have “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Investpic Pet.App. 14a. This statement is nothing less than a condemnation of functional claiming.
Functional limitations by their nature claim results. Functional claiming, however, is fully contemplated by the patent law and is fully addressed by title 35 U.S.C. § 112(f). There is genius in the patent law placed by brilliant visionaries in the mid-20th century. Such genius should not be supplanted by a set of endless judicially-contrived contradictions that is the present state of the Alice/Mayo test thanks to a subset of Federal Circuit judges who, as they become initiated into the mysteries of “inventive concepts,” delight to devise and expound their own ideas of what “inventive concepts” are—the result being some very lovely but totally meaningless prose.
Why can’t the non-statutory requirement of “inventive concept” include functional claiming when functional claiming is allowed under the statutory rule of Section 112(f)? Investpic represents the Federal Circuit regressing 73 years in the past to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) (striking down the “overhanging threat” of functional claiming). Halliburton represents a Supreme Court holding that Congress overruled in the 1952 Patent Act using Section 112(f). See, e.g., Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (“Congress enacted paragraph six . . . to overrule that holding.”).
It is past time for the courts to understand that the patent law does not begin and end with Section 101.
Impact on Emerging Technologies
The threat of Alice/Mayo to technologies such as artificial intelligence, 5G, medical diagnostics and treatments, and others is well documented, and so it is unnecessary to repeat the detailed writings of others here. One takeaway on Investpic is that the most brilliant software advance in the world counts for nothing if a judge arbitrarily decides such advance is abstract. See, e.g., Investpic Pet.App. 20a. Found a way to generate a general deep-learning system that learns 10,000 times faster than a human and yet runs on an Apple IIe? Still abstract. So what if no one ever generated a general (not narrow) deep learning system in decades of trying, or no one is likely to replicate such brilliance in the next 100 years. Best take your brilliance to the trade secret vault because the Federal Circuit believes (despite the clear language of Section 101) that a temporary monopoly on this is the sort of brilliance is beneath the dignity of the statutory patent system despite the long-term benefit to the public domain.
The denial of certiorari in Investpic is foolishness at a time when we most need common sense in the courts given the rise of aggressive and competent foreign competition. With Investpic in mind, the Supreme Court is not likely to slow the insanity in Berkheimer and Vanda Pharmaceuticals. As a learned scholar in patent law recently told me, “Every time the Supreme Court touches Section 101 they screw it up even more.”
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