Supreme Court Refusal to Hear Investpic Signals Death for Most Software Patent Applications

“It is past time for the courts to understand that the patent law does not begin and end with Section 101.”

https://depositphotos.com/10145161/stock-photo-grave.htmlThe 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?

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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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The Author

Burman York (Bud) Mathis III

Burman York (Bud) Mathis III is a sole-practitioner in the Washington D.C. area with experience in patent drafting and prosecution, opinion writing, due diligence, litigation and appellate work. Mr. Mathis technical expertise and experience is far-ranging. For example, Mr. Mathis’ experience covers a wide variety of highly-technical subject matter that includes wired and wireless communications (including MIMO, 3G, 3GPP/LTE, D2D and 4G technology), analog and digital electronics, image processing, semiconductor devices and processes, solid-state physics, material science, printers and copiers, projectors, cameras, speech recognition and synthesis, xerography, cryptography, control systems, magnetic and optical disc technologies, fiber optics, MEMS technologies, nanosensors, GPS navigation systems, software, computer networking and business methods.

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 19 Comments comments.

  1. Pro Say June 27, 2019 3:37 pm

    Summed up:

    “the only valid patent is one which this Court has not been able to get its hands on.” Jungerson v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting)

  2. Night Writer June 27, 2019 4:24 pm

    What the judges have done is reversed the burden from the person wanting to invalidate a claim to the person wanting to keep their claim. The judges have set up some standard which no one could possible understand that must be met to keep your claims. It is very similar to flash of genius where the judges escalate and escalate for is worthy of a patent according to their private opinions.

    The only to look at claims is with 103/102. Yes functional language recites structure as any real engineer will tell you.

  3. IPdude June 27, 2019 6:17 pm

    Isn’t it possible that SCOTUS is punting this issue to Congress? SCOTUS is aware that Congress is working on the 101 issue and it makes no sense for them to grant cert given the issue may be corrected by Congress shortly. I know, I’m being optimistic (perhaps foolish).

  4. mike June 27, 2019 6:41 pm

    Excellent article. Everything stated here shows the need for Congress to step up to the plate and provide the fix for Section 101. Just abrogate the mess SCOTUS got us into on Section 101, and strip away their ability to even comment on the matter. The other statutes are doing well and playing their part.

    =======

    “Congress has the sole right to create federal legislation under the U.S. Constitution, and the American people have the right to demand that it be applied as written.”

    – Sherry Knowles, Written testimony provided to the Subcommittee on Intellectual Property, June 4, 2019

  5. concerned June 27, 2019 6:48 pm

    “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.”

    I have one of those rejections.

    And the Examiner states that my claims process routine Social Security benefits. My claims never processes a routine Social Security benefit, nor could my claims. But then again as you point out….”you don’t need to actually address the underlying issue.”

    In comparison, if I invented a process that causes an airplane to never crash, would those claims be deemed abstract flight control? The underlying issues that the claims correct and avoid crashes by working professionals and experts would not need to be addressed. My claims which correct oversights by working professionals and experts were also not addressed.

    At least the absurdity is consistent.

  6. JTS June 27, 2019 7:58 pm

    ” What is an “inventive concept?” ”

    It’s an abstract idea.

  7. B June 27, 2019 8:33 pm

    @ Pro Say “‘the only valid patent is one which this Court has not been able to get its hands on.’” Jungerson v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting)”

    I actually wrote that to the Supreme Court to emphasize the fact that the CAFC reversed ZERO 101 rejections from the USPTO in five years, and that the PTAB has killed no less than ten thousand patent applications based on a capricious assertion.

    The Supremes weren’t impressed. Cert. denied. Maybe they’re all about stare decisis; maybe they’re just jerks.

    The first 101 decision out of the SCOTUS post Congressional bill will be interesting. It took 20 years (Benson) for the SCOTUS to screw the pooch on patent eligibility after the 1952 Patent Act. If we’re lucky we’ll get half that from the present SCOTUS.

  8. B June 27, 2019 9:02 pm

    @ JTS “It’s an abstract idea.”

    You win the internet and a large bag of Cheetos. I may need to steal that line.

    @ Concerned “At least the absurdity is consistent.”

    The USPTO excels at it. The dolts at the PTAB who rejected Villena asserted the claims covered human activity even though zero human activity is recited. Apparently, no one at the PTAB actually reads the claims they’re reviewing.

    What a lot of people don’t realize is how close the SCOTUS came to outright excepting all software patents in Bilski thanks to Justice Stevens, Ginsburg, Sotomayor, and Breyer. I won’t be able to prove it but I’d bet a week’s milk money that Ginsburg, Sotomayor, and Breyer will vote to take cert on Berkheimer b/c letting a patent go all eligible and stuff is intolerable to them.

    To everyone in general “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.”

    I basically stole this from Judge Rich, and I would have gotten away with it if it too weren’t for those meddling kids.

  9. Paul Cole June 28, 2019 7:23 am

    Those who have followed my comments and posts will know that I strongly support revision of the present US approach to eligibility under section 101. However, on a quick scan, the representative claims in issue are very, very boring. Paraphrasing Groucho Marx, I’ve found a marvellous case to go to the Supreme Court. But this is not it.

  10. B June 28, 2019 11:10 am

    @ Paul Cole “Those who have followed my comments and posts will know that I strongly support revision of the present US approach to eligibility under section 101. However, on a quick scan, the representative claims in issue are very, very boring.”

    Given your past comments and present concerns it appears that a revision to 101 is in order so as to categorically exclude claims that are very, very boring. I’m sure that was the real legal theory used in the Mayo decision.

  11. Larry June 28, 2019 3:42 pm

    Didn’t Justice Thomas (who wrote Alice by the way) recently state that “[w]hen faced with a demonstrably erroneous precedent, my rule is simple: We should not follow it?” Gamble v. U.S. No. 17-646 (decided June 17, 2019). Now here’s a case or two that shouldn’t be followed.

  12. Night Writer June 28, 2019 5:09 pm

    >>What a lot of people don’t realize is how close the SCOTUS came to outright excepting all software patents in Bilski thanks to Justice Stevens, Ginsburg, Sotomayor, and Breyer.

    Or that if Scalia had signed on to all parts of the majority opinion, then Alice never would have happened. Scalia forever shamed himself and proved that he was not worthy of being appointed to the Scotus because of this.

    But you are right that there are at least three still there that believe that patents weren’t made for incentivizing the information economy, e.g., Ginsberg infamous statement regarding people.

    What is also interesting is that I think that Stevens and some of the others actually don’t understand information processing and think they have a consciousness and their processing goes on in the ether in a spiritual world. If you read some of the things that group write, they appear to be from the 1800’s in their thinking about cognition. Ginsberg is probably the worst as she has regularly said things that are unworthy of a 4 year old.

  13. Anon June 29, 2019 10:31 am

    B @ 8,

    You are close, but off in some not small ways. The focus at that time (Bilski) was NOT “software patents,” but rather, the focus was “business method” patents.

    The two are NOT interchangeable (even as there is often overlap).

    Perhaps more importantly though, not only is the point that you raise (what almost happened with the Stevens/Breyer/Ginsburg/Sotomayor group)worthy of direct focus, but that direct focus would yield a larger point in that Stevens had been slated to write the Majority position, and lost that position because his legislating from the bench would have caused a direct Constitutional Crises (with a direct overwriting of specific Congressional section of statutory law concerning business methods necessarily being “scrivened” into having no meaning or force of law (why would there be a limited capability of review of business method patents if there could be NO business method patents to begin with?).

    This comes from both some inside knowledge as well as recognizing that Steven’s “Dissent dressed as a Concurrence” is written in a form of a typical majority decision, and was originally intended as a historical “Bookend” to his career on the bench.

    Stevens attempted to reach too far.

  14. B June 29, 2019 1:19 pm

    You are close, but off in some not small ways. The focus at that time (Bilski) was NOT “software patents,” but rather, the focus was “business method” patents.

    You’re correct about the majority opinion, but note that I was addressing the dissent, which had the view that software was not a “process.” It was Justice Steven’s writing Parker v. Flook 2.0 replete with a lot of Benson cites.

    BTW, in any sane world Benson would be considered an improvement to a computer through software same as Enfish. Further, no one in a black robe remembers that the Markman case was about the abstract business method of inventory control using a generic computer and everything is routine as an issue of law.

  15. B June 29, 2019 1:42 pm

    @ Anon “This comes from both some inside knowledge as well as recognizing that Steven’s ‘Dissent dressed as a Concurrence’ is written in a form of a typical majority decision”

    I have always viewed Steven’s concurrence as a dissent although, as you point out, it technically is a concurrence.

    Also, look at Breyer’s “concurrence,” which is nothing but anti-software propaganda.

  16. Night Writer July 2, 2019 6:52 am

    >>BTW, in any sane world Benson would be considered an improvement to a computer through software same as Enfish

    Benson had claims to hardware registers too. Benson was an attempt to remove from eligibility all information processing method and apparatuses. Surprisingly Wikipedia does a good job summarizing Benson.

    R. Stern was the head of the DOJ IP division at the time and wrote the brief that was largely adopted by his friend the CJ. I have spoken extensively with R. Stern about 101. It is pretty clear to me that Benson was judicial activism and that it had the goal of eliminating all claims to information processing, which is incredible when you think we are in the information age and that information processing is the greatest innovative engine of our time. I don’t think an argument can even be made against that. I also believe that R. Stern knew that the arguments he was making in Benson were fallacious and that he did so to try and remove patent eligibility from information processing.

    To understand Benson, you have to put yourself in the position of a person in the 18th century where there is a mind that processes independently of the brain. The processing is magical and spiritual. Math is considered to be mystical and to exist in its own plane with angels. Benson tries to gather up all maths and put them into this category. There is almost a heresy portion of Benson in that they feel that patenting maths is against G*d. Stevens definitely believed this. I believe that R. Stern believes this too. I think that Ginsburg believes this too. I think that Breyer just has no clue and thinks that he is the smartest little boy in the world and that none of this hard or deserving of patents as he can figure it out and would have done so had he been an inventor. Kagan is just a warrior. She doesn’t care about the Constitution. She is helping big corporations and doing what she thinks is good for the economy. Sotomayor is so arrogant that it is hard to tell what she thinks, but I think that she is in the mystical camp with Ginsburg. From what I’ve heard her say, I’d say that she doesn’t understand information processing, science, engineering, business, technology, or pretty much anything outside of criminal law.

    https://en.wikipedia.org/wiki/Gottschalk_v._Benson
    Gottschalk v. Benson, 409 U.S. 63 (1972),[1] was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because “the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

  17. Anon July 2, 2019 9:25 am

    Night Writer,

    Well stated. We have the Court (yet again) legislating from the bench and trying to control the scope of patent eligibility which plainly is a transgression of the Separation of Powers doctrine.

    The manner that I have provided that cuts quite cleanly through the (purposeful) obfuscation is to distinguish between:

    1) math (simple, or pure math on a ‘per se’ basis);

    2) applied math (as reflected in most all engineering, and which would include ‘operational math’); and

    3) MathS (the overarching philosophy that may intermingle both “1)” and “2)”, but is not the same as any type of notion of “Fine Arts” that would preclude patent coverage).

  18. B July 2, 2019 11:27 am

    “Gottschalk v. Benson, 409 U.S. 63 (1972),[1] was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because “the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

    In one on by amicus briefs I made an analogy to tire treads. Patenting the tread design would wholly preempt the design and in practical effect be a patent on the design itself. EVERY improvement patent is practically a preemption of the improvement.

    Too bad none of these black-robed activist ever read 101. I’m pretty sure Taranto would be totally SHOCKED to learn that opening a rubber mold was well known in 1981, and that the processing in Diehr occurred in the abstract domain of information processing.

    “To understand Benson, you have to put yourself in the position of a person in the 18th century where there is a mind that processes independently of the brain.”

    Ghost in the Machine. Rene Descartes’ influence on patent law. Not just 18th century philosophy too, but a modern anime.

  19. Ramiro Pych August 7, 2019 6:46 am

    Hi everybody 🙂 I’m pretty new to 3d printing and I have many questions on the topic, so I hope you won’t get mad at me for asking here at least couple of them. I think before I’ll get seriously into designing I should focus on the software I’m going to use, and that’s what I would like to ask you about. Mainly, should I look for the most simple software I can find or would it be better to look for something more complicated? I’m worried that I’ll get some undesirable habits while working with less complex software. Currently I am using some online software called SelfCAD (I didn’t have to download anything). I’ve read some good opinions about it, but maybe you could share yours as well? My second question is about the program as well: should I search for program that will allow me design and slice it in it, or should I use a different software for each of them? The one I’m suing allows me to do both i it. Does it even make a difference? Weirdly, I couldn’t find the answer to that, as it seems like most blogs and sites want to focus on the very basics (like what is 3d printing and so on), and while the answers to those questions are fine, it seems like no one wants to go into the details (it looks like some of them even plagiarise each other! I swear I’ve read the same answers to the same questions on at least 3 different websites) but I’m getting off-topic… The last question is about 3d pens. Would it be possible to somehow convert whatever I draw with a 3d pen to a 3d model in a software? For example, if I’ll draw a cat with 3d pen, would it be possible to get its design in a software? I’m not sure how that could even work, but the very idea sounds appealing to me. Anyway, I think I’ll stop here just in case no one will ever answer me and all of this writing will be for nothing. I apologise that I’m using your content to ask questions, but I hope you’ll understand and advice a beginner like me. Anyway, thank you for posting. I learned something from this and that’s always appreciated. Thank you, and I hope to hear back from you very soon 🙂