Understanding the Difference Between Preemption and Novelty/Nonobviousness

“Keeping in mind the distinction between preemption and novelty/non-obviousness should aid in understanding Supreme Court and Federal Circuit case law on patent eligibility even if the courts continue to blur these terms.”

https://depositphotos.com/48763999/stock-photo-great-idea-concept.htmlRecently, the United States Court of Appeals for the Federal Circuit issued its opinion in Solutran, Inc. v. Elavon, Inc., 2019-1345, 2019-1460 (Fed. Cir., July 30, 2019) in which the Court held claims 1-5 of Solutran’s U.S. Patent No. 8,311,945 invalid under 35 U.S.C. § 101 for failing to recite patent eligible subject matter. In reversing the District Court, the Federal Circuit found that the claims of the patent recited an abstract idea (electronically processing paper checks) and that the claims failed to transform that abstract idea into patent-eligible subject matter. More importantly, the Federal Circuit dismissed Solutran’s argument that the claims were patent eligible simply because they were novel and non-obvious, noting that:

“We have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”

Not the First Time

The Solutran decision is not the first time the Federal Circuit has held that novelty/non-obviousness does not bear on the question of patent eligibility. In the case of Intellectual Ventures, I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), the Federal Circuit offered the following caveat:

“Here, the jury’s general finding that Symantec did not prove by clear and convincing evidence that three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.”

At first blush, the willingness of the Federal Circuit to invalidate claims as patent-ineligible despite their admitted novelty and non-obviousness seems illogical. Isn’t subject matter that is novel and non-obvious inventive? So why would subject matter that is inventive nonetheless lack an “inventive concept”? To answer such questions, it is important to understand that the Supreme Court and the Federal Circuit have both used the term “inventive concept” with regard to patent eligibility in a manner different than what would be understood by giving that term its ordinary meaning. Normally, the term “inventive”, as used in the context of patents, would connote a machine, an article of manufacture, or composition of matter that is new and unique. However, in the context of patent eligibility, the U.S. Supreme Court, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U. S. ___ (2012), has defined the term “inventive concept” as follows:

an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

The Importance of Preemption

To properly understand the term “inventive concept” in connection with patent eligibility, this term must be viewed through the lens of preemption, the bedrock principle underlying the judicial exceptions to 35 U.S.C. § 101 imposed by the Supreme Court. The term preemption can best be understood in terms of the following statement made by the Supreme Court in Mayo:

“In applying the §101 exception, this Court must distinguish patents that claim the “’buildin[g] block[s]’” of human ingenuity, which are ineligible for patent protection, from those that integrate the building blocks into something more”

Note that the concern expressed by the Supreme Court about inventors preempting the building blocks of invention is not new. Indeed, the Supreme Court expressed such concerns many years ago in the case of O’Reilly et al. v. Morse et al, 56 U.S. 62, 122 (1853) in which the Court questioned the patent eligibility of Morse’s claims directed to the use of electromagnetism to print intelligible characters without reciting any structure to accomplish that task. In finding such claims invalid, the Court held:

“Why, therefore, should he be required and permitted to disclaim in the one case and not in the other? The evil is the same if he claims more than he has invented, although no other person has invented it before him. He prevents others from attempting to improve upon the manner and process which he has described in his specification — and may deter the public from using it, even if discovered. He can lawfully claim only what he has invented and described, and if he claims more his patent is void. And the judgment in this case must be against the patentee, unless he is within the act of Congress which gives the right to disclaim.”

Understanding the importance of preemption in connection with patent eligibility will help in better understanding the language in some recent Federal Circuit decisions that appear to have blurred the distinction between preemption and novelty/non-obviousness. Consider, for example, the recent decision of the Federal Circuit in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F. 3d 1288 (Fed. Cir. 2016). In that case, the Federal Circuit reversed and remanded a holding of patent invalidity under 35 U.S.C. § 101 by the District Court. In finding the patents in suit patent-eligible, the Federal Circuit noted that:

“In other words, this claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows, which previously required massive databases). The solution requires arguably generic components, including network devices and “gatherers” which “gather” information. However, the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.”

Here, the Federal Circuit did not intend its reference to the “unconventional technical solution” recited in claims to refer to the novelty/non-obviousness of such claims. Rather, by referring to the claimed invention as an “unconventional technical solution,” the Federal Circuit made clear that the claims of the patent had integrated one of the building blocks of technology into something more, thereby rendering the claims patent eligible by avoiding preemption.

Keeping in mind the distinction between preemption and novelty/non-obviousness should aid in understanding Supreme Court and Federal Circuit case law on patent eligibility, even if the courts continue to blur these terms. Moreover, focusing on preemption and avoiding novelty and non-obviousness in arguments for patent eligibility will increases the chances of success both in patent prosecution and patent litigation.


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Copyright: garloon 


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Join the Discussion

11 comments so far.

  • [Avatar for Anon]
    October 1, 2019 01:38 pm


    I recognize the trepidation, but alas, the term predates the current muckery surrounding 101.

    One may think of it this way: a required section of a patent application is titled “Abstract.”

  • [Avatar for Jerry (Garcia or Springer or Seinfeld)]
    Jerry (Garcia or Springer or Seinfeld)
    October 1, 2019 10:04 am

    Thanks, Anon at 7. Scary though, to use the word “abstraction” in your analysis. The brain-dead will use that to so say that the patent claim is ineligible under 101.

  • [Avatar for Concerned]
    September 30, 2019 05:13 pm

    Angry Dude:

    I will go to the morgue!

  • [Avatar for angry dude]
    angry dude
    September 30, 2019 02:26 pm

    Concerned @3

    Dude, stop throwing good money after bad..

    Assuming you get your patent what are you going to do with it ???
    You know all too well that you won’t be able to enforce it
    Stop feeding PTO and patent lawyers
    If everybody does it at once they’ll feel it immediately
    YES to Boycott !!!
    NO more patent filings from independent inventors and small R&D companies !!!

  • [Avatar for Anon]
    September 30, 2019 12:51 pm

    Jerry G/S/S,

    The notion that you reference is a well-known (even if disregarded by the judicial branch) concept called: Ladders of Abstraction.

    The concept is put into play in a number of ways, some of which may surprise you.

    For example, the ability of claims to cover more than one actual “objective physical structure” is a provision of the Ladders, and may be put into effect with the claim term “comprising.” Another implementation of the Ladders may be found in claims with ranges. These examples are so intuitive that many people (and most non-practitioners) may not even realize that they are engaging with the concept of the Ladders.

    One may think of it this way: any time a claim covers more than a single, fixed, and completely specified physical object, a rung on a “ladder of abstraction” has been climbed. Technically speaking, one is limited to one patent per invention. If there were no Ladders of Abstraction, then separate patents would be required for each physically distinct ‘variation of a theme,’ no matter how small or inconsequential a particular variation may be.

    The real world — with the real limits of language, time, space, and even mundane things like limits of claims that may be pragmatically processed, practically demand the concept of the Ladders of Abstraction.

    The difficulty of course comes when people have feelings about providing innovation protection for certain types of innovation. Certain types naturally — and easily — have spans of MANY rungs. For such types of innovation there is another factor that infects the situation. This is the mindset that patents should not be “too easy.”

    This is a historically long and especially pernicious infection.

    As I have recounted numerous times, the Patent Act of 1952 was deliberately crafted (in substantial part) to deal with such an infection. Prior to that, the Supreme Court had taken advantage of its prior invited use of Common Law to develop the meaning of the word “invention” (in scores of variants of that word, including Gist of the Invention and inventive step). To this topic, the Supreme Court brought down its thumb on the scales of innovation with its Flash of Genius “level.”

    As any historian (or inte11ectually honest patent commentator) would tell you, the Act of 1952 explicitly rejected this formulation.

  • [Avatar for Jerry (Garcia or Springer or Seinfeld)]
    Jerry (Garcia or Springer or Seinfeld)
    September 30, 2019 11:06 am

    This from the Morse case: “The evil is the same if he claims more than he has invented, although no other person has invented it before him.”

    But how do you determine what he has invented that should be permitted in a claim? Consider a mechanical case in which the inventor has a reduction to practice of a mechanical device in which element A is connected by a nut and bolt to element B. Has he also invented that device in which the the connection is by way of a rivet? or glue? etc.? In this simple example, of course, we all would say “yes” for most cases, and the claim could read “connector” or “connection means” with a laundry list of connector types in the spec to satisfy the means+function rules.
    But isn’t that the “evil” that the Morse case complained about? If not, where do you draw the line? Where is go-nogo boundary?

  • [Avatar for EG]
    September 30, 2019 09:05 am

    The whole concept of “preemption” in patent law is a canard without any factual support. It is simply a fictional argument foisted by those, especially judges/justices, who subscribe to the dubious “blocking patents” theory.

  • [Avatar for Ternary]
    September 29, 2019 06:33 pm

    “… without reciting any structure to accomplish that task.” This implies (but who knows by now?) that reciting a structure that accomplishes the task (like “scanning said checks with a digital image scanner” in Solutran that is structure and a limitation, and is different from a human viewing a check.) will resolve the issue. Scanning a check with a digital image scanner is not an abstract idea. No matter what you tell me: that humans can view checks, that humans have done that for ages, scanning something with a digital scanner is a machine operation. Seeing anything else in this is absurd, nonsense, malarkey, pure unadulterated bs (pardon my French).

    The claimed invention in Solutran does not preempt any person from viewing checks and assessing if the image data is different from MICR information. You can repeat allegations of the preemption aspect until you are blue in the face. It is just not true. It is factual incorrect and is in violation of any understanding we have about what “abstract” is. A human performing the steps of Solutran’s claims is not preempted from doing so by the claims, which require a “digital image scanner.”

    Don’t try to con me in seeing even the slightest form of preemption here. There is no “there” there. This is where the original motto of the Vienna Circle (the logical positivists/empiricists) may help out. “The meaning of a sentence lies in its method of verification.” A simple principle, not nearly enough applied.

  • [Avatar for Concerned]
    September 29, 2019 04:08 pm

    “We have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”

    Would the Solutran claims be deemed patent eligible if the processing of paper checks was never achieved by working professionals and experts on a manual basis, thus the electronic process was a first ever solution by any format?

    I ask what may be an obvious question/answer as the problem my claims solved were never achieved in the manual state or electronic state. No preemption issue, no 102 or 103.

    I feel that I am just be jerked around by the USPTO to avoid issuing a patent. And respectfully, articles such as this one that seem to try to justify decisions that are illogical, feed into the craziness.

  • [Avatar for Paul Johnson]
    Paul Johnson
    September 29, 2019 03:16 pm

    If patent eligibility truly is about preemption, then that is a question of fact, and thus can never be decided by summary judgment.

  • [Avatar for Anon]
    September 29, 2019 01:58 pm

    and the definition of “sufficient” is…?

    and the definition of “significantly” is….?

    (or are these — like “abstract” something that “we know it when we see it”…?)

    Additionally, “preemption” has been held to be a factor — and sometimes not a controlling one at that.

    I am sure that “B” can fill you in on his experiences along that regard.