The Search for the ‘Inventive Concept’ and Other Snipe Hunts

Everybody in the patent world is talking about the latest atrocity from the Federal Circuit known as the American Axle decision, but few actually appreciate the true level of absurdity. Yes, 35 U.S.C. § 101 swallowed §§ 112(a), 112(f), 102, and 103 in a single decision (a new feat of judicial acrobatics), and Judges Taranto and Dyk displayed their technical ignorance. For example, in citing the Flook decision Judges Dyk and Taranto assert that Flook’s mathematical formula (known to a million-plus engineers as the steepest-descent algorithm) is a “natural law.” American Axle, slip op. at p. 19. Seriously? Are Federal Circuit judges so technically ignorant that the entirety of the country is doomed to believe such an idiotic fantasy that a particular adaptive mathematical algorithm associated with no natural law must be a natural law?

The Federal Circuit’s inability to understand basic science, while irritating, is not new. Certainly, American Axle is based on judicial fantasy, but the most important flaw of this highly-flawed decision is not that the Federal Circuit lacks a fundamental understanding of science, but that Federal Circuit judges are too intellectually lazy to research case law, or hire a clerk capable of researching case law. Specifically, for over the better part of a decade, Federal Circuit judges have proved themselves too intellectually lazy to understand (much less than define) a term they throw about liberally when rejecting patent claims.

I speak of the meaningless standard of “inventive concept.”

The public has for far too long been subjected to one mindless decision after another that claims are “abstract” because they lack an “inventive concept.” However, every court decision that invalidates a patent based on the “inventive concept” standard is garbage, and the judges and justices that believe they are constitutionally enabled to use such a standard (post 1952) are peddlers of snake oil.

Justice Stevens’ Statutory Illiteracy

Take for example, Parker v. Flook. There’s no reason to believe that Justice Stevens had actually heard of the 1952 Patent Act (which was passed to remove “invention” from the Patent Law), much less bothered to read the text of Section 101. It was Justice Stevens who asserted that “the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application” (emphasis added), while expressly rejecting the idea that “the considerations of ‘inventiveness’ . . . are the proper concerns of §§ 102 and 103.” Justice Stevens concluded, “Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.”

Fortunately, it took a mere three years before the Flook nonsense was overturned in the Diamond v. Diehr decision, much to Justice Stevens’ dismay. It is notable that Justice Stevens refused to even acknowledge the 1952 Patent Act in his Diehr dissent or bother to address how his Flook and Diehr opinions were consistent with the statutory text of Section 101. For whatever unknown reason, Justice Stevens exhibited a curious illiteracy every time he was confronted with the statutory text of the Patent Law.

The Federal Circuit Clings to Fantasy

Unfortunately, the Federal Circuit clings to the meaningless idea of “inventive concept,” “inventiveness,” invention” etc. as a standard of patent eligibility, even though the Supreme Court’s Graham v. Deere, 383 U.S. 1 (1966), decision expressly acknowledged that the 1952 Patent Act removed “invention” as a requisite to patentability. “Yet, as this Court has observed, ‘[t]he truth is the word [`invention’] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.’” Id. at p. 12 (quoting McClain v. Ortmayer, 141 U.S. 419, 427 (1891)).

Setting aside the decades of judicial schizophrenia as to whether “invention” or “inventive concept” should be a standard of patentability, any judge or justice that ever held a patent ineligible post 1952 for lack of an “inventive concept” should know better as a sentient adult. Has anyone noticed that not a single Federal Circuit case has ever defined what an “inventive concept” in a way that survives the next Federal Circuit decision? American Axle? Chamberlain? Investpic? Villena? Guldenaar? They’re all nonsense. Quoting famed fictional inventor Jacobim Mugatu, “Doesn’t anyone notice this? I feel like I’m taking crazy pills!”

The “inventive concept” requirement was naught but ill-conceived dicta that Justice Stevens promoted in his short-lived Flook decision that is used by modern-day judges to promote the idea that the courts must save the world from objective patent standards. Stealing from Hans Christian Andersen, the Federal Circuit peddles the “inventive concept” requirement as a judicial equivalent to a certain royal invisible garment that all must acknowledge or are proved to be hopelessly stupid, incompetent, and unfit for their positions. However, THERE ARE NO CLOTHES! As the classic Andersen story (sort of) goes, the vain Emperor Palpatine paraded before the public unclad while no one dared to honestly comment for fear of humiliation.  Finally, one obnoxious child situated in the midst of the learned gentry cried out (translated from the original Danish), “But he’s Nekkid,” and everyone then concedes the truth of it. However, despite the emperor’s knowledge of the falsity of the situation, the classic story ends with the emperor continuing the farce in order to save face—forcing the chamberlains to carry a train that wasn’t there.

I have browbeat the USPTO, the Federal Circuit, and the Supreme Court with rather candid language harshly mocking this idiotic and meaningless standard of “inventive concept,” while demanding an answer as to what is an “inventive concept.” Unfortunately, the courts are determined to shamelessly maintain and promote this “inventive concept” fiction when they can’t simply issue a Rule 36 or deny certiorari. The Federal Circuit’s search for an inventive concept is a judicial snipe hunt; a fool’s errand. It is a quest for the elusive heffalump. Ten-thousand H.C. Andersens could never adequately parody this “inventive concept” nonsense.

Can we all admit that there is no meaningful “invention” or “inventive concept” standard, or will the Federal Circuit and Supreme Court continue to insist we all continue to swallow the crazy pills?

Rather than merely faking understanding, it might occur to the occasional Federal Circuit judge or Supreme Court justice to read some case law—or ask a clerk to do so—to understand the origin of “invention.”

Invention is Nonobviousness

The requirement of “invention” was never originally a distinct and separate requirement from nonobviousness. To the contrary, “invention” was a term the Supreme Court used to describe as that which was beyond one of ordinary skill in the art. “[F]or unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention.” Hotchkiss v. Greenwood, 52 U.S. 11 How. 248, 267 (1850). This ingenuity and skill possessed by an ordinary mechanic was thought to be an issue of fact. “It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.” Id. at 266.

That is, the level of “invention” as originally conceived by the Supreme Court in 1850 to obtain a patent is, by all appearances, an evidence-based nonobviousness inquiry under Section 103. The efforts of modern-day judges and justices to transmogrify invention to anything more than nonobviousness are not just exercises in arrogance and ignorance, but a refusal to obey the statutes in favor of a capricious judicial veto of patents. Judge Giles Rich, who co-wrote the 1952 Patent Act with Pat Federico, spent decades mocking both “invention” and jurists who couldn’t be bothered to read and follow the statutory Patent Law. However, despite the clear statutory language and a wealth of law review articles discussing the 1952 Patent Act, the courts remain unaware that they lack the constitutional authority to rewrite statutes from the bench, and that no one ever adequately defined “invention” or “inventive concept” in the last 169 years of trying after the Hotchkiss decision.

Slightly off topic: The Supreme Court got the Hotchkiss decision wrong at the end of the day. Indeed, in nearly the same breath the Supreme Court demanded an evidence-based inquiry as to what is beyond the ordinary skill of a mechanic, the Supreme Court inserted their own evidence-free judgment as to whether substituting porcelain for wood was beyond the skill of an ordinary mechanic in place of an actual evidence-based decision. On this issue Justice Woodbury’s dissent got it right.

An Invitation

I invite any and all judges and justices to explain what an “inventive concept” is. Man-up already. A string of 169 years of total failure is enough, isn’t it?

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