New Enablement-Like Requirements for 101 Eligibility: AAM v. Neapco Takes the Case Law Out of Context, and Too Far – Part I

“We believe AAM v. Neapco’s cited Supreme Court cases do not support the opinion’s analysis. The same goes with AAM’s assertion that Federal Circuit case law since 2015 has also incorporated these Section 101-enablement or ‘how to’ and ‘specificity’ requirements for patent claims.”

Section 101 - https://depositphotos.com/81996574/stock-photo-word-analysis-and-compass.htmlWith its recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020), and a 6-6 stalemate by the court’s active judges on whether to take the case en banc, the Federal Circuit has now adopted—under the rubric of 35 U.S.C. §101—a formalized set of enablement-like requirements for patent claims. For a simple “threshold” eligibility test, section 101 has grown remarkably complex. Indeed, since the Supreme Court’s 2012 Mayo and 2014 Alice decisions re-cast patent eligibility into a “two-step framework,” the Section 101 test adjudges not just subject-matter eligibility and the three “limited” exceptions thereto, but also patentability or “inventive-concept” challenges predicated on comparisons to the prior art, see 35 U.S.C. §§ 102-103. And now the enablement-type requirements imposed by AAM v. Neapco.

The majority in AAM v. Neapco would surely describe these Section101 developments differently. The panel, after all, emphasized that its holding as to these requirements merely follows Supreme Court precedent, including the Court’s modern Section 101 jurisprudence and decisions in Flook (1978), Diehr (1981), and Mayo-Alice. As addressed below, we believe AAM’s cited Supreme Court cases do not support the opinion’s analysis. The same goes with AAM’s assertion that Federal Circuit case law since 2015 has also incorporated these Section 101-enablement or “how to” and “specificity” requirements for patent claims. As detailed below, the majority reads these Federal Circuit cases out of context; the quotes pulled therefrom reflect dicta or verbiage that one would expect from the scores of Section 101 decisions that otherwise merely apply Section101 legal requirements or address various Section 101-eligiblity arguments.

What they do not reflect are legal requirements that the Supreme Court or these Federal Circuit decisions appear to have consciously considered or imposed. AAM alone does that.

Another Look at the Supreme Court Precedent

To be clear, the enablement-like requirements AAM now imposes for section 101 eligibility are that (1) the claim-at-issue alone (2) must demonstrate “how to” practice, “achieve” or “accomplish” the claimed invention, and (3) the claim must make this showing with “specificity.” AAM v. Neapco, Maj. Op. at 10-11, 15, 16 & n.7, 16-17, 19, 20-21, 27-29 (all emphasis added unless otherwise noted). The AAM majority claims Supreme Court precedent has long imposed these requirements. E.g., id. at 10-11, 15-17, 19-21. An analysis of those precedents shows otherwise.

Parker v. Flook (1978). Starting “[m]ore recently” with Parker v. Flook, 437 U.S. 584 (1978), the AAM majority stated that this case indeed “exemplified this [“how to”] principle” for Section 101-eligibility and what the claim-at-issue must “disclos[e].” See id. at 19. Specifically, AAM said Flook and the claims therein were ineligible not because those claims “in practical effect” recited an ineligible calculation for “updating alarm limits” (as the PTO examiner there had indisputably found—and the Supreme Court duly held, see 437 U.S. at 587-88, 594-95). Rather, said the AAM majority, those Flook claims were ineligible because of what the “claimed method” “was missing” or failed to disclose: “What was missing from the claimed method reflected what was missing from the patent application as a whole, which “d[id] not purport to explain how to select . . . any of the . . . variables” involved, or “purport to contain any disclosure relating to the chemical process at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system.” AAM Maj. Op. at 19 (citing Flook, 437 U.S. at 586). Citing these allegedly deficient disclosures in Flook, supra, the AAM majority then immediately concluded as follows:

The Court in Flook held that the claimed method contained no patent-eligible invention.” 437 U.S. at 594. Though the Court recognized that the use of a mathematical formula or law of nature did not alone make a claim patent ineligible, it explained that what was required was “an inventive application of the principle.” Id. at 593–94. Such an inventive application, the Court concluded, was not present in the claimed method. Id. at 594.

AAM Maj. Op. at 19.

The AAM opinion misreads Flook’s holding and rationale. Foremost, and for all its discussion on certain “inventive” principles, Flook ultimately held that the claims were ineligible for the simple reason that they were “in practical effect” a claim on the idea or mathematical formula “itself,” i.e., on one of the three implied exceptions to Section 101. 437 U.S. at 587-88, 594-95. The Flook holding did not turn on whether the claim sufficiently recited an “inventive” concept, as the AAM majority described it (or at least strongly suggested in saying Flook “required … ‘an inventive application of the principle,’” see AAM Maj. Op. at 19 (quoting Flook, 437 U.S. at 593-94.)).

Critically, nor did the Flook rationale delve into what “disclosure” was “missing from the claimed method” or “the patent application as a whole” as the basis for its section-101 ineligibility holding. See 437 U.S. at 587-88, 594-95. Instead, AAM’s quotes about the Flook patent’s “missing” “variables” and “disclosures” are merely part of Flook’s background discussion of facts and procedural history—all of which took place eight pages before the Flook opinion’s discussion of its holding and rationale. See AAM, Maj. Op. at 19 (describing Flook background, including the patent application, its “disclosure” in the “claimed method” and what was purportedly “missing” therefrom, 437 U.S. at 586, as part of Flook’s holding and analysis, 437 U.S. at 594-95).

Flook also rejected the applicant’s main argument that the claims could meet section 101 with any “post-solution activity” recited in the claim text—“no matter how obvious or conventional” those added claim elements were. Id. at 585, 590, 595. But nothing in that analysis suggested an affirmative “how to” enablement-like requirement, applicable only to the claims. See, e.g., id. Indeed, Flook reiterated this was simply a matter of the claim reciting ineligible subject matter, “comparable to a claim that the formula 2?r can be usefully applied in determining the circumference of a wheel.” Id. at 595. In Flook’s words, “[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory.” Id. (applying In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)). In our view, AAM cannot plausibly stretch Flook to support its new Section 101 requirements.

Diamond. v. Diehr (1981). While recognizing that Diamond v. Diehr, 450 U.S. 175 (1981) doesn’t support patent ineligibility generally, the AAM Majority nonetheless misdescribes Diehr’s core holdings, emphasis, and analysis. According to AAM, the Diehr stands for the premise that its claims recited a “specific and detailed series of steps” for “a new and specific process of molding rubber products,”—and that those added steps thus demonstrated, “apparently,” a “significant” and “inventive application of the [Arhennius] formula” as used in those Diehr claims. AAM, Maj. Op. at 19-20 (quoting Supreme Court’s 2012 Mayo decision and its description of Diehr, supra); Mayo, 566 U.S. at 81 (discussing Diehr, 450 U.S. at 187)). For that “inventive” reason, suggested the AAM Majority, the Diehr claims became patent-eligible. Id.

Not exactly. Diehr upheld the patent-eligibility of a claimed multi-step process for making rubber products, including steps that used a natural law or equation (the Arrhenius equation) “in conjunction with” multiple other steps that merely recited use of “conventional” equipment and a standard “digital computer.” 450 U.S. at 177-78, 181, 184, 187, 193. As to the AAM opinion, then, three points merit attention.

First, contrary to AAM’s “inventive-concept” emphasis, the Diehr claim was Section 101-eligible precisely (and perhaps only) because it involved such a multi-step manufacturing process, “considered as a whole.” Id. at 188, 192. Eligibility thus turned on the analysis that this was not a claim on, in “practical effect” for, or “directed essentially to” an ineligible concept or “idea of itself,” such as “an attempt to patent a mathematical formula”; it was instead a multi-step claim for molding rubber products, i.e., eligible subject matter. Id. at 185-87, 191. Accordingly, Diehr didn’t address whether those steps or the formula there demonstrated, “apparently” or otherwise, an inventive concept or “transformative” use, contrary to the AAM opinion. Id.

Second, in focusing on “inventive concepts” in Flook and Diehr, supra, the AAM opinion and its holding as to Hooke’s law appear to pay little heed to the principle that those precedents (among others) have emphasized. That is, that a claim doesn’t become ineligible “simply because it uses a mathematical formula, computer program, or digital computer,” Diehr, 450 U.S. at 187, or “because it contains a law of nature or a mathematical algorithm,” Flook, 437 U.S. at 590. That is the case even when the claim recites, for example, a process with “several … steps” on an ineligible concept. E.g., Diehr, 450 U.S. at 177, 185.

Third, Diehr repeatedly held that “novelty” (Section 102), “obviousness” (Section 103) and other “specific conditions of patentability” are “of no relevance” and “wholly apart from whether the invention falls into a [section 101] category of statutory [eligible] subject matter.” Id. at 189-90; accord id. at 191-92 (further explaining why Sections 102-103 concerns are irrelevant to Section 101). The Court’s 2012 Mayo decision, moreover, emphasized that it was upholding Diehr, one of the cases “most directly on point.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1298, 1302 (2012). Accordingly, Diehr’s emphatic ruling that “conditions of patentability” (e.g., Sections 102-103, and 112) are not relevant to the threshold eligibility issue further undermines AAM’s effort to impose Section 112 enablement-like requirements.

MayoAlice. The AAM opinion further enlists the Court’s most-recent pronouncements on section 101, the well-known Mayo-Alice tandem that established the two-step ineligibility “framework” (namely, the “directed-to” step for recognizing ineligible subject matter and the “inventive-concept” step). More pertinent, however, we do not read either case as imposing section-101 legal requirements that the claim text alone must demonstrate, with specificity, “how to” practice the claimed invention. E.g., AAM, Majority Op. at 11-12, 16-17, 19-21, 27-29.

To the contrary, Mayo itself doesn’t squarely address any principle that the claim alone must demonstrate “how to” implement the invention. In fact, Mayo doesn’t ever use the phrase “how to.” It oft-uses the phrase that a patent applicant cannot simply recite the abstract idea or natural law at issue and say, “Apply it.” E.g., Mayo, 132 S.Ct. at 1294, 1297, 1300. But that is quite a different injunction than the “how to” demands required by AAM. Mayo otherwise merely held that “appending conventional steps, specified at a high level of generality,” was not “enough” to supply an “inventive concept” there and to overcome the ineligible “natural” law claimed by the Mayo patents. See 132 S.Ct. at 1297-98, 1300.

The same holds true for Alice. At most, it merely assumes in passing that a claim alone must demonstrate “how to” practice the claimed invention, let alone that a claim do so with “specificity.” See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354-55 (2014). Indeed, Alice uses the word “how” only insofar as it refers to the claims and “how,” as in Bilski, they are “directed to” an abstract idea for “hedging risk” or for an “intermediated settlement.” Id. \at 2356. Alice otherwise stands for the premises that the two-step Mayo framework is generally applicable and that merely reciting a “generic computer” is not enough to “transform a patent ineligible abstract idea into a patent-eligible invention.” Id. at 2356-58.

The Other Extreme

We pause briefly here to state the obvious: That the eligibility issue and how much a claim must state is a question of degree. After all, no one to our knowledge disputes that a claim that merely recites a result (e.g., an improved process for curing rubber products), without any structure or steps whatsoever, is patent-ineligible. That is, after all, no different than impermissibly claiming an idea. See, e.g., Diehr, 132 S.Ct. at 185 (“An idea of itself is not patentable.”) (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 (1874)) (internal quotes omitted). The issue now imposed by AAM is its enablement-like requirement that the claim text alone must go to seemingly the other extreme and demonstrate “how to” practice or “achieve” the claimed invention, and that it do so with “specificity.”

In Part II of this analysis, we will examine how the AAM opinion also misreads Federal Circuit precedent.

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The Author

Judge Paul Michel (Ret.)

Judge Paul Michel (Ret.) became a private citizen on June 1, 2010 for the first time since he graduated from law school at the University of Virginia in 1966. Upon graduating from law school he became an Assistant District Attorney in Philadelphia, thus embarking upon the career of a public servant from 1966 to his retirement from the United States Court of Appeals for the Federal Circuit in 2010. Michel served on the Federal Circuit, which is the main patent appeals court in the United States, from 1988 to 2010, serving as Chief Judge from 2004 to 2010.

Judge Paul Michel (Ret.)

John Battaglia s an accomplished first-chair trial lawyer, appellate lawyer, and former US Justice Department lawyer who has successfully tried to verdict a broad array of civil and criminal cases. While the subject matter of his cases over the past 22-plus years has ranged from immigration to intellectual property, from guns, drugs, and violence to advanced electrical engineering, pharmaceuticals, and ice-hockey equipment, Mr. Battaglia's area of particular interest and expertise is patent litigation. Mr. Battaglia has successfully argued cases before the U.S. Courts of Appeal for the Federal, Second, Sixth, Seventh, and Ninth Circuits. He argued and prevailed in In re Papst Licensing Digital Camera Patent Litig. (Fed. Cir. 2015), a case involving numerous adverse issues and the first Federal Circuit case to address the impact of the Supreme Court's decision in Teva v. Sandoz. For that victory, the legal press dubbed Mr. Battaglia and his team a "Legal Lion."

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. Join the discussion.

  1. Model 101 August 19, 2020 6:19 pm

    Where does it say in 101 that the claims in a patent need to say how to do it?

    Are all patents that only describe a result in the claims ineligible now?

    Is the specification meaningless?

  2. Pro Say August 19, 2020 7:26 pm

    Here’s a riddle for my fellow legal lions:

    What do you get when you combine the Three Stooges, Laurel and Hardy, and the Marx Brothers?

    Hint: The letters C, A, F, and C are involved.

  3. BlutoBlutarsky August 19, 2020 9:37 pm

    At least the stooges were entertaining.

  4. Anon August 20, 2020 9:41 am

    The elephant in the room is that Common Law law writing has been a Pandora’s Box that was opened by the Supreme Court itself, and that — by its nature – THIS type of law writing simply will not stop (and makes the actual written statutory law to be a ‘nothingburger’).

    When all else fails, return to the actual statutory law.

    And yes, in patent law, this is especially pertinent, given that our Constitution dictates ONE (and only one) particular branch to have authority to write the actual law.

  5. TFCFM August 20, 2020 11:25 am

    Article: “…contrary to AAM’s “inventive-concept” emphasis, the Diehr claim was Section 101-eligible precisely (and perhaps only) because it involved such a multi-step manufacturing process, “considered as a whole.” Id. at 188, 192. Eligibility thus turned on the analysis that this was not a claim on, in “practical effect” for, or “directed essentially to” an ineligible concept or “idea of itself,” such as “an attempt to patent a mathematical formula”; it was instead a multi-step claim for molding rubber products…

    I’d tend to agree that focus on an “inventive concept” embodied in a claim is an inappropriate method for assessing eligibility of the subject matter claimed. However, I don’t agree that that was what happened in the AAM case.

    Any poor wording of the opinion aside, focusing on “the claim as a whole” requires reading and correctly interpreting what the claim encompasses. In AAM, claim 1 reads, in relevant parts:

    1. A method… comprising … tuning at least one liner to attenuate at least two types of vibration …such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an [certain] amount…and the at least one liner is also configured to damp bending mode vibrations in the shaft member [to a certain degree].

    Thus, the claimed method includes a wholly-undefined step, recited only by the result to be obtained. A perfectly-valid paraphrase of this step is “any and every way of tuning a liner (whether or not yet invented or disclosed by us) that achieves result X and Y.”

    Contrast that with the process claimed in Diehr, which was a multi-step rubber-molding process that recited each step, save for the period of time that one (curing) step was performed, that period of time being specified by a ‘natural law’. In Diehr, that is, there was no question what the process was – or even how the natural law might be applied; the question was merely whether the process was patent-eligible when the only substantive difference between it and the prior art was performing a step for a period of time defined by the ‘natural law.’ Significantly, the claim in Diehr did not claim “any and every curing time period, however calculated, that achieves result X.

    This, I’d submit, is the critical shortcoming of Diehr-based criticism of AAM. Considered as a whole, the claim in Diehr recites a process in which every step is disclosed, while the claim in AAM includes a “hole” in which “anything and everything (known or unknown, invented or not-yet-invented, disclosed or not-disclosed) that works to fill this hole” is recited. That, in my mind, is as near a definition of an “abstract” claim as I can imagine (“A compound that cures disease X” perhaps edging this claim out by a nose.)

  6. allison August 20, 2020 11:58 am

    It’s difficult to understand your meaning based on your writing style, i.e., the lack of quotations when starting or ending a quote from the AAM decision and the segue into your analysis/opinion.

  7. Jam August 20, 2020 12:37 pm

    I applaud shining the light on certain inadequacies of specific arguments. This is useful for combating specious sophistry by understanding the specious and sophistic nature guiding the majority of judges.

    A concern is that reflexively reacting to the latest “wisdom” from the courts for why a patent is rejected “under 101” misses the forest for the trees. Arguably, the majority of judges at the Federal Circuit and Supreme Court will stop at nothing to reject a patent. The courts write anything on paper as needed to obscure, disguise, distort, and reverse the meaning of words in the statute or the specification to achieve the result of rejecting the patent. What was a machine or process is magically transformed, at the stroke of a pen, into an abstract idea or natural law. As put forth in Alice, a court merely needs to 1) make something up, and 2) say that the patent does nothing more than what the court made up. If that means rejecting a claim “because Hooke’s law” when nothing in the patent mentions Hooke’s law (i.e., you can’t find any flaws in the patent itself), then so be it.

    Simply running around playing whack-a-mole with the latest reasoning from the Federal Circuit doesn’t stop the moles from popping up. Every time you whack a mole (e.g., try to use Berkheimer or McRO), the Federal Circuit pops up another reason “under 101” “because Alice”. This is not reasonable people discussing the merits of what test or elements should be used. Rather, this is the majority of judges playing hide the ball. As soon as a patentee meets a test enumerated in a prior opinion, a subsequent opinion shows up adding new elements or changing the test and maintaining the court’s unlimited power to reject any and every patent that comes before it, arguably.

  8. ipguy August 20, 2020 2:02 pm

    Can anyone please explain to me how all this 101 insanity started? With Bilski? Something prior to Bilski? All I know is that the LITIGATORS who started all this mess need to be punched in the nose (metaphorically speaking; Disclaimer: no actual punching in the nose or other physical violence is meant to be intended or implied) for how they’ve made the lives of prosecutors so insanely difficult in even simple mechanical inventions!

  9. J.T. August 20, 2020 4:26 pm

    ipguy—

    The ABA has a decent breakdown on where it came from here: https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2018-19/march-april/english-origins-judicial-exceptions-35-usc-section-101/

    But, regardless of the fact the Supreme Court has applied these exceptions, it has no authority to do so. As the Supreme Court insists in all fields but patent law, where “the statute’s language is plain, ‘the sole function of the courts is to enforce it according to its terms.'” United States v. Ron Pair Enterprises, 489 U.S. 235, 241 (1989); (quoting Caminetti v. United States, 242 U.S. 470, 485 (1917)). “[W]e may not rewrite the statute simply to accommodate [a] policy concern.” Henry Schein, Inc. v. Archer & White Sales, Inc., 586 U.S. ___, slip op. 8 (2019).

  10. Pro Say August 20, 2020 4:43 pm

    “the majority of judges at the Federal Circuit and Supreme Court will stop at nothing to reject a patent.”

    Big +1 Jam — your 8.20.20 sad-but-true post at 12:37 sums up exactly where we are today.

    Painfully. Exactly.

    While Congress does nothing to stop it.

  11. Curious August 20, 2020 5:16 pm

    Thus, the claimed method includes a wholly-undefined step, recited only by the result to be obtained. A perfectly-valid paraphrase of this step is “any and every way of tuning a liner (whether or not yet invented or disclosed by us) that achieves result X and Y.”
    Consider the hypothetical claim language of “switching the current from a first circuit to a second circuit.” It is a fancy way of describing the operation of an electronic switch. Is this “abstract” because it encompasses “any and every way of switching current between switches (whether or not yet invented or disclosed by us) that achieves the stated result”? Of course not.

    Consider the hypothetical claim language of “transferring fluid [e.g., water] from a first bucket to a second bucket.” There are hundreds/thousands of different ways that could be accomplished. Is a claim that includes that claim language directed to an abstract idea?

    The ability to tune something is something that is very well known in the art. As I look at the claims, what appears to be novel/inventive is not how to tune the liner but the recognition of tuning the liner for a couple different types of vibration. Claim 1 refers to damping both shell mode vibrations and bending mode vibrations. Claim 22 also describes attenuating both shell mode vibrations and bending mode vibrations. How that occurs is not material to the invention and appears to be well within the skill of one skilled in the art.

    Reading the modified decision on appeal, this particular line stood out: “Like the claims in Flook, claim 22 of the ’911 patent is directed to the use of a natural law: Hooke’s law.” This is what happens when technically-ignorant judges (both at the Federal Circuit and District Court level) make findings about technology — it has as much validity as a eight year old describing about how the Dormant Commerce Clause applies to a particular state statute. Hooke’s law is something one might encounter in a high-school physics course. From the internet, “Hooke’s Law is a principle of physics that states that the that the force needed to extend or compress a spring by some distance is proportional to that distance.” To say that this invention is directed to the use of Hooke’s law is like saying that a light bulb is directed to the use of Ohm’s law.

    Objects are frequently modeled as interconnected masses with springs and dampers (i.e., mass-spring-damper system). Changing these elements change the natural frequency of the object, and the “tuning” of a system involves changing one of those characteristics (i.e., mass, spring, or damper) in order to change the natural frequency to something desirable. This is all very straight-forward stuff. However, Hooke’s law is only tangentially related to tuning in that it describes the characteristics of a spring.

    Anyway, for the Federal Circuit to state that this invention is directed to the use of Hooke’s law evidences an extreme and profound level of ignorance. The invention here is no more directed to the use of Hooke’s law than Edison’s inventive light bulb was directed to Ohm’s law or the Wright brother’s plane was directed to Newton’s second and third laws or an electric generator is directed to Maxwell’s Equations. Frankly, Dyk and Taranto (and District Court Judge Stark) should be embarrassed for buying into this load of bullsh__ fed to them by Defendants’ counsel.

    Here is another interesting statement by the Federal Circuit:
    Hooke’s law is an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates.
    Um … none of the sources I found state that Hooke’s law involves “the frequency at which the object vibrates.” Determining the frequency of involves uses the stiffness of the string (which is calculated using Hooke’s law), but it isn’t Hooke’s law. Even then, Hooke’s law really isn’t a “law” of physics but a first-order linear approximation.

    This is from the Wiki description of Hooke’s law: “Hooke’s law is extensively used in all branches of science and engineering, and is the foundation of many disciplines such as seismology, molecular mechanics and acoustics. It is also the fundamental principle behind the spring scale, the manometer, and the balance wheel of the mechanical clock.” Are weight scales and mechanical clocks now not patentable subject matter? How about musical instruments or any mechanical device that produces sound like a loudspeaker (i.e., sound is vibration and vibration is related to a spring)?

    It is decisions like this that emphasize the need for Federal Circuit judges to have a technical degree. There isn’t a need to have a technical degree in the particular field of the invention at hand, but at least some knowledge to know when some attorney shoveling a bunch of bullsh__ your way.

    While I’m thinking of it, this is also why a preemption analysis should be a must when addressing 35 USC 101. Unlike Morse’s claim 8 (i.e., “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”) which on its face attempted to preempt all uses of electromagnetism for communication, these claims hardly preempt the use of Hooke’s Law.

  12. Jam August 20, 2020 6:03 pm

    @5

    > Diehr did not claim “any and every curing time period, however calculated, that achieves result X.”

    However, this style of reasoning is only applied to certain features from Diehr and does not consider the result of applying the same style of reasoning to the remaining features from Diehr.

    Even if Diehr did not claim any and every curing time, Diehr did claim: 1) any and every means of determining the temperature that achieves the result, 2) any and every means of providing the computer with the temperature that achieves the result, 3) any and every means of comparing a cure time with an elapsed time that achieves the result, and 4) any and every means of opening the press that achieves the result. See US Patent 4,344,142, the patent from Diamond v. Diehr, 450 US 175 (1981).

    Hence, when the reasoning from comment 5 is applied to the features of Diehr as a whole (which, ironically enough is required by Diehr at 188), Diehr is unpatentable because it includes steps that are not fully disclosed “under 101” “because Alice”.

  13. Steve August 20, 2020 8:33 pm

    “. . . a preemption analysis should be a must when addressing 35 USC 101.”

    Bingo: https://www.supremecourt.gov/DocketPDF/20/20-32/147909/20200716113106781_20200716-112059-95751040-00000123.pdf

    SCOTUS case # 20-32; question 2.

  14. TFCFM August 21, 2020 7:07 am

    J.T.@#9: “regardless of the fact the Supreme Court has applied these exceptions, it has no authority to do so. As the Supreme Court insists in all fields but patent law, where “the statute’s language is plain, ‘the sole function of the courts is to enforce it according to its terms.’” United States v. Ron Pair Enterprises

    Section 101 recites categories of eligible subject matter. It does not specify that the categories do or can have no exceptions.

    Congress could have written (and can re-write at any time) section 101 to exclude any and all potential judicial exceptions (including those which have existed in the common law for centuries). Congress has not chosen to do so.

    Similarly, the law relating to obviousness is not strictly limited to the literal wording of section 103, with no judicial gloss permitted.

  15. TFCFM August 21, 2020 7:23 am

    Curious@#11: “Consider the hypothetical claim language of “switching the current from a first circuit to a second circuit.” It is a fancy way of describing the operation of an electronic switch. Is this “abstract” because it encompasses “any and every way of switching current between switches (whether or not yet invented or disclosed by us) that achieves the stated result”?

    It’s not “claim language” that is abstract (or that is analyzed for eligibility), it is “the claimed invention as a whole” that is so analyzed.

    If your claimed invention is a switch, or if the only arguable difference between your claimed invention and the prior art is the ‘switch’ element, then yes, this claim language would render your claimed invention abstract.

    You lose sight of this merely because of the fact that a claim drawn abstractly to a switch (or differing from the prior art only by virtue of an abstractly-recited ‘switch’ element) is blindingly obvious. If we go back in time to a point before when switches were known, the abstractness of a switch-focused claim would be clearer — but only because the obviousness “noise” would be removed; the abstractness shortcoming is glaring absent that noise.

    In the AAM case, a liner “tuned” in two particular ways is central to what is purportedly inventive about the subject matter. “Anything/everything that works so as to be tuned in the two particular ways” is therefore abstract because it seeks to ensnare both what has (perhaps) been invented and all other similarly-functioning things that have not yet been invented.

    If I invent a covid-19 vaccine that is capable of detecting the virus according to criteria X, Y, and Z, a claim that recites my vaccine ought to be eligible for patenting. However, a claim that recites “any and every” vaccine that is capable of detecting the virus according to criteria X, Y, and Z remains abstract, even though I have invented one vaccine in this limitless group.

  16. TFCFM August 21, 2020 7:50 am

    TFCFM@#5: “Diehr did not claim “any and every curing time period, however calculated, that achieves result X.

    Jam@#12: “this style of reasoning is only applied to certain features from Diehr and does not consider the result of applying the same style of reasoning to the remaining features from Diehr… Diehr did claim: 1) any and every means of determining the temperature that achieves the result, 2) any and every means of providing the computer with the temperature that achieves the result…

    You walk right up to the watering trough, but you decline to drink. What is different about your items 1-4 than from reciting “any and every curing time period, however calculated, that achieves result X”?

    A: None of these criteria make “the invention as a whole” abstract. A skilled artisan immediately identifies each of 1-4 as an ordinary, run-of-the-mill process variable/element which does not relate to what is inventive about the claimed process.

    Set against the backdrop of what was previously well-known (as all claimed inventions must be), what is purportedly “inventive” was Diehr’s way of determining an appropriate curing time. Diehr disclosed AND CLAIMED a particular way of performing that step. As a result, there was no lack of clarity as to what the step was (i.e., no abstractness, even though skilled artisans immediately recognized how to use well-known process variables/elements to perform it in many ways). That is, Diehr did NOT recite this step as “use any method of determining a curing step time that will yield degree X of curing.”

    Contrast this with AAM, in which the difference between the claimed method and those which preceded it merely recites “use any method/style/location/extent of tuning that will yield degree X of a first aspect of tuning and degree Y of a second aspect of tuning. The difference between the prior art and the claimed method is “anything and everything that works to obtain a result.” The skilled artisan is at a loss to understand what methods/styles/locations/extents of tuning are embraced by the claim (beyond “anything and everything that you might discover to satisfy those criteria”). The claim is therefore abstract.

  17. Curious August 21, 2020 12:22 pm

    If your claimed invention is a switch, or if the only arguable difference between your claimed invention and the prior art is the ‘switch’ element, then yes, this claim language would render your claimed invention abstract.
    However, those are not the facts of this case or of most cases. 112 1st paragraph still applies and is the mechanism for rejecting something not enabled. How the tuning occurs is trivial and well-known in the art.

    In the AAM case, a liner “tuned” in two particular ways is central to what is purportedly inventive about the subject matter. “Anything/everything that works so as to be tuned in the two particular ways” is therefore abstract because it seeks to ensnare both what has (perhaps) been invented and all other similarly-functioning things that have not yet been invented.
    This is where your ignorance of the mechanical arts really shines. I claim, “a body supported by support A along a vertical axis of the body and supported by support B along a horizontal axis. The body “supported” in two particular ways is central to my purported invention. However, how it is supported is not material since the supporting part is trivial.

    Had you ever been a manufacturing engineer, you would know that a blueprint is typically far more detailed (with regard to a mechanical device) than any patent claim to that mechanical device. However, despite that more detailed description, there are still dozens and dozens of ways by way the same device can be constructed. For example, I claim a ball bearing assembly in which the races have a particular hardness range. I just did a search for such a claim and something close is U.S. Patent No. 3,937,535. Another one is U.S. Patent No. 10,655,610. The ‘535 Patent recites “said race members each being formed of steel of substantially uniform thickness and having a Rockwell ‘C’ hardness of from about 50 to about 60.” The ‘610 Patent recites “the inner and outer races are constructed of a first steel alloy and the at least two wire races are constructed of second steel alloy, the second steel alloy having a higher strength and an increased hardness relative to respective characteristics of the first steel alloy.”

    I know that there are hundreds/thousands of steel alloys that can be used — actually, a nearly infinite number of ways steel can be alloyed. There are many, many ways these steel alloys can be heat-treated to obtain certain microstructures (and hardnesses). There are also different ways of treating the steel alloys (e.g., carborizing) that will change the hardness. How the property is obtained is not what is inventive (at least as it pertains to the independent claims). What is important is that the material have these particular properties in conjunction with the other elements being claimed.

    This isn’t the biotech arts where a claim to “treating a mammal with a biologically active component that reduces systolic blood pressure by 20 mm Hg” isn’t going to pass muster. What was claimed in American Axle was a shaft assembly in which the components had certain properties. This is a common form of claiming in the mechanical arts.

    If I invent a covid-19 vaccine that is capable of detecting the virus according to criteria X, Y, and Z, a claim that recites my vaccine ought to be eligible for patenting. However, a claim that recites “any and every” vaccine that is capable of detecting the virus according to criteria X, Y, and Z remains abstract, even though I have invented one vaccine in this limitless group.
    Again, this is where your biotech background does not serve you well in evaluating claims to mechanical devices. While in the biotech arts, this may not be true, in the mechanical arts, engineers know how to obtain the vast majority of the properties being claimed. Engineers know how to get materials to a certain hardness. Engineers also know how to design devices with certain vibration characteristics.

  18. Anon August 21, 2020 1:24 pm

    TFCFM @14,

    We have touched on this previously. Common Law has an appropriate place – and also can be used inappropriately (also called legislating from the bench). This is something that you should have gathered (if you are indeed an attorney) in your studies of Separation of Powers, along with the Constitution’s delegation of powers among and between the branches.

    You seem to think that it takes an affirmative an explicit Act of Congress to separate the two and prevent the inappropriate use of Common Law.

    That is just not so.

  19. Anon August 21, 2020 1:56 pm

    TFCFM @ 15 and 16

    You walk right up to the watering trough, but you decline to drink.

    Says the one that is doing the walking up and NOT drinking…

    It’s not “claim language” that is abstract (or that is analyzed for eligibility), it is “the claimed invention as a whole” that is so analyzed.

    And yet YOU immediately turn around and try to parse the American Axle claim to focus on “claim language” of a mere portion of the claim. You mouth “claim as a whole” even as you attempt to apply a “Point of Novelty” as if THAT were the meaning of 35 USC 101.

  20. Curious August 21, 2020 3:26 pm

    And yet YOU immediately turn around and try to parse the American Axle claim to focus on “claim language” of a mere portion of the claim. You mouth “claim as a whole” even as you attempt to apply a “Point of Novelty” as if THAT were the meaning of 35 USC 101.
    Bingo.

  21. Jam August 21, 2020 3:37 pm

    TFCFM @16

    Good point. As applied to Diehr, the critical step arguably is the one with the Arrhenius equation, which was not previously analyzed in comment 12. This is the inventive step so that, despite the requirement to analyze the claims as a whole, we can ignore the other steps of Diehr and focus on only the step with the Arrhenius equation. However, that step claims any and every means of “repetitively performing … integrations …” that achieves the result. Or, to use the language from comment 16, the critical step in Diehr merely recites: use any method/style/location/extent of repetitively performing integrations that will yield degree calculations according to the Arrhenius equation. Thus, Diehr arguably falls again even after additional steps are added to the test.

  22. TFCFM August 24, 2020 11:23 am

    Curious@#17: “ Engineers also know how to design devices with certain vibration characteristics.

    This is precisely why the ineligibility rejection was not (and ought not to have been based on alleged non-enablement (even if non-enablement might equally have been cited as a ground of invalidity).

    Unless the court was able to conclude that, as a matter of law, no conceivable design of the liner which alleviates both types of vibrations could POSSIBLY be inventive, then the court must presume that the claimed invention included both non-inventive and inventive ways of achieving both types of “tuning” in the liner, given that the merely-results-oriented claim necessarily includes ALL ways achieving those recited results. This, again, is all but a definition of “abstract” (namely “anything that works, whether anyone has invented it yet or not”).

    That “engineers” may be able to practice some — or even many — embodiments of the abstractly-claimed element does not make the “invention as a whole” (including that abstractly-recited element) any less abstract, because the “whole” includes more than those “some” or “many” embodiments — it includes ALL possible embodiments.

    This is, of course, a well known hazard of results-based claiming.

  23. TFCFM August 24, 2020 11:51 am

    Anon@#17: “You seem to think that it takes an affirmative an explicit Act of Congress to separate the two and prevent the inappropriate use of Common Law.

    As nearly as I can tell, by “the two” you appear to mean appropriate and inappropriate “use of common law.” You appear to operate under an unusual understanding of reality — that the US sometimes is — and at other times is not — a common law country. I assure you that the US is, indeed, a common law country.

    Under our federal Constitution, our legislature makes our laws and our courts interpret them — NOT simply by rigidly applying the literal wording of legislatively-enacted laws, and always subject to ‘correction’ by the legislature when/if the legislature believes an interpretation to have gone astray.

    Section 101 simply DOES NOT include any language by which our legislature forbade judicial interpretation — including limitations — of the recited classes of otherwise-eligible subject matter. In fact, Congress enacted the section (and has revised it repeatedly) against a common law background in which judicially-recognized limitations on patent eligibility have been recognized. None of those enactments eliminated judicial exceptions, nor have the various pieces of legislation enacted over the years to modify the patent laws in various ways. Legislation to modify judicial exceptions (including recent attempts by Sen. Tillis and others) have been considered by the legislature, but not enacted.

    Our common law system operates continuous — even in the face of statutes and legislative changes to those statutes. The common law isn’t “turned off” when a statute exists. Instead, as near a concept as you may be confusing is the common law understanding that, when a statute clearly expresses the enacting-legislature’s meaning, that meaning controls.

    It can hardly be argued, though, that the utter absence from section 101 of a provision prohibiting judicial recognition of exceptions to patent eligibility is a “clear expression” of the legislatures meaning to prohibit recognition of such exceptions. Your objection is merely that you don’t like one or more exceptions that have been judicially recognized. There is nothing “inappropriate” per se about courts interpreting the patent statutes in a way that you or I dislike. Moreover, should the legislature consider (or come to consider) a judicial interpretation inappropriate, our common law system has a way to remedy that:

    Until and unless the legislature prohibits a particular existing judicial interpretation of our patent statutes (such as the prohibition on patenting abstract ideas, with all its accompanying judicial gloss), that interpretation remains. That is how “common law” works (full time — not just when you agree with it.)

    Modern judicial decisions which merely seek to apply centuries-old decisions preventing patenting of abstract ideas to contemporary fact patterns and not remotely “inappropriate uses” of common law — all the more so when our legislature enacted our current patent statutes against that background and has not overturned those common law-based decisions.

  24. TFCFM August 24, 2020 12:08 pm

    Anon@#19: “YOU immediately turn around and try to parse the American Axle claim to focus on “claim language” of a mere portion of the claim. You mouth “claim as a whole” even as you attempt to apply a “Point of Novelty” as if THAT were the meaning of 35 USC 101.

    You misconstrue. There is no error in recognizing that Diehr’s claimed methods, considered as a whole, differ in only one way from what were inarguably known methods — in using the Arrhenius equation (a “natural law”) to determine the duration of the curing step.

    If I were not considering the claim as a whole, then my conclusion would have been the opposite: that the “point of novelty” was merely a natural law (applied in any possible way, as Jam@#21 suggests).

    Instead, I agreed with the outcome in Diehr, which was that the claimed process was eligible, because the process did not merely claim all uses of a natural law, but instead recited a natural law as part of a definite (i.e., closed) process step (i.e., not just an indefinite “anything that works to achieve the outcome I want” process step).

    To Jam‘s point in #21: [Diehr’s] “step claims any and every means of “repetitively performing … integrations …” that achieves the result

    “Integration” in the technology context of Diehr’s process is a straight-forward, well known technique in that context, and NOT even arguably an element that set the inventor’s methods apart from the prior art. If we were to take your argument to its logical conclusion, then no phenomenon expressed in a human language could ever be considered patent-eligible, since — at some level — every word is an ‘abstraction’ of the phenomenon. This is, of course, why patent claims are read from the perspective of one skilled in the relevant art.

  25. Anon August 24, 2020 2:06 pm

    This, again, is all but a definition of “abstract” (namely “anything that works, whether anyone has invented it yet or not”).

    Except for one NOT SMALL thing – the Court has not actually provided an actual definition of “abstract” – something ANY attorney worth their salt would have known.

    TFCFM’s insertion of his own ‘definition of choice’ notwithstanding, of course (now where did I put my ‘Sarcasm’ sign…)

  26. ipguy August 24, 2020 2:20 pm

    @23
    “that the US sometimes is — and at other times is not — a common law country. I assure you that the US is, indeed, a common law country.”

    That’s an oversimplification. Technically, under our federal system, the US Federal Government and 49/50 US States operate under a common law framework. Louisiana, based on its French heritage, operates under a Civil Code framework (though, in reality, it is actually more of a hybrid Civil Code/Common Law framework).

  27. Anon August 24, 2020 4:40 pm

    You appear to operate under an unusual understanding of reality — that the US sometimes is — and at other times is not — a common law country. I assure you that the US is, indeed, a common law country.

    You clearly do not understand the separation of powers – even (especially) in a common law country.

    The courts are not ABOVE the Constitution.

    You appear not to be able to recognize that. May I ask what state you are sworn in as an attorney?

  28. TFCFM August 25, 2020 9:33 am

    ipguy@#26: “That’s an oversimplification. Technically, under our federal system, the US Federal Government and 49/50 US States operate under a common law framework. Louisiana, based on its French heritage, operates under a Civil Code framework…

    Good point. I stand corrected.

  29. TFCFM August 25, 2020 9:52 am

    Anon@#27: “The courts are not ABOVE the Constitution. You appear not to be able to recognize that. May I ask what state you are sworn in as an attorney?

    You might ask yourself whether anyone other than yourself (if even that) is fooled by you resorting to attempted insult whenever you lack a substantive counter-argument.

    There is nothing about courts continuing to apply the common law which places them, or purports to place them, “above” the Constitution.

    Under the common law, courts have long recognized and interpreted points of law not directly addressed by statutes (such as section 101’s failure to forbid any disqualification of patent eligibility for subject matter arguably within one of the recited classes). Furthermore, nothing in our Constitution forbids courts from continuing this role, and courts do not place themselves “above” the Constitution by doing so.

  30. TFCFM August 25, 2020 10:03 am

    TFCFM@#22: “This, again, is all but a definition of “abstract” (namely “anything that works, whether anyone has invented it yet or not”).

    Anon@#25: “Except for one NOT SMALL thing – the Court has not actually provided an actual definition of ‘abstract’

    You are correct that judicial authority has not yet settled on my formulation as the/a definition of “abstract.”

    However, your counter-argument (such as it is) seems to be on be on extraordinarily weak legs to the extent it relies on the assertion that a definition (claim) of an invention which merely recites “anything/everything that achieves purpose X” is something OTHER than abstract.

  31. Anon August 25, 2020 10:27 am

    You might ask yourself whether anyone other than yourself (if even that) is fooled by you resorting to attempted insult whenever you lack a substantive counter-argument.

    And you might ask yourself whether anyone other than yourself (if even that) is fooled by your mischaracterizations in regards to BOTH insult AND substantive counter-argument.

    I note that you do not answer the question as to which State bar oath you (may) have taken.

    Your statement of “There is nothing about courts continuing to apply the common law which places them, or purports to place them, “above” the Constitution.” could not be more wrong from a basic fundamental premise of US jurisprudence.

    You would flunk fifth grade civics with a view like that. You really do seem to think that the courts can do ANYTHING that they damm well would please to do.

    You hem and haw about what Common Law law writing provides the ability to do in your assertions, but your assertions LACK the basic premise that I have put to you (this is rather the opposite of your other assertion that I have provided no substantive counter-argument). Instead of actually taking the time to understand the distinction that I have set before you, YOU are the one kicking up dust and evading the actual point.

  32. Anon August 25, 2020 10:35 am

    As to:

    However, your counter-argument (such as it is) seems to be on be on extraordinarily weak legs to the extent it relies on the assertion that a definition (claim) of an invention which merely recites “anything/everything that achieves purpose X” is something OTHER than abstract.

    You seem to not understand what it means for YOU to lose the premise of your point as opposed to ANY requirement for someone else to actually have to propose a different point.

    I NEED NOT make ANY supposition of a basis for what ‘abstract’ MAY mean when I provide the counter-argument that REMOVES the validity of your assertion.

    This is a basic point of logic.

    For example, YOUR assertion here ASSumes the view that the Court is indeed correct in their assertion that ‘Abstract’ is within their power to WRITE INTO the statutory law.

    As we have seen, you do not understand the limits of US jurisprudence and how Common Law law writing actually works in the United States. You base this (non-existent) ‘need’ for me to supply something — which I need not supply in the first instance — on the lackof foundation of your ‘feelings.’

    It suffices for YOU to lose your point for me to provide the basic (and factual) counterpoint that I have provided.

    Now, if you want to amend your position (recognizing YOUR lost point), then by all means, please do so.

    But it is a logical fallacy for you to pretend that your point — now lost — can STILL be used because no other definition has been provided.

    Given your rather disturbing lack of appreciation for basic civics, logic (both rhetorical and legal), I ask again: in which States have you taken an oath of office to be an attorney?

  33. TFCFM August 26, 2020 12:14 pm

    Pathetic.

  34. Anon August 26, 2020 2:51 pm

    Yes, TFCFM, you are.

    And please, specify the state of your attorney oath. This does not and cannot “out” you (with particularity), but it may ‘out’ whether or not you are actually an attorney (a point many have taken issue with, even as I have postulated that you are an attorney, but one lacking any actual innovation experience).

  35. TFCFM August 27, 2020 9:54 am

    You believe whatever you like. I will continue to comment anonymously, and I choose not to feed your attempts at hand-waving distraction.

    If you had any valid counter-argument, you’d have presented it by now.

  36. Anon August 27, 2020 2:40 pm

    Lol – I have presented to you plenty of valid counter-arguments and it is you that have hand-waved your way into not answering any of them.

    You have a habit of calling anything outside of your own explicit point a ‘distraction.’

    My asking for your state in which you are barred does NOT restrict your anonymity. I have already presented a counter-point to that effect.

    Your refusal is not a matter of me “believing what I will,” even as it says more about you than you may care to realize.

    In fact, if instead of providing the State, if you want to instead copy and paste the oath (leaving the State blank), that would be more than fine. Many of the oaths are pretty much the same anyway (a notable exception is the Commonwealth of Massachusetts). As I have presented, I have no desire to “out” you personally, and the point of the matter with the oath is in the contents of the oath itself.

  37. TFCFM August 28, 2020 11:58 am

    Your mere-attempted-insult and inquiries regarding my state(s)/court(s) of admission are absolutely distractions from what is at issue here: what you and I write.

    It is what we write that matters, not whether we are:
    – admitted in this or that state or court,
    – the famous “dog on the internet” of New Yorker cartoon fame,
    – one of an infinite number of monkeys at keyboards, or
    – the chief justice of the US Supreme Court.

    Your attempts at misdirection are mere hand-waving to distract from the fact that what you write (and thereafter claim resounding “victory” for) is nonsense.

  38. Anon August 28, 2020 5:49 pm

    translation of TFCFM: wah.

    You seem genuinely troubled by the mere request.

    It is not surprising why – or difficult to surmise why you have spent MORE energy NOT doing what I ask than simply doing it.

    You do realize how this reflects on you, eh?

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