The Supreme Court has brazenly admitted it is not following Congress’ statutory instructions on patent eligibility in several cases. And it has carried out virtually none of the required statutory construction. It is judicial activism in the extreme… [I]t is hard to imagine a more unconstitutional statement than that discoveries cannot be patented when the statute the Court is applying states that any invention or discovery can be patented.
In essence, by narrowly identifying certain subject matter groups as being those that properly qualify for characterization as abstract ideas the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit. It has been frustrating — to say the least — that courts have refused to define the term abstract idea despite that being the critical term in the Supreme Court’s extra-statutory patent eligibility test. Without a definition for the term abstract idea rulings have been nothing short of subjective; some would even say arbitrary and capricious.
Last week, in Ancora Technologies v HTC America, the Federal Circuit reversed a lower court’s invalidity ruling under 35 USC §101 by concluding that Ancora’s claimed subject matter was concrete—not abstract—because it assigned specific functions to specific parts of a computer to improve computer security… This case is yet another in a string of post-Alice cases suggesting that patents should be drafted with an emphasis on the technical problem and technical solution delivered by the claims.
To date the United States Court of Appeals for the Federal Circuit has not explicitly required district courts to conduct a formal claim construction prior to determining whether a patent claim is directed to patent eligible subject matter. How one can know whether a patent claim is directed to patent eligible or patent ineligible subject matter without a full-blown claim interpretation is a mystery. It is axiomatic that one cannot know what a claim actually covers unless and until a proper analysis is conducted. Yet, district court judges somehow know with certitude what a claim covers while doing nothing more than a facial review of the claim that would be considered a defective and reversible claim construction if done at a later stage of the proceedings when actually attempting to define the metes an bounds of the claim.
Some courts have characterized this final inquiry as “the hunt for the inventive concept.” That would make some logical sense if and only if a claimed invention that is novel and non-obvious would be necessarily found to have satisfied the inventive concept requirement. Alas, that is not the case. Under the ridiculously bastardized law of patent eligibility foisted upon us by the Supreme Court it is actually possible for a claimed invention to be both new and non-obvious and to somehow not exhibit an inventive concept under what is considered a proper patent eligibility analysis. Of course, it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept. If something is new and non-obvious it is by definition inventive. This disconnect merely demonstrates the objective absurdity of the Alice/Mayoframework.