In Re Bilski Blog

Breyer's Reinvention of the 'Inventive Concept'

By: Robert R. Sachs

In Prometheus, Justice Breyer reintroduced the phrase “inventive concept” as it first appeared in Flook. “The Court’s precedents,” Breyer wrote:

Insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself. Flook, supra, at 594. Mayo, 132 S.Ct. 1289, 1294 (slip op. at 3).

Is There Life After Bilski? Yes, but It’s Not as We Know It: A Response to Michael Risch

By: Robert R. Sachs

In my posting on the differences between abstract ideas and abstractions, I stated that “The problem is not abstraction: the problem is inclination of the academy and the judiciary to throw up their hands in defeat when dealing with these issues. See Mark A. Lemley et al., Life After Bilski, 63 STAN. L. REV. 1315, 1316 (2011) (“Put simply, the problem is that no one understands what makes an idea ‘abstract’ . . . .”).

Michael Risch, one of the co-authors of Life After Bilski correctly pointed out that I read this statement too broadly, that they were referring to “observers,” rather than themselves, and that they did propose various tests for abstract ideas. Michael is of course correct. I should have been more careful in my phrasing.

However, having now re-read Life After Bilski (“LAB”), I remain of the view that the approach therein does not tackle the question of What is an abstract idea? itself, independent of any reliance on patent law requirements and policy considerations. Instead, LAB proposes a functional approach to the question of patent eligibility by employing various legal, policy, and value considerations of claim scope, preemption, contribution to innovation, and so forth as factors. In short, I would argue that LAB elides the question entirely and instead attempts to answer the ultimate question: What claims are patent ineligible? 

Patent Claims and the Use of Abstractions

By: Robert R. Sachs

By design and practice patent claims necessarily make use of abstractions. This has been long recognized:

    The difficulty which American courts…have had…goes back to
    the primitive thought that an “invention” upon which the patent
    gives protection is something tangible. The physical
    embodiment or disclosure, which, in itself is something tangible
    is confused with the definition or claim to the inventive novelty,
    and this definition or claim or monopoly, also sometimes called
    “invention” in one of that word’s meanings is not something
    tangible, but is an abstraction. Definitions are always
    abstractions. This primitive confusion of “invention” in the
    sense of physical embodiment with “invention” in the sense of
    definition of the patentable amount of novelty, survives to the
    present day, not only in the courts, but among some of the
    examiners in the Patent Office. E. Stringham, Double Patenting,
    Washington D.C., Pacot Publications (1933) (emphasis added).  

The black letter law statement that claims are not limited to the disclosed embodiments, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), only makes sense because claims necessarily make use of abstractions to cover a wide range of embodiments. As the Phillips court states, “persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.” Id. at 1323 (emphasis added). The only way one does not confine their definition to an exact representation is by the use of abstractions. 

Patent Eligibility: The Historical Cases

By: Robert R. Sachs

There are three 19th century cases that form part of the canon of Supreme Court caselaw on patent eligibility: Le Roy v. Tatham, 55 U.S. 156 (1852), O'Reilly v. Morse, 15 How. 62 (1853) and Tilghman v. Proctor, 102 U.S. 707 (1880). 

Le Roy v. Tatham

I'll begin our historical tour with Le Roy v. Tatham, which is cited and quoted in just about every recent Supreme Court and Federal Circuit decision for nothing more than this singular statement: "A principle, in the abstract, is a fundamental truth; an original cause; a motive; and these cannot be patented, as no one can claim in either of them an exclusive right." Given the ubiquity with which Le Roy is cited, one can be forgiven for believing that this case was indeed about whether a 'principle,' etc. was patent-eligible. It is not.

The Normative Stance of Patent Eligibility

By: Robert R. Sachs

Judge Mayer, along with Judges Dyk, Prost, Lourie, are "Normativists," who see § 101 as defining what inventions and claims "ought" to be. The Normative approach imposes an extrinsic value judgment—from a source unspecified—as to what kinds of innovations count as "inventive" and what kinds do not. This approach is of a piece with the Supreme Court, which holds in Prometheus that a process "that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an "inventive concept," sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself."

In particular, the Normativists believe that the use of computers to deliver useful "human" functionality has no inherent inventive value per se, that there is no "human ingenuity" in designing computerized solutions. This view is based in part on the view that computers are so common, so woven in the modern life, using them to do something useful is not inventive.

The Normativist View of Section 101 and the Hidden Lessons in the Supreme Court's Cases

By: Robert R. Sachs

Judge Mayer's dissents in MySpace v. GraphOn and Alexsam v. IDT are passionate epistles to his fellow jurists of the Federal Circuit. Mayer argues for making patent eligibility a gateway issue in patent litigation and for adopting without scrutiny the Supreme Court's "inventive concept" framework as the received wisdom. Mayer's reading of the Supreme Court cases is essentially representative of what I call the Normativist view of the patent law, which has been expounded by the High Court itself and come to be regarded as the conventional wisdom.

In the next two posts and those that follow, I will explain why this analysis of Supreme Court precedent is incorrect and in much need of scrutiny and overhaul. The first post will summarize the Normativist stance, and the second will review the historical Supreme Court cases on patent eligibility—cases that are invariably quoted, but otherwise left unexplored. I will show not only that these cases do not stand for the propositions for which they are cited, but they actually stand against much of the conventional view of § 101 now being asserted. Moreover, I will show that the approved and thus patent-eligible claims at issue in these cases would absolutely fail as patent-eligible subject matter under the current law—a clear sign that the current framework is flawed. In future posts, I will turn to the modern Supreme Court cases—Benson, Flook, Diehr—and demonstrate both the errors in these decisions and how they have been badly misread and misapplied. I will also address some of the deeper philosophical issues that pervade § 101 and have been completely overlooked by the courts, resulting in the current swamp that is patent eligibility jurisprudence. 

Read: The Normative Stance of Patent Eligibility

Read: Patent Eligibility: The Historical Cases

CLS v. Alice: The Federal Circuit at a Jurisprudential Deadlock

By: Robert R. Sachs

dead·lock  [ded-lok]

    noun

    1.  a state in which progress is impossible, as in a dispute, 
    produced by the counteraction of opposing forces; standstill; 
    stalemate: The Federal Circuit has reached complete deadlock 
    in its Section 101 jurisprudence.

The Federal Circuit’s decision to take CLS Bank v. Alice Corp., (No. 2011-1301, May 10, 2013), en banc was expected by many to result in a significant decision on eligibility of software for patent protection, setting forth some objective standard for evaluating whether claims for software-implemented inventions are abstract ideas. Instead, we have a court that is radically and perhaps hopelessly split in “judicial deadlock.” As Judge Newman laments “In deciding to rehear the patent dispute between CLS Bank and Alice Corporation, the en banc court undertook to remedy distortions flowing from inconsistent precedent on section 101. This remedial effort has failed.” “With today’s judicial deadlock, the only assurance is that any successful innovation is likely to be challenged in opportunistic litigation, whose result will depend on the random selection of the panel.” Newman, dissent at 2.

While seven judges agreed that the method claims in suit were not patent eligible, they did so for conflicting and incompatible reasons. And the court was evenly split (5-5) on whether the claims for a computer system implementing the method were patent eligible. Judge Lourie, joined by Judges Dyk, Wallach, Reyna and Prost, attempts to set forth an “integrated approach” to Section 101 that synthesizes all of the Supreme Court’s decisions into a nice complete package. As expected, the decision is seen by some as undermining the legitimacy of software patents, and a nightmare for patentees.

The Confusion between Abstractions and Abstract Intellectual Ideas

By: Robert R. Sachs

In July 2012, two panels of Federal Circuit issued decisions regarding patentable subject matter for computer implemented business methods, CLS Bank Int’l v. Alice Corp. No. 2011-1301 (Fed. Cir. July 9, 2012), and Bancorp Services v. Sun Life Assurance Co. of Canada, No. 2011-1467 (Fed. Cir. July 26, 2012). The decisions demonstrated conflicting approaches various members of the court apply to this question. On what appears to be similar business methods patents, the two panels came to opposite decisions—the CLS panel finding the claims patent-eligible, and the Bancorp panel holding not.

In October 2012, the Federal Circuit vacated the CLS panel decision, granted CLS’s motion for en banc review. The en banc order posed two questions for the parties to address:

a. Whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for §101 purposes?

On February 8, 2013, the court heard oral arguments from CLS, Alice, and the Solicitor General. Most surprisingly, no one attempted to actually answer the underlying questions here: What is an abstract idea? How do you know when a claim recites one? Instead, what was offered up as a “test” by both parties was whether the claim recites “significantly more” than just having a computer apply a (still undefined) abstract idea. This is just another ‘I know it when I see it test,’—just like Potter Stewart’s test for obscenity in Jacobellis v. Ohio. “Significantly more” provides no objective, analytical method to identify what is patent eligible. In this series of posts, we will explore some of the issues and problems raised by these questions, and offer the outlines of an objective answer and methodology.

Bilski Blog is Back!

Recent Supreme Court and Federal Circuit cases have significantly unsettled the law regarding patentable subject matter through a series of conflicting opinions regarding everything from business methods to biotechnology, from computer graphics software to medical diagnostics. These decisions only further confound serious problems in existing legal theories of claim construction (understanding what patent claims means) and obviousness (deciding whether an invention is sufficiently new and inventive to merit a patent). The increased uncertainty in the law could have deleterious effects on innovation, as companies and entrepreneurs may forgo developing new technologies and businesses if they believe that patent protection may not be available to protect their investments.

Critics of these recent changes call into question the Supreme Court’s wisdom in its recent decisions and feel that there is a lack of understanding about how best to approach these questions. Check here frequently for commentary calling for a more principled approach to the questions of patentable subject matter and related patent issues.

Canadian Court's Decision References Bilski Case

The Canadian case, Amazon.com, Inc. v The Attorney General of Canada and The Commissioner of Patents (October 14, 2010) refers to the Bilski decision and determines that Amazon's one-click purchasing method is patentable subject matter in Canada.