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.
The first question is the patent eligibility equivalent of the trick question “When did you stop beating your wife?” Like the policeman’s gambit, the question of whether a claim recites “significantly more” than just having a computer apply an abstract idea contains an underlying assumption: that computer-implemented inventions—that is software—are “abstract ideas” to begin with, and somehow become patent-eligible under certain conditions. This assumption is false. To demonstrate the error in this assumption, it is necessary to consider first the difference between abstract ideas and abstractions.
There is a fundamental confusion in the jurisprudence of § 101, which treats abstract ideas as synonymous with abstraction. Many courts and litigants have asserted that patent claims on abstractions are per se ineligible as patent claims on abstract ideas. For example, the Computer & Communications Industry Association, in its amicus brief in support of CLS, asserted that “abstraction has become a central problem in the patent system that radiates outward into many issues beyond subject matter eligibility.” See Brief for the Computer & Communications Industry Association as Amicus Curiae, p. 14, CLS Bank Int’l v. Alice Corp. 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’ . . . .”).
As a first matter, the limitation on §101 is more precisely on abstract intellectual ideas, not on “abstractions” generally: “Phenomena of nature, though just discovered, mental processes, abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottshalk v. Benson. 409 U.S. 63, 67 (1972). And referring to Benson in Diehr: “[T]he Court clearly held that new mathematical procedures that can be conducted in old computers, like mental processes and abstract intellectual concepts, are not patentable processes within the meaning of §101.” Diamond v. Diehr, 405 U.S. 175,201 (1981) (internal citation removed). Over time, the use of the modifier “intellectual” has been dropped, and now the Supreme Court simply refers to “abstract ideas.” See Bilski v. Kappos, 561 U.S. ___ (2010). Even so, it is clear that the original concern of the Supreme Court was with ideas that are purely mental in nature, such as, “mental processes,” and “scientific truths.” See Mackay Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 (1939). Indeed, the strict definition of “idea” refers specifically to the mental phenomenon: “any conception existing in the mind as a result of mental understanding, awareness, or activity.” Dictionary.com, available at https://dictionary.reference.com/browse/idea (retrieved April 30, 2013).
All human language—and all patent claims—make use of concepts. Concepts such as house, dog, container, poem, mammal, run, burn, and cook are used to reference physical objects, actions, their attributes, and relationships. In linguistic terms these concepts are called “concrete concepts.” Concrete concepts, and hence concrete ideas, are not limited to physical things that actually exist in the “real world.” Unicorns, Big Foot, and pyrokinesis are examples of concrete concepts that do not have real world referents, but which are concrete nonetheless, in the sense that they reference things which, if they did exist, would have physical attributes.
Another class of concepts is abstract concepts, and particularly intellectual ones. Equality, truth, fairness, justice, democracy, and humility are abstract intellectual ideas pertaining to humans and social relationships. Mathematics is another domain of purely abstract concepts, with prime numbers, negative numbers, groups and sets, and geometric solids being simple examples. In general, abstract intellectual concepts are those concepts that are not simply a generalization of the attributes of physical objects and experiences, but rather concepts that do not have—and could not have—distinct physical representation in the world. Some abstract concepts can be used to describe particular concrete things in the world (e.g., humility or redness), but themselves cannot and do not exist apart from the thing they describe: you can say “John doesn’t have an ounce of integrity” but you certainly can’t weight it on a scale. Similarly, metaphors are another example of abstract intellectual concepts: “time is money,” “love is a journey,” “freedom is slavery,” or more famously, “When in the Course of human events, it becomes necessary for one people to dissolve the political bands which have connected them with another, and to assume among the powers of the earth….”
However, there is a difference between an abstract idea and an abstraction, and it is this difference that is overlooked in almost every discussion of patent-eligibility. An abstraction is a generalization; it is a term or definition that identifies the principle aspects or features of the concept that are relevant to a given context, while removing features that are not important.
One use of abstraction is classification. Some concepts reference a particular species, and some concepts reference the genus—the genus may be considered an abstraction of the species. Consider the following objects: cup, glass, tumbler, stein, pitcher, demitasse, high ball, champagne flute. These are all familiar types of beverage containers. Thus, container is an abstraction over these various species. What makes container an abstraction is that it connotes the features that are
common to these objects—generally hollow, capable of holding some substance—while eliminating the particulars that differentiate them—whether their size, shape, whether they have handles, and whether they are used for coffee, beer, or spirits. But a container is clearly not an abstract intellectual idea. There are many examples of what could be called concrete abstractions: mammal, vehicle, communication device, telephone, and publication. Similarly, there can be abstractions pertaining to abstract intellectual ideas. Virtue is an abstraction of different species such as humility, integrity, courage, etc. Government is abstraction covering democracy, oligarchy, republic, monarchy, etc.
Another use of abstraction is explanation: We use abstractions to understand particular problems, by focusing on those features of the abstraction that are useful for explaining or analyzing the problem. For example, the development of synthetic paint brushes that mimicked natural bristles hinged upon the use of the metaphorical abstraction that a “paintbrush is a pump,” where the paint was pumped through the spaces between the bristles when the brush is pressed against a surface. This abstraction allowed for the creation of synthetic bristles that were superior to, and cheaper than, natural bristles. See, D. Schon, Generative Metaphor: A Perspective on Problem Setting in Social Policy, in A. Ortony (Ed.) Metaphor and Thought, Cambridge, UK, Cambridge University Press (1993).
Abstraction is also a process, which when applied to a given concept in a given domain for a given purpose, yields the desired generalization. It is an artifact of the English language, and not something inherent in the word abstraction, that the same word is used for both the process and the result; similarly explanation is used to refer to both the act of explaining, and the thing provided.
Thus labeling a claim as an abstraction does not in any way answer the questions as to whether the claim is for an abstract intellectual concept or a concrete concept. This distinction between abstract intellectual ideas and abstractions makes a difference.
In the remaining installments of this series, we will further examine courts’ confusion between abstractions and abstract intellectual ideas in the context of patent law. First, we will examine the common use of abstractions in patent claims. Second, we will focus on the importance of patent claim language in determinations of patent eligibility. Next we will consider the use of abstractions in the development of software, and will discuss the term “inventive concept” in patent jurisprudence. Then we will examine the role of conventionality in determinations of patent eligibility. We will then discuss the long history of functional claiming in patents. Finally, we will conclude that no special test is needed for claims to software inventions.