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 (LAB), 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 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? 


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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. 


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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.


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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.


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