Chen, Circuit Judge.
In our previous decision in Interval Licensing LLC v. AOL, Inc., we upheld the district court's judgment invalidating claims 1-4 and 7-15 of U.S. Patent No. 6,788,314, and claims 4-8, 11, 34, and 35 of
We affirm. Claims 15-18 are directed to an abstract idea: the presentation of two sets of information, in a non-overlapping way, on a display screen. The claimed "attention manager," broadly construed as any "system" for producing that result, is not limited to a means of locating space on the screen unused by a first set of displayed information and then displaying the second set of information in that space. The claim limitations for accessing, scheduling, and then displaying the second information set are conventional functions stated in general terms and do not further define how the attention manager segregates the display of two sets of data on a display screen. Considered as a whole, the claims fail under § 101's abstract idea exception because they lack any arguable technical advance over conventional computer and network technology for performing the recited functions of acquiring and displaying information.
A. The '652 Patent
The '652 patent describes and claims the operation of an "attention manager [that] makes use of `unused capacity'" of a display device, by displaying content in that unused capacity. '652 patent col. 2 ll. 7-8. Generally, the attention manager can use a display device's "unused capacity" in two different situations: (1) it displays content when the display device is turned on but the user is not actively engaged with the display device; and (2) it displays content in an area of the display screen not used by already-displayed content with which the user is actively engaged. Id. col. 2 ll. 7-19. While the specification labels the first situation as the "screen saver embodiment" and the second situation as the "wallpaper embodiment," we explained in our previous Interval Licensing opinion that, for the "wallpaper embodiment," neither the claims nor the specification contemplates integrating the content-to-be-displayed into the background display of the screen, as is the case with traditional computer screen wallpaper. See Interval Licensing, 766 F.3d at 1375. Rather, the '652 patent describes simply displaying content in the "space in the display not used by the user's primary interaction." Id. (citing '652 patent col. 3 ll. 25-31, col. 6 ll. 45-51). This broader understanding of the wallpaper embodiment—the display of a second set of data in an area that does not overlap with an already-displayed first set of data—is what Interval itself advanced in the prior appeal. See id.
Consistent with that understanding of the disclosed wallpaper embodiment, we also construed "attention manager" as "a system that displays images to a user either when the user is not engaged in a primary interaction or in an area of the display screen that is not used by the user's primary activity." 766 F.3d at 1376. The user's "primary activity," which does not cover the entire area of the display screen (thereby creating "unused capacity"),
The specification explains that the operation of the attention manager relies on acquiring content from a content provider which is used to produce "images" that are then displayed on "unused capacity" of the display device. Id. col. 6 l. 45-col. 7 l. 7. "Image" is defined broadly to include any "visual imagery (e.g., moving or still pictures, text, or numerical information)," and "audio imagery (i.e., sounds)." Id. col. 6 ll. 62-64. Furthermore, "[t]he kinds of content data that can be used with the attention manager are virtually limitless." Id. col. 7 ll. 26-35 (listing examples, such as advertisements, nature scenes, family pictures, stock ticker information, and news summaries). In similarly broad fashion, "display device" refers to "any device that presents sensory stimulus" which includes "computer video display devices, televisions and audio speakers." Id. col. 6 ll. 11-14.
According to the specification, the attention manager coordinates the display of this acquired content through a set of instructions that enable, inter alia, the following: (i) acquiring content from a content-providing information source, (ii) controlling the timing of the display of the acquired content, (iii) displaying the content, and (iv) acquiring an updated version of the previously-acquired content whenever the information source updates its content. Id. col. 4 ll. 26-59.
Representative claim 18 is directed to the implementation of an attention manager through the use of these instructions to acquire and then display content on the unused capacity of a display:
Id. col. 33 l. 15-col. 34 l. 24 (emphasis and numbering added). Although claim 18 recites several instructions limitations, these "generic sets of instructions," id. col. 16 l. 8, relate to one of two functions: (i) enabling the acquisition of content to be displayed; and (ii) enabling control over when to display the acquired content, for how long, and then displaying it.
Moreover, the specification describes the claimed instructions as routine and conventional. "Each of the ... instructions could be acquired from a content provider, or any one or all of the sets of instructions could be acquired from an application manager that provides generic sets of instructions...." Id. col. 3 ll. 3-8. The  acquisition instructions and  content data update instructions are "generic sets of instructions." Id. col. 16 ll. 7-9. The  user interface installation instructions are "conventional and readily available for use with the attention manager." Id. col. 16 l. 15. The  content data scheduling instructions merely "provide temporal constraints on the display of particular sets of content data" and are "usually the same" and "generic." Id. col. 15 ll. 61-67. Similarly, the specification describes the conventional and generic nature of the other claimed instructions. See, e.g., id. col. 15 ll. 53-56 (" Display instructions that can be used with a particular display device are typically already developed by third parties (e.g., the maker of the display device) and are readily available."), col. 15 ll. 9-11 ( operating instructions relate to "beginning, managing and terminating operation of the attention manager"), col. 15 ll. 12-14 ( content display system scheduling instructions described only as "scheduling the display of content data on a content display system"), col. 10 ll. 43-45 ("Any appropriate set of rules, that can, for example, be arranged in any appropriate
The '652 patent, however, offers no clues on how the "attention manager" manages the display of the acquired content in a manner that avoids overlapping with the already-displayed content with which the user is actively engaged. For example, neither the specification nor the claims specify: whether a second window is created for the new content to be displayed; whether the new content always is displayed in a particular corner or location of the screen; or whether the attention manager performs an initial scan for where on the display screen "unused capacity" exists, and then, wherever that space is, defines a boundary on the screen to display the new content there. Instead, the claimed "attention manager," as construed, calls for an undefined "system" that produces the result of presenting two non-overlapping sets of data.
B. The District Court Opinion
The district court held that the asserted claims failed to meet the patent-eligibility standard set forth in Alice Corp. Pty. v. CLS Bank International. ___ U.S. ___, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). The district court first noted that the parties agreed that the claims are directed to the operation of an "attention manager," but disagreed whether the attention manager "is a patent-ineligible abstract idea." Interval Licensing, 193 F.Supp.3d at 1187. Taking into account that claims must be "considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter," id. (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)), the court concluded that the asserted claims "are directed towards the same abstract idea—providing information to a person without interfering with the person's primary activity." Id. at 1188.
The court then concluded that the claims lack an inventive concept for implementing the abstract idea, reasoning that "the elements of the asserted claims are purely conventional and do no more than apply the abstract idea ... in the particular technological environment of networked computers." Interval Licensing, 193 F.Supp.3d at 1189. Although Interval Licensing contended below that the claims provided a technical solution to problems arising in "windowed, multitasking operating systems," the court noted that "the claims do not recite
We have jurisdiction over this appeal under 28 U.S.C. § 1295(a)(1). We review a judgment on the pleadings under Rule 12(c) de novo. See Harris v. Cty. of
Section 101 allows inventors to obtain patents on "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. However, "this provision contains an important implicit exception:" an inventor may not patent laws of nature, natural phenomena, or abstract ideas. Alice, 134 S.Ct. at 2354. To assess whether a patent claim violates this exception to the terms of § 101, the Supreme Court has set forth a two-step framework, in which a court determines: (1) whether the claim is "directed to a patent-ineligible concept," i.e., a law of nature, natural phenomenon, or abstract idea, and, if so, (2) whether the elements of the claim, considered "both individually and `as an ordered combination,'" add enough to "`transform the nature of the claim' into a patent-eligible application." Id. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012)). In the context of an abstract-idea challenge to a patent claim, those two steps are typically understood as the "abstract idea" step and the "inventive concept" step. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016). While each step involves its own separate inquiry, we have explained that they may "involve overlapping scrutiny of the content of the claims." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
A. Alice Step 1: Abstract Idea
The judicial exception in patent law against claiming abstract ideas dates as far back as 1840. See Wyeth v. Stone, 30 F. Cas. 723 (C.C.D. Mass. 1840). In Wyeth, the patent described a particular apparatus for cutting ice, as well as a multi-step process for using the inventor's apparatus to cut ice. The patent specification recited two claims, with one claim "for the particular apparatus and machinery to cut ice, described in the specification." Id. at 727. As for the other claim, "the patentee claim[ed] an exclusive title to the art of cutting ice by means of any power, other than human power." Id. Justice Story, riding circuit, ruled that second claim to be "utterly unmaintainable," because it was "a claim for an art or principle in the abstract, and not for any particular method or machinery, by which ice is to be cut. No man can have a right to cut ice by all means and methods ...." Id.
In O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 S.Ct. 601 (1853), the Supreme Court endorsed Wyeth v. Stone as "directly in point" for creating, along with other
In both Wyeth and Morse, then, the inventors received a patent containing at least one claim directed to a particular technical solution to a problem, whether for cutting ice or for printing at a distance using electromagnetism; but each inventor also lost a claim that encompassed all solutions for achieving a desired result, whether for cutting ice or for printing at a distance using electromagnetism. In other words, those latter claims failed to recite a practical way of applying an underlying idea; they instead were drafted in such a result-oriented way that they amounted to encompassing the "principle in the abstract" no matter how implemented.
In more recent years, the Supreme Court has reaffirmed the principles it espoused in Morse, continually citing Morse and other cases from its era as authority for the implicit exceptions to section 101, and then applying those exceptions to modern-day technologies. See Alice, 134 S.Ct. at 2354; Mayo Collaborative Servs., 566 U.S. at 71-74, 132 S.Ct. 1289; Parker v. Flook, 437 U.S. 584, 592, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 68, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). Because the exceptions "are the basic tools of scientific and technological work," the Court has emphasized the concern that a patent claim which ties up a law of nature or an abstract idea "might tend to impede innovation more than it would tend to promote it." Mayo Collaborative Servs., 566 U.S. at 71, 132 S.Ct. 1289; see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175, 14 S.Ct. 367 (1853) ("A patent is not good for an effect, or the result of a certain process," for such patents "would prohibit all other persons from making the same thing by any means whatsoever."). Our recent abstract idea exception decisions likewise have stressed that a claimed invention must embody a concrete solution to a problem having "the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018) (collecting cases).
At the same time, courts must "tread carefully" when wielding this invalidity tool, since "all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Alice, 134 S.Ct. at 2354. Computer software-related inventions—due to their intangible nature—can be particularly difficult to assess under the abstract idea exception. See Elec. Power Grp., 830 F.3d at 1354 (noting that the Alice-recognized distinction between "computer-functionality improvements" and "uses of existing computers as tools in aid of processes focused on "abstract ideas"" "has common-sense force
Other software-based claimed inventions, however, have failed to pass section 101 muster, because they did not recite any assertedly inventive technology for improving computers as tools and/or because the elements of the asserted invention were so result-based that they amounted to patenting the patent-ineligible concept itself. See Elec. Power Grp., 830 F.3d at 1354, 1355 (claims lacking "any requirements for how the desired result is achieved") (emphasis in original); SAP Am., Inc., 890 F.3d at 1022 ("the focus of the claims [wa]s not any improved computer or network"). In this case, the record is sufficiently clear to conclude that the district court properly granted the defendants' motion for judgment on the pleadings.
In this case, Interval Licensing contends that the claimed "attention manager" provides a technological improvement to a computer system. We disagree. The focus of the claims here is directed to "providing information to a person without interfering with the person's primary activity," i.e., the result-centric construction of the claimed "attention manager." Interval Licensing, 193 F.Supp.3d at 1188. Standing alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea. As the district court aptly observed, this "basic and longstanding practice can be found in, for example, a television station's use of a breaking news ticker across the bottom of the screen." Id. at 1187. The court also pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the claimed invention. Id. We have recognized that "[i]nformation as such is an intangible" and that collecting, analyzing, and displaying that information, without more, is an abstract idea. Elec. Power Grp., 830 F.3d at 1353-54; see also id. at 1355 (noting claim requirement of "`displaying concurrent visualization' of two or more types of information" was insufficient to confer patent eligibility). We have also held that claims directed to displaying two different information sets sequentially are abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (claims directed to abstract idea of "showing
Furthermore, in light of the broad, result-oriented construction for "attention manager," we agree with the district court that the claimed "attention manager" encompasses a patent-ineligible abstract concept rather than an arguably technical improvement to display devices, because the term as properly construed simply demands the production of a desired result (non-interfering display of two information sets) without any limitation on how to produce that result. Instead of claiming a solution for producing that result, the claim in effect encompasses all solutions. This result-centric construction for "attention manager" conforms with the specification, which lacks any description for how a display device would ensure the segregation of the two sets of information presented on a display screen.
Next, Interval Licensing argues that its claims are not directed to an abstract idea in light of the claimed instructions. This argument also fails. As an initial matter, the claimed instructions do not identify how the attention manager performs the function of ensuring a defined boundary between two data sets co-displayed on a screen. Instead, the instructions limitations are for either collecting a second data set or controlling the order and timing of when to display the collected second data set, not for how to engineer or program the display of the second data set in a way that does not interfere with the first data set, wherever that first data set may exist on a screen. Although the claims include "display instructions," those instructions are simply for "displaying the image" generated from the acquired content, and have no bearing on how to display the "image" in a section of the screen that is unused. Moreover, acquiring and organizing information, as broadly recited by some of the instructions limitations, is an abstract idea, not an improvement in how computers and networks carry out their basic functions. See Elec. Power Grp., 830 F.3d at 1353-54. And displaying the information which results from that collection and organization, as recited by other instructions limitations, is "abstract as an ancillary part of such collection and analysis." Id. at 1354. The instructions limitations, taken as a whole, are thus abstract.
Furthermore, the claimed instructions do not impose meaningful limitations on the purported solution of an attention manager that would improve a computer as a tool, but merely recite routine and conventional steps in carrying out the well-established practice of accessing data from an external source and displaying that data on a user's device. In the words of the district court, they offer "nothing more than generic, pre-existing computer functionality." Interval Licensing, 193 F.Supp.3d at 1190. As explained supra, the '652 patent specification itself makes clear that the instructions limitations are generic and cover established ways to access information, organize information, and then display information. See also Oral
The instructions limitations Interval Licensing high-lights in its appeal as representing an improvement in computing devices are unavailing. For example, the specification admits the acquisition instructions are "generic," id. col 3 ll. 3-8, and are, in any event, a necessary aspect of carrying out any conception of providing one set of information to be displayed next to another. The claimed "user interface installation instructions" "are conventional" instructions previously employed for permitting users to request content on a computer. Id. col. 16 l. 15. The content data scheduling instructions and content display system scheduling instructions limitations control the duration, order, and timing of presentation of acquired content. The specification explains that "[a]ny appropriate set of rules" can "be used for establishing a display schedule." Id. col. 10 ll. 43-45. Finally, the content data update instructions, which enable updating the displayed information, are recited only at the broadest, functional level, without explaining how that is accomplished, let alone providing a technical means for performing that function. Because the instructions discuss only broad functions and are not directed to any technological improvement for performing those functions, Interval Licensing's reliance on McRO is inapposite. In McRO, the claim limitations at issue were "limited rules" which "improved technological result[s]." 837 F.3d at 1316. See SAP Am., Inc., 890 F.3d at 1021 (explaining that the claims in McRO, besides being directed to physical display improvements, also avoided abstraction by adequate specificity as to how to achieve the improvements).
In sum, the recited claims are directed to an abstract idea because they consist of generic and conventional information acquisition and organization steps that are connected to, but do not convert, the abstract idea—displaying a second set of data without interfering with a first set of data—into a particular conception of how to carry out that concept. "[S]imply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable." Mayo Collaborative Servs., 566 U.S. at 82, 132 S.Ct. 1289.
B. Alice Step 2: Inventive Concept
Whether considering the claim elements of representative claim 18 individually or as an ordered combination, nothing in the claim converts the abstract idea to an inventive concept. It is well-settled that placing an abstract idea in the context of a computer does not "improve" the computer or convert the idea into a patent-eligible application of that idea. See Alice, 134 S.Ct. at 2358. Furthermore, the claims do not recite any arguably inventive method of how the secondary information is displayed, such as what portion of the screen is utilized or how the primary activity on the screen is monitored. That is, while the specification and claims of the '652 patent purport to describe an improved user experience which allows the presentation of an additional set of information, the patent is wholly devoid of details which describe how this is accomplished. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Interval Licensing re-raises its claimed instructions in the form of an alleged inventive concept. But, for the reasons we have already given supra, the instructions are recited at a high level of generality and conventional, and are not the kinds of limitations we have held to "solve a technology-based problem, even with conventional, generic components, combined in an unconventional manner." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016), cert. denied, ___ U.S. ___, 138 S.Ct. 469, 199 L.Ed.2d 356 (2017); see also Ultramercial, 772 F.3d at 716 ("Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea [of showing an advertisement before delivering content] into patent-eligible subject matter.").
Interval Licensing next argues that the claims provide a specific technological improvement which is "rooted in computer technology" in that they "improve computer display devices by combining the acquired information with the user's primary display interaction." Appellant Br. 51-52 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). We disagree. Interval Licensing does not allege that computer display devices were previously unable to display information from more than one source. And the problem for Interval Licensing is that its claims, as construed, are so broad that they encompass the basic concept of displaying two sets of information, using any means to display them without overlap, in which the secondary data set is acquired and organized by generic, conventional steps. Thus, unlike DDR Holdings, the claims here do not offer a particular solution to a problem that, in DDR Holdings, was unique to the Internet. The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement "rooted in computer technology." DDR Holdings, 773 F.3d at 1257.
Interval Licensing also argues that the acquisition of specific information desired by the user represents an inventive concept (e.g., the limitation "user interface installation instructions" construed as "installation instructions for enabling provision of an interface that enables a person to request the set of content data from a specific source of information."). Appellant's Br. at 35. We once again disagree. Offering a user the ability to select information to be displayed is one of the "most basic functions of a computer." Alice, 134 S.Ct. at 2359. Interval Licensing does not, and cannot, contend that it is arguably inventive to enable a person to access information over a network through a user interface. '652 patent col. 1 ll. 28-34 (explaining in background section that, by using networks such as the Internet, "information can be displayed to a computer user having access to the network directly in response to a request from a user"); see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1330 (Fed. Cir. 2017) ("Remotely accessing and retrieving user-specified information is an age-old practice that existed well before the advent of computers and the Internet."). Instead,
Interval Licensing further argues that the claims at issue are for a "distributed architecture" similar to that found patent eligible in Amdocs. 841 F.3d at 1303. However, none of the claims recite anything even akin to a distributed architecture. As discussed supra, the claims, as construed, recite acquiring information from a "specific source of information," but there is no further disclosure of what that information source is or where it is located. This is a disclosure of a generic network connection, not any specific distributed architecture. See buySAFE, Inc. v. Google Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the information over a network—with no further specification —is not even arguably inventive."). And, as noted earlier, Interval Licensing argued for and received a construction of "attention manager" defining that term by the result it yields, not by its structural design or any mode for producing the result.
We have considered all of Interval Licensing's other arguments and find them unpersuasive. For the foregoing reasons, the determination of the district court that claims 15-18 of the '652 patent are directed to patent-ineligible subject matter is
Plager, Circuit Judge, concurring-in-part and dissenting-in-part.
Today we are called upon to decide the fate of some inventor's efforts, whether for good or ill, on the basis of criteria that provide no insight into whether the invention is good or ill. Given the current state of the law regarding what inventions are patent eligible, and in light of our governing precedents, I concur in the carefully reasoned opinion by my colleagues in the majority, even though the state of the law is such as to give little confidence that the outcome is necessarily correct. The law, as I shall explain, renders it near impossible to know with any certainty whether the invention is or is not patent eligible. Accordingly, I also respectfully dissent from our court's continued application of this incoherent body of doctrine.
The Three Exceptions
The majority opinion, after reviewing in detail the district court's decision and the patent's written description and claims, goes through the obligatory review of the history of 35 U.S.C. § 101, the statutory section entitled "Inventions patentable." Under the statute a patent may be obtained for an invention that is a "new and useful process, machine, manufacture, or composition of matter." This phrasing is often described as providing a wide and permissive scope for patent eligibility.
However, as the majority opinion notes, any recourse to § 101 must take into account
That "abstract ideas" is the only one of the three at issue here is a critical point, in need of emphasizing. All too often courts discussing these three judicially created exceptions to patent eligibility lump them together, as if all three present the same set of issues to be conceptualized and analyzed.
However, when it comes to applying the concept of "abstract ideas" to a challenged patent (or application for patent) as a distinct test of patent eligibility, the issues are different, and require close examination. The analytical structure which we now are to employ is provided by the Supreme Court's recent teachings in Alice Corp. v. CLS Bank International.
I. Abstract Idea(s)
The majority opinion, following the structure dictated by Alice, first steps through "Alice Step 1: Abstract Idea." The court recites a bit of the history of the "abstract ideas" idea from its origins in the 19th century, and then reviews the more recent cases that wander through it, lining the cases up as they explain themselves on both sides of the divide between good and ill. (In Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
The majority opinion concludes that "the recited claims are directed to an abstract idea because they consist of generic and conventional information acquisition and organization steps that are connected to, but do not convert, the abstract idea." Maj. Op. at 1346. This often-seen language is familiar from Alice. See Alice, 134 S.Ct. at 2359-60. It is interesting language—if "generic
But what makes an idea found in a claim an "abstract idea"? An idea itself by definition is "[s]omething, such as a thought or conception, that is the product of mental activity."
And ideas can have an infinite range of abstractness, if by that we imply concreteness —for example, compare "I have an idea—let's have hamburgers for dinner," with "I have an idea—I am going to invent how to make time go backwards."
That the phrase "abstract ideas" is a definitional morass can be seen in one simple fact—a search for a definition of "abstract ideas" in the cases on § 101 from the Supreme Court, as well as from this court, reveals that there is no single, succinct, usable definition anywhere available. The problem with trying to define "abstract ideas," and why no court has succeeded in defining it, is that, as applied to as-yet-unknown cases with as-yet-unknown inventions, it cannot be done except through the use of equally abstract terms.
The "abstract ideas" idea, when used for denying a claimed invention's patent eligibility either before or after a patent is issued, cannot thus function as a valid rule of law. As a fundamental policy, a legal
II. Inventive Concept
Having determined the claims at issue to be directed to nothing more than "abstract ideas," the majority opinion, following the Alice analysis, segues to "Alice Step 2: Inventive Concept." Here the court explores whether the invention's claims, determined in Step 1 to be abstract, are not really abstract because they limit the abstractness by an `inventive concept.' In the case before us, no such concept is seen; the trial court's determination of fatal abstraction is affirmed.
A small puzzle—if a court, after reviewing challenged claims in light of their terminology and written description, determines the claims to be "abstract" in Step 1, how can the same court be expected to determine on a second reading that the same claims have become "unabstract" via Step 2? Could it be that an "inventive concept" cannot exist until the court reads the patent at least one more time? Perhaps courts cannot be expected to read the claims carefully enough the first time?
A bigger puzzle regarding the `inventive concept' concept: Those who are familiar with the history of the Patent Act, when in 1952 the law of patenting was given a major statutory overhaul, will be the most puzzled. Is it the case that now, some 65 years later, we really have resurrected the concept of an `inventive concept'?
Judge Rich wrote extensively on the point. See, e.g., Giles S. Rich, Laying the Ghost of the "Invention" Requirement, 1 APLA Q.J. 26 (1972); Giles S. Rich, The
Judge Rich bemoaned the fact that, even after the statutory enactment of § 103 of the Patent Act, some still used the meaningless `invention' or `inventive requirement' phrase. He concluded his article with a series of propositions to reinforce "that when 103 has been complied with, there is no further and different requirement called `invention'; that compliance with 103 is the policy judgment of Congress on how to bring the invention within the Constitutional purpose." Id. at 875.
Without referring to this history, the Supreme Court in Alice instructed that we ask whether there is such structure or something in the patent claim(s) that recites an "inventive concept" "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 73, 132 S.Ct. 1289). Beyond the question of ultimate meaning of the `inventive concept' phrase, other questions abound. When we search for this significantly more `inventive concept,' are we limited to the limitations of a particular claim in the patent? If not limited to the limitations in the individual claim, then what? Do the written description and the scope of other claims in the patent come into play, as perhaps they did in Step 1?
And adding a little more complexity to the matter, the Supreme Court has recognized that "[a]t some level, `all inventions... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'" Id. at 2354 (quoting Mayo, 566 U.S. at 71, 132 S.Ct. 1289). With that in mind, we are left to ponder at what level of abstraction do we focus—put another way, how deep into the `elements' do we dig when we search for that which is not "abstract," or for that non-abstract combination that saves an otherwise "abstract idea" patent claim?
When the "abstract idea" notion appeared in the law back in the 19th century, the requirement for `invention' in its many variants—currently `inventive concept'—was also part of patent law. Then, as now, it seemed logical that something claiming to be an invention should have something called an `inventive concept' at its core.
As a decisional construct for validation of a property right—a patent—the idea of a necessarily underlying `inventive concept' proved unworkable. The concept provided no discernable boundaries for decision-making in specific cases, resulting in an incoherent legal rule that led to arbitrary outcomes. Judge Rich, who devoted his life to patent law, saw this clearly, and gave the Congress a workable alternative—nonobvious subject matter—which they adopted.
The modern Supreme Court inherited this body of formulaic doctrine, and we now expect the Court to make sense of it. That they have failed is less a commentary on their efforts than on the absence of recognition of the problem on the part of the lawyers and judges who continue to treat these doctrines as if they were gospel.
The Emperor Has No Clothes
My purpose in this discussion is not to critique the Court's handiwork, but rather to highlight the number of unsettled matters as well as the fundamental problems that inhere in this formulation of "abstract ideas." In the short expanse available in a court opinion (and in the reader's patience), it is not possible for me to recite all the issues and all the problems with the current law of "abstract ideas" and its `inventive concept' offspring.
I do, however, want to go on record as joining my colleagues who have recently expressed similar views about the current state of our patent eligibility jurisprudence, and to incorporate by reference their wisdom concerning the matter. Judge Richard Linn, concurring and dissenting in Smart Systems Innovations, LLC v. Chicago Trans-t Authority,
I welcome their attention to this—when two of our leading judges who have devoted their careers to the practice and explication of patent law publicly proclaim that there is a real problem, there is a real problem. I do not mean to suggest that they are the only two such judges on the court—to my knowledge, other than myself, they are the only two who have gone on record in such clear terms regarding the law of "abstract ideas."
There is almost universal criticism among commentators and academicians
This view is shared by many patent practitioners.
These defenses are a shortcut way for alleged infringers to try for a quick dismissal of the infringement charge on the grounds that the invention underlying the infringement suit was never entitled to a patent. If successful, it saves having to go to the effort of proving in a full-dress law suit one of the statutory invalidity defenses found in §§ 102, 103, and 112 of the Patent Act.
Indeed, some of these shortcut cases now arrive on appeal following a trial court's summary judgment, or in some cases, even following a judgment on the pleadings or motion for dismissal. This has the effect of ensuring a minimal record or virtually no record at all on which an appeal can sensibly be judged.
There is little consensus among trial judges (or appellate judges for that matter)
It would not be useful, or even fair, to fault today's Supreme Court for trying to find some way to decide what is an abstract idea, or at the least for trying to find a way to decide the question. Or to fault this court for doing its best to honor the Supreme Court's formula, even when the results demonstrated that the test did not produce coherent, readily understandable, replicable, and demonstrably just outcomes. The Supreme Court inherited the "abstract ideas" idea from cases decided at a time when it probably sounded reasonable and had little impact. With the rise of software and business method patents, the "abstract idea" became a weapon of choice for summary execution of what many decried as `bad' patents. The problem is that it does not distinguish good from ill in any coherent sense, and thus does not serve well either patent law or the public.
When the lawyers and judges bring to the Supreme Court a shared belief in the uselessness of the abstract notion of "abstract ideas" as a criterion for patent eligibility, we can hope that the Court will respond sensibly. In light of the statutory criteria for patent validity established in the Patent Act, there is no need, and indeed no place in today's patent law, for this abstract (and indefinable) doctrine. Something as simple as a declaration by the Court that the concept of "abstract ideas" has proven unworkable in the context of modern technological patenting, and adds nothing to ensuring patent quality that the statutory requirements do not already provide, would remove this distraction from the salutary system of patent issuance and enforcement provided by the Congress in the 1952 Patent Act.
The problem with hoping for this solution is that there is no particular incentive for the Supreme Court to immerse itself again in this intellectual morass. The Court, unlike this court, is not called upon daily to address the consequences of an incoherent doctrine that has taken on a life of its own. It will take a special effort by the judges and the patent bar to gain the Court's attention. Failing that, a legislative fix is a possibility, though waiting for that may be the ultimate test of patience.
In the interim, a district court in an appropriate case might choose to exercise control over its docket by instructing a defendant who raises an "abstract ideas" § 101 defense that the court will defer addressing that defense until first having the issues in §§ 102, 103, and 112 addressed. This need not be viewed as offending existing law since the "abstract ideas" test would remain in the case, as would the Alice process; only the timing would change.
There would be a shift in trial court process from the current notion, held by some, that a determination of patent eligibility under § 101 is necessarily the first thing to be decided in every case. That notion can still remain true for cases challenging a patent on laws of nature and
What would be the consequences of such a procedural delay? Even a cursory look at the claims in our recent § 101 "abstract ideas" cases suggests how many of those cases would just go away as soon as the well-understood statutory criteria are applied to the challenged claims, especially the question of whether the claimed invention is new or just a replay of prior art (see § 103). Those who would quail at the supposed burden this might place on the trial judges should remember that is what trial judges do. And besides, the trial judges have already started using an alternative along the same lines: many patent infringement suits are now being stayed by the trial courts when there is a reference of the patent eligibility and validity issues (depending on the kind of case) to the Patent Trial and Appeal Board under the expedited procedures of the America Invents Act.
Whether this court should take the initiative and instruct the trial courts to follow such a procedure raises somewhat more difficult questions. We have generally left the case management of those courts to the courts themselves, or to the circuit courts of appeal to which they normally report. For these reasons among others, our court presumably should have little difficulty with respecting a district court's decision about how best to manage its own docket.
Regardless of what other courts may do, an appellate court's job is not only to decide the immediate case before it, but also to rationalize and regularize the law to be applied in future similar cases. Judge Rich believed that words have meaning;
This emperor clearly has no clothes; we need not wait for our children to tell us this.