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« The Myriad Case and "Gene" Patents: Much Ado about Nothing? | Main | Court Report Supplement »

May 15, 2013

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Listed below are links to weblogs that reference CLS Bank Int'l v. Alice Corp. (Fed. Cir. 2013) (en banc) -- Judge Lourie's Concurrence:

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Until Benson and Flook are overruled (don't hold your breath), the mental gymnastics, bloviation and litigation arguing for and against the "abstractness" of an idea will continue unabated - no objective standard is possible, and would-be patentees will never have certainty.

Flook, in particular, by requiring that even a new and useful algorithm must be treated as if it were a well-known part of the prior art, was a terrible decision. The Court's antipathy toward a limited 20-year "preemption" of a process that did not previously exist is hard to fathom.

Should I discover a quick (new, and very useful) method of finding large prime numbers, Benson and Flook encourage me to keep it hidden, using it only as a trade secret. If I can sell lists of big primes to the cryptology industry, the advancement of science and technology can wait, while I profit, perhaps indefinitely, from my monopoly on the method -- the very thing the patent statutes were intended to prevent.

It seems like more than just one handful of dirt just got tossed in, but time will tell. The "inventive concept", whatever that is, could easily inject endless, subjective (metaphysical) complexity and cost for patent applicants. Once examiners catch on to this precious gem, hindsight on top of "inventive concept" could turn out to be a real monster. Regardless of Lourie's admonition that this isn't a 103 type obviousness situation, it is easy to see how 101 analysis could become exactly that. Language like "well-understood, routine, conventional activity" will set up a 103 type
mind set for most examiners and maybe appeal boards and judges.

Of course this hasn't gone to the supreme court yet. If they take it up, they just might shoot down Lourie's 4-step analysis as too "rigid", just like it disapproved of rigidity in 103 analysis when it shot the quite effective TSM test to smithereens and replaced it with chaos (at least, chaos is the net effect of KSR in the chemical area), e.g., there is always a "finite number" of ways to get the job done.

The courts just can't seem to nail this stuff down. The splits in thinking in this case is an excellent example. Is it time for the patent bar to come up with its own test for 101 (and 103), send the language to congress and hope that gets a fair hearing and some traction? There has to be another way to come up with something
sufficiently workable, not necessarily perfect. Or, is that thought just the height of naivety, given the profound splits in the bar itself? If it is naive, it sort of raises the question of what good is the patent bar and congress in the face of what appear to be real problems that the courts can't seem to fix? Whose responsibility is this?

James Demers states: "encourage me to keep it hidden, using it only as a trade secret... the very thing the patent statutes were intended to prevent."

Mr. Demers, I am not sure you are aware that Congress does not believe that the trade secret route is in fact not combinable with the patent route. There are parts of the America Invents Act that speak directly against such a belief.

Whether in fact, this is wise, I remain...

"An "inventive concept" in the § 101 context refers to a genuine human contribution to the claimed subject matter . . . . [A] person cannot truly "invent" an abstract idea or scientific truth. He or she ---can discover it----, but not invent it. Accordingly, an "inventive concept" under § 101 -- in contrast to whatever fundamental concept is also represented in the claim -- must be a product of human ingenuity."

Someone should inform this court that 35 USC 101 reads as follows:

Whoever invents ---or discovers--- any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

so...DISCOVERIES ARE PATENTABLE.

Moreover, I would respectfully submit that there is nothing TO discover BUT natural laws and products of nature.

So... you know.. Maybe stop legislating from the bench and stick to what the statute says....

"Should I discover a quick (new, and very useful) method of finding large prime numbers, Benson and Flook encourage me to keep it hidden, using it only as a trade secret. If I can sell lists of big primes to the cryptology industry, the advancement of science and technology can wait, while I profit, perhaps indefinitely, from my monopoly on the method -- the very thing the patent statutes were intended to prevent."

Don't trade secrit lawls already promote this? Or are you afeared that someone will independently invent in your scenario?

"1) Determine "whether the claimed invention fits within one of the four statutory classes set out in § 101." In other words, is the invention directed to a process, machine, manufacture, or composition of matter?

2) Determine whether "the claim pose[s] any risk of preempting an abstract idea." Or, does the claim incorporate an abstract idea?

3) If an abstract idea is implicated by the claim, then "identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing." Judge Lourie indicates that carrying out claim construction activities prior to this step may be helpful, but is not required.

4) Finally, "[w]ith the pertinent abstract idea identified, the balance of the claim can be evaluated to determine whether it contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.""

If he said that then he pretty much plagerized one of my posts on PO a year ago.

I'm really going to be honest with you guys though, I have been applying this standard for several years now, and I have yet to have seen a really really difficult case pass my desk under the standard announced by Lourie. It really isn't that hard to evaluate claims under the standard. Sure, it takes some time sometimes (rarely), but any competent person should be able to get it.

Les said: "there is nothing TO discover BUT natural laws and products of nature."

Interesting. It does seem to be the case that courts largely read discoveries out of the statute. Discoveries just don't come up much (if at all). The same might be said for the phrase "or any new and useful improvements thereof" as applied to discoveries.

If that is true, then logic might extend to holding that a new natural product compound is not patentable subject matter, even if the clever draftsman says it is in "isolated and purified form" or whatever language is in vogue. One can coherently argue that a newly described natural compound is a law of nature, e.g., the BRCA1 and BRCA2 genes, and you cannot claim it, even though it is a composition of matter.

Presumably section 101's sanction of compositions of matter trumps the law of nature argument. But does it? Other mental gymnastics are not hard to envision under the circumstances. When subjectivity/ metaphysics replace objective standards in laws governing technology (and most everything else?), anything can happen for any reason or for no reason that anyone other than the court panel and its adherents can understand.

It feels uncomfortably like the wheels are off the cart and have been for quite a while. There is definitely something here for congress (and/or the bar?) to fix, whether they can be convinced of that or not.

"3) If an abstract idea is implicated by the claim, then "identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing." Judge Lourie indicates that carrying out claim construction activities prior to this step may be helpful, but is not required."

Distill the invention down to a "Gist", in a manner contrary to settled law (see MPEP 2142.02(II)). Declare the "gist" abstract, as most gists, by their nature are.

4) Finally, "[w]ith the pertinent abstract idea identified, the balance of the claim can be evaluated to determine whether it contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself."

Finally, belittle and declare the elements of the claim (such as shadow account establishment and manipulation)that narrow and confine the "gist" so that it does not cover the full extent of the full abstract idea (escrow) as merely claim drafters art.

There you go, everything is abstract and nothing is patentable, just the result we wanted.

Looking back, I think the Federal Circuit's Machine-or-Transformation test wasn't as bad as it seemed at the time. The Supreme Court sure as heck wasn't able to come up with anything better. When one looks at the CLS Bank opinions it doesn't strike me that the CAFC is struggling with the technology or with the claims in that case. The only things they're struggling with are the Supreme Court's unclear, internally inconsistent directives. So I wonder what's the bigger problem - business method applicants, or a Supreme Court that thinks Section 101 is fully explicable in terms of swinging baseball bats and baking chocolate chip cookies. I cannot understand why anyone would believe the Supreme Court will repair what it has wrought. Let's go to Congress instead.

Moocow,

I was reading and nodding my head in agreement with everything you were saying up until the Congress part.

Granted, that would be the appropriate avenue, but given the AIA, I wonder to myself if that path would actually help create a vibrant and viable patent system (with the special interest wrenches thrown in), and I remain...

"I am not sure you are aware that Congress does not believe that the trade secret route is in fact not combinable with the patent route."

Sifting through that triple negative is a chore - I'm not sure I don't understand what you're not saying. ;-)

The purpose of the patent statutes is to encourage disclosure, and discourage trade secrets. My point is simply that, for the inventors of "abstract" processes, Benson and Flook turn the incentive upside down: by taking away the patent option, they discourage sharing such discoveries with the public.

Apologies for the triple negative.

Your response did make me chuckle.

I do not agree with your black and white statement separating trade secrets and patents - not after the passage of the AIA and severl cases preceeding that passage that acknowledged the court's view that the two are not mutually exclusive.

To put it directly, the AIA incorporates and acknowledges the benefits of trade secrets, even creating (actually expanding - but greatly so) a pseudo-patent-like 'right' in the vehicle of Prior User Rights.

I do agree with you that it is difficult on a conceptual basis to accept what both the courts and the legislature have apparently accepted. But regardless of my view on the matter, such is the law, and such an intepretation of the law has been accepted by the courts.

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