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May 10, 2017

Comments

Nice analysis, Paul. But after Sequenom, it's clear that most CAFC judges and those on the SCOTUS couldn't care less about whether or not someone actually invented something - they know patent-ineligible things when they see them. Sadly, this en banc petition will gain no traction.

Hey Paul,

It's not just Reginocorp that's a miscarriage of justice-it's the whole nonsensical and broken Mayo/Alice framework that is. And as one of the amicus briefs in from Europe in support of the failed Sequenom cert petition to SCOTUS astutely suggested, the US is HUGE danger of being deemed in violation of TRIPS because of this nonsensical and broken Mayo/Alice framework for determining patent-eligibility.

@ Dan Felignson

If claimed subject matter is truly eligible and inventive, it is incumbent on the attorney for the patentee to get the facts and the law right and to point them out to the judges in the panel (who may be inexperienced in patent law) in a way that they can understand and appreciate. We should not complain about poor outcomes if they are the result of poor advocacy. If the law is correctly pointed out to the panel and then disregarded, that is another matter.

@ EG

Both the CIPA and the EPI briefs (of which I was lead author) pointed out the problems of TRIPS compliance. It is my personal view that Sequenom complied neither with US law as explained here nor with TRIPS. Chapter and verse is to be found in the CIPA brief, though the separation of powers issue was made implicit rather than being positively spelled out (which we thought we did not actually need to do, because we expected that the clerks in the Supreme Court would be legally educated enough to get the point).

One of the major points in this posting is that the courts should look first at positive Section 101 compliance, in which case the three non-eligible categories are needed only as a cross-check. But beware: each of the four eligible categories has its own case-law baggage and is not a push-over.

Bravo Mr. Cole.

Recently you indicated that your opinion (and hence treatment) of the courts in regards to 101 was undergoing some self-inspection.

It appears that a new level of disdain is arising, and I for one would say: rightly so.

This essay is a gem, just like everything else that Paul Cole writes. Thanks for publishing it.

Paul,

Are you sure that you want to describe a process and an abstract idea as distinct categories? I don't know how it works in Europe, but in the US there's much jurisprudence, not the least of which was Alice, that a claim can be both directed to a process AND directed to an abstract idea. That's fundamental to the US concept of a judicial exception, as spelled out in at least Alice.

So your paragraph pointing out the problem with not having categorized the Recognicorp claim as a process seems to draw an incorrect conclusion. In Recognicorp, there was never any issue that the claim was a process, so yes that was assumed and not discussed explicitly, and then the claim also was found to be directed to an abstract idea. This is not the problem with Recognicorp, at least not per current US case law.

Two other points:

It sounds like you and the other commenters here are attacking the very concept of US judicial exceptions, that they judicially steal from the authorized statutory categories, which of course is a bigger issue than is addressed in Recognicorp. An argument along those lines really needs to address the US "Supreme Court Trilogy" of Gottschalk, Flook and Diehr in their entirety. That's a much bigger lift.

Also, I agree that Recognicorp is flawed in that its holding ignores an improvement analogous to McRO which is clearly stated right in the background section of the opinion. That's a more fact-specific issue directly relevant to Recognicorp which it would have been helpful for the court to have addressed, consistent with Enfish, McRO, etc.

@ Stare Decisis

In my view the eligible categories and the judicial exceptions at least in their original definitions are distinct non-intersecting sets if viewed on a Venn diagram.

The classic abstract idea in the present field is a mathematical algorithm or an improved method of calculation as in Parker v Flook. Arguably these are insufficiently transformative to count as processes, compare the classic EPO Appeal Board opinion in T 208/84 Computer-related invention/VICOM where the original claim to a method of filtering a two-dimensional data array was considered ineligible, but an amended claim to a method of digitally processing images in the form of a two-dimensional data array was allowed. The Board concluded that: "A basic difference between a mathematical method and a technical process can be seen, however, in the fact that a mathematical method or a mathematical algorithm is carried out on numbers (whatever these numbers may represent) and provides a result also in numerical form, the mathematical method or algorithm being only an abstract concept prescribing how to operate on the numbers. No direct technical result is produced by the method as such. In contrast thereto, if a mathematical method is used in a technical process, that process is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. The technical means might include a computer comprising suitable hardware or an appropriately programmed general purpose computer."

It occurs to me that the present decision, having regard to established EPO policy since VICOM, additionally raises issues of TRIPS compliance.

There is a difference between a set of steps merely labelled as a process and a set of steps which in reality as a matter of substance falls into the eligible "process" category. It is like Abraham Lincoln's story about the legs on a dog - merely calling the tail a leg does not make it into a fifth leg for the dog. My submission is that if subject matter falls in reality into an eligible category, then the judicial exceptions cannot apply.

I am not attacking the concept of the judicial exceptions but only their over-expansive interpretation to cover subject-matter that congress intended should be allowable. This is, of course, a serious issue and the Sequenom case was described to me by a senior and knowledgeable individual when it was still before the Supreme Court as "dynamite".

Paul,

Thanks for the additional thoughts. I'd also like to offer some further thoughts, at least regarding prosecution in the US. Here is not so much a rebuttal as a different perspective / framing.

In some ways I agree that it seems a somewhat semantic point whether judicial exceptions (JEs) are internally or externally distinct from the 101 statutory categories. Either way, they subtract from the patent eligible claims, possibly too much so depending on JE case law, as evidenced by Recognicorp.

However, I do think that care must be taken in arguing that a claim is not directed to a JE because it is fits the definition of a 101 statutory category. This mixes the tests and relevant case law, since, at least in US practice, a claim can indeed fit a case-law-derived definition of a textual 101 statutory category and still be directed to a judicial exception.

Put another way, using the test for 101 statutory categories, there are many reasons why a claim may fail to fit into a textual category (some examples are listed in US MPEP 2106.I, e.g. transitory forms of signal transmission and mere arrangement of printed matter). However, that a claim passes the relevant tests and is properly directed to a 101 category says nothing about whether it passes the still evolving JE tests and also is directed to a JE. Again, different tests. All but one of the MPEP examples turn on simple physicality, but US 101 case law has evolved into a more complex, and currently poorly defined, set of tests. To make a US analogy, 101 JE analysis has almost evolved into a framework with the complexity of the dreaded Erie doctrine Choice of Law analysis familiar to some only from law school, complete with necessary flow charts. But, like it or not, that is the situation, and it seems, at least for prosecution purposes, communication with examiners is facilitated by accepting the current system, for now at least, and working to move quickly through the "flow chart."

After listing evidence of commercial success, your article stated "It therefore appears almost beyond argument that the claimed subject matter indeed falls positively within the process category...," which I think most everyone would agree to, according to the relevant tests, including the Recognicorp panel. But then your article states therefore "...this should have been a conclusive holding avoiding the need for any consideration of the ineligible 'abstract idea' category," which, at least in form, according to US case law, appears to mix 101 tests. I know that in practice, the tests of whether a claim fits a textual 101 category and even whether an alleged JE is present are both quickly over and done with, and the most productive arguments relate to either highlighting non-conventional additional elements or improvement, either of which draws on entirely different case law from those initial questions.

Re-reading your article, it seems to me that many of the points in the first half of the article go to the question of improvement as demonstrated by commercial success. On that topic, the courts have opened a door through 101 via Enfish, McRO, etc. (unfortunately a door which the Recognicorp panel chose not to explore).

In that sense, I couldn't agree more with your points. Not only did the panel ignore their own background statement that the invention resulted in at least some form of improvement, but they did not give any consideration to the evidence for improvement which you highlight, and this despite authoring judge Reyna having played a role in recent cases highlighting the value of considering improvement, e.g. McRO. This, however, may go to the benefit of getting improvement clearly and overwhelmingly on the record.

So, as a practical point regarding at least prosecution, since the USPTO must synthesize and work with US case law as it exists, for now at least, it seems more productive to stay within that framework, moving past identification of a 101 category and even past identification of at least an alleged JE, to focus as you have done on how a claim is applied to the real world and what benefits result, i.e. improvement as something significantly more. Then, if the combination of additional elements is merely conventional, and if the novel / "non-conventional" part of a claim lies in the JE, effort can be focused on making it clear on the record how the JE is applied to result in an improvement and how that demonstrates the necessary something significantly more to satisfy 101.

Thus, if as you suggest Recognicorp does stretch the boundaries of the abstract idea JE too far, that can be framed as having given too little weight to the evidence of improvement: in the record, even in the opinion, and in your article -- or to the record having been insufficiently clear regarding improvement.

While preemption supposedly lies at the heart of the JEs, in recent US practice it seems more that application is the key to avoiding preemption, and clear improvement is recently the best way to demonstrate application, with the understanding that what's relevant is improvement in application as opposed to an improved algorithm in the "abstract."

In this regard, in practice, better improvement arguments are more specific and possibly evidence-based, as examples: a sufficient simplification of and acceleration in the "complex, time-consuming process" of Recognicorp, or an improved true positive rate relating to some output of a claim, or a measurable reduction in resources required. Such specific explanations have the possibility of going further in making it clear that a claim does result in a "particularized application" ( to use the Recognicorp phrase), as demonstrated by sufficiently on the record improvement.

If the Recognicorp panel did consider the improvement on the record but found it lacking, it is unfortunate that this was not addressed in more detail, since the case could have yielded a useful standard (i.e. negative example) regarding what form and amount of improvement is needed, or maybe such analysis, like yours, would even have led the court to find the claim eligible.

Thanks very much for the article and discussion.

May I just take this opportunity to thank the commentators, and especially EG and Stare Decisis for a most stimulating discussion. It should be noted that comments like those of Stare Decisis do not get written in 5 minutes, but are the result of much prior knowledge, effort and thought. So the thanks are truly well-deserved.

This thread illustrates one of the reasons we started this blog. Bravo and thanks.

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