About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Supreme Court Issues Decision in Alice Corp. v. CLS Bank | Main | ABA Webinar on Navigating the Post-Grant Minefield »

June 19, 2014


The Breyer Two-Step is not a novel thing.

It has a long history of use under the name "divide and conquer."

Diehr - if reheard in today's climate would not pass. Some would indicate that it is Diehr that it the aberration. As indicated below, such an indication points to a larger problem. Diehr has become eye-candy and a mere mechanism for giving lip service to the explicit words chosen by Congress that are otherwise "interpreted" out of recognition (like a mashed nose of wax one might say).

"Technological" is nowhere found in US patent law of 101. Contrast that with foreign patent law where it is explicitly (albeit imperfectly) found. While the Court is fond of disparaging scriviners, it appears to have no compunction of picking up its own pen and adding to the words of Congress.

If I may add to the picture, the lid of Pandora's Box has not only been pried open, but also smashed. Congress last acted in 1952 against an activist court seeking to contain Pandora's contents of the ill-defined "invention," "gist of the invention," or a myriad of ever changing - and too susceptible to philosophical manipulation - definitions that were allowed to the courts under the theory that the definition would solidify under common law development, creating a new 101 and a partitioned 103.

The Court has actively sought to regain its pre-1952 capabilities and to that end have mired 103 back into its 101 power base. This is not a matter of using one section OR another - this is a matter of ignoring what the differences in the sections were intended to do. Further, this attack has been ongoing, and evidence of the attack can be seen in previous decisions like Graham and eBay.

Without the lid to Pandora's box, no viable distinction can be maintained between patent eligibility and patentability. Congress made that distinction seeking to restrain what the courts, This Court, had done in the past in an anti-patent era, and what that same Court is doing in today's anti-patent era.

It is said that those who do not learn from history are doomed to repeat it. Perhaps maintaining the smokescreen of Diehr, the Court has attempted to learn from history, and this time around is attempting to keep Congress from noticing what it is doing - what power it is exercising? The inability of squaring Diehr with Mayo draws the view into sharp focus. In many cases brightlines are desired. Why then in patent jurisprudence bright lines are decidedly DISfavored by the Court? Why obscure the lines of distinction?

If the smokescreen is allowed to work, if lip service as to explicit words is allowed to obscure the rewriting by implicit (or now with "technological" fully added words), we have, in a very real sense, undergone a bloodless revolution. The pen, the scriviner's pen has been used by the Court where a sword would not be countenanced.

Congress acted once to protect that power solely bequeathed to them under the Constitution. While Congress may - and in fact often does in agency settings - share its power, that sharing is done at Congress's doing, NOT, as here, taken without Congress's consent and in opposition to an action of Congress telling the judiciary to keep its hand's off (or to borrow an analogy, to keep its fingers out of the nose of wax.

Will Congress wake up, shake off the anti-patent rhetoric steeped in today's movements and realize that its power has been taken? Sadly, I am...

As Michael so aptly suggests, the two tiered test from Prometheus does little to define the patent eligibility boundaries for software (let alone business methods and services). It is a bit ironic that the SCOTUS majority opinion ends with the following quote from Flook,"The concept of patentable subject matter under §101 is not 'like a nose of which may be turned and twisted in any direction'" since the two tiered test of Prometheus is so susceptable to such twisting and turning. Claims, by their very nature, can be characterized as being representative of an abstract concept, and it doesn't take much creativity to further characterize attendant claim limitations as being conventional or associated with extra solution activity.

The particular machine requirement occurs in Benson. The first paragraph of the opinion says: "The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general purpose digital computer of any type."

Later, the same opinion says: "Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." 409 U.S. at 70.

The Benson Court then addressed the government's argument that to explain the process patent cases one must use a test requiring either a transformation of articles or else a limitation on the process to its practice with a particular apparatus. The Court said: "It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a 'different state or thing.' We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents."

In the Benson case, the Court did not see a programmed general purpose digital computer as an example of a particular machine that satisfied the requirement "of our prior precedents" that preemption of the underlying idea could be avoided by limiting the process to its practice with a particular machine. (The Court still refuses to make that an absolute requirement, although it has yet to provide any alternative way to limit a patent exploiting an abstract idea against preemption of the idea--and has expressly rejected field of use limitations as a solution.)

It is thus seen that the requirement (in old precedents) of a particular machine is not novel, nor is the refusal to consider a programmed general purpose digital computer as an example of a particular machine. So, don't be shocked, shocked now in 2014 by the Alice case.

Mr Stern,

Maybe the Congress - and not the Court - should legislate should things...

Possibly the ultimate message is that mere automation of a series of steps
or procedure previously conducted manually, is not patentable subject matter.
In Mayo the Court assumed that some physicians normally conducted the claimed procedure to determine the appropriate dosage. Apparently the Court believed that the claims embodied a formal version of what physicians knew, ignoring the realities and significance of optimum dosage.
In Alice the Court believes that the claims capture a procedure previously conducted manually.
Although the Court's understanding of the facts in each case is questionable, the bottom line is that claims should not appear to embody
a series of steps implicit in the relevant art- regardless of the extent and difficulty of implementation.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29