Could Alice Be Used to Invalidate Diehr? Of Course It Could

By Michael Borella --

The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective.  As a consequence, the validity of particular types of inventions, especially those in the software and business method space, can be uncertain until undergoing judicial review.

In a nutshell, Alice sets forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101.  One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Having said that, the test in practice usually amounts to eyeballing the claim and determining whether some of its elements recite or involve a judicial exclusion.  If so, the remaining elements are considered to determine whether they, individually or in combination, amount to significantly more.  In other words, § 101 includes a poor-man's form of prior art analysis.  Also, vague, non-specific or result-oriented elements have little or no weight in the "significantly more" inquiry.  So, § 101 also incorporates a form of enablement.

Thus, the confusion.  But don't take my word for it.

Judge Wu of the U.S. District Court for the Central District of California panned Alice for setting forth an "I know it when I see it" test.  Judge Pfaelzer, a colleague of Judge Wu, wrote that the Supreme Court's patent eligibility cases "often confuse more than they clarify [and] appear to contradict each other on important issues."  Judge Plager of the Federal Circuit wrote that the post-Alice § 101 inquiry "renders it near impossible to know with any certainty whether the invention is or is not patent eligible."  Other Federal Circuit judges have expressed similar concern.  Judge Newman recently stated that "[t]he court's rulings on patent eligibility have become so diverse and unpredictable as to have a serious effect on the innovation incentive in all fields of technology."  Judge Moore is concerned that the § 101 analysis has become "enablement on steroids."  Former Chief Judge of the Federal Circuit Paul Michel stated that Alice "create[d] a standard that is too vague, too subjective, too unpredictable and impossible to administer in a coherent consistent way in the patent office or in the district courts or even in the federal circuit."

I have previously written about how Alice can be stretched to find virtually any invention ineligible.  These tongue-in-cheek pieces explain how Edison's light bulb, Bell's telephone, and public-key cryptography -- all considered to be groundbreaking inventions -- could be interpreted to fail the Alice test.  Recently, my colleagues and I submitted an amicus brief to the Supreme Court in the American Axle v. Neapco case, making similar arguments.

But today, let's discuss something a little different.  In 1981, the Supreme Court considered the patent-eligibility of a claim that had been rejected by the USPTO.  The invention involved a computer-controlled process for curing rubber.  The case was Diamond v. Diehr, and was for 30 years the gold standard on § 101 interpretation.  The claim was found to be eligible and the Court set forth a few simple principles to guide the § 101 inquiry (claims must be considered as a whole and novelty of elements has no bearing on patent-eligibility).  In 2014, the Alice Court did not overrule Diehr -- and in fact went to lengths trying to justify how it's holding was consistent with the aforementioned principles.  But the justices left the rest of us scratching our collective heads, because Alice sure does seem to contradict Diehr in rather impactful ways.

So this begs the question:  if one were to apply the Alice test to the claim of Diehr, could an argument be made that this claim is actually ineligible?  Given the malleability of Alice, the outcome is most certainly "yes".  Let's see how.

Claim 1 of Diehr is shown below, enumerated for reference.

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
    (a)    providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
    (b)    initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
    (c)    constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
    (d)    constantly providing the computer with the temperature (Z),
    (e)    repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is ln(v)=CZ+x where v is the total required cure time,
    (f)    repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
    (g)    opening the press automatically when a said comparison indicates equivalence.

Under Alice, there would be little dispute that elements (a), (e), and (f) are mathematical in nature.  Indeed, the Diehr Court essentially admitted as much.[1]  Thus, the Diehr claim would be considered to be directed to an abstract idea under part one of Alice.

When applying part two of Alice, it is important to be cognizant of how the Federal Circuit has interpreted this portion of the test.  Notably, elements that involve mere gathering of data are also considered to be abstract (see Electric Power Group, LLC v. Alstom S.A. and CyberSource Corp. v. Retail Decisions, Inc.).  Thus, element (d) would actually be part of the abstract idea and would not qualify as an additional element.

This leaves elements (b), (c), and (g) as candidate additional elements.  But as noted above, well-understood, routine, and conventional steps do not count in the "significantly more" calculus.  Further, elements describing steps at a high level, lacking in detail, or in a results-oriented fashion without reciting particular means for achieving those results, also do not contribute "significantly more" under American Axle and many other Federal Circuit holdings.

Viewing these candidate elements individually, element (b) recites initiating a timer, element (c) recites measuring a temperature, and element (g) recites opening a press.  All of these claimed steps would have been well-understood, routine, or conventional at the time of invention.  For example, interval timers have been well-known in the art of computing for decades, temperature measurements have been common for hundreds of years, and opening a mold has been a conventional step in curing rubber since the advent of molds.  Therefore, considered individually, elements (b), (c), and (g) do not provide "significantly more".

But what about their combination?  This is where the Diehr court found eligibility in the claim, writing that "a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made."  Alice, however, de-emphasized the role of such combinations of elements.

Writing for the Alice court, Justice Thomas stated, "[c]onsidered as an ordered combination, the computer components of petitioner's method add nothing . . . that is not already present when the steps are considered separately."  He further explained, "[v]iewed as a whole, petitioner's method claims simply recite the [abstract idea] as performed by a generic computer."  These conclusory statements have been relied on heavily by the courts and the USPTO to essentially eviscerate the language of Diehr.

To that point, one could argue that the claim of Diehr, when considered as an ordered combination, simply recites an abstract process performed by a generic computer, and that a series of abstract and conventional steps recited at a high level do not provide patent eligibility.  Alternatively, one could argue that elements (b), (c), and (g) are so vague that all elements of the Diehr claim are abstract.  And then, following the Federal Circuit's reasoning in Recognicorp, LLC v. Nintendo Co.,[2] find that adding more abstract elements to an abstract idea does not lift a claim over the § 101 hurdle.

So, yes, Alice could be used to invalidate Diehr.  Such a notion should give one pause.

Hopefully, the Court will eventually take up another § 101 case and begin its opinion with, "Ok, fine, what we really meant was . . . ."  Or Congress will step in to revert § 101 back to the language of the statute or at least that of Diehr.  Until then, we will have uncertainty in the form of Schrodinger's Patents -- granted patents that are considered to be both valid and invalid until observed by a court.

[1] "[I]n several steps of the process a mathematical equation and a programmed digital computer are used."

[2] Reasoning that is questionable at best.  But similar reasoning can be found in other Federal Circuit cases and boatloads of USPTO Office actions.

Comments

[Moondog]

Ironically, of course, only the Supreme Court could achieve the dubious outcome you posit. Which may mean that the LAST thing we want to see happen is this Court to grant cert in American Axle or any other case before Congress acts to clarify the meaning of the statute. Accordingly we should not hold our breath for this situation to be rectified.

[Michael Risch]

Hi - See my article "Nothing is Patentable" - where I cover this Diehr and many other patents. https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2642361

[Profesor Joshua Sarnoff]

Mike: Yes, can we now clearly state and accept (what SCOTUS apparently cannot state explicitly) that Diehr impliedly overruled Flook, and that Mayo/Alice have now impliedly overruled Diehr. So the law is Alice, not Diehr, and was Diehr only after Flook (I'll leave the discussion of earlier history to another time). And it will remain that way unless Congress or the Court (again) reverses the course. Whether it should I'll leave for a different discussion.

[skeptical]

You mention that Alice was "spun" to not contradict Diehr.

Even more "spin" was applied in the Mayo case - and the contrast there is even more stark.

[Greg DeLassus]

Not only *could* Alice be used to overturn Diehr, Alice *has* been used to overturn Diehr. This has already happened.

This is hardly a secret. Judge Lourie noted as much during oral arguments a few years ago.

Justice Rehnquist piously affirmed in his Diehr opinion that Diehr was not overturning Flook sub silentio, but Justice Stevens (the author of the Flook opinion) was not fooled. He wrote a scathing dissent in Diehr walking through how Diehr should have turned out if the Flook rule had actually been employed.

As it happens, I like Diehr and I do not like Flook, so I was happy to see Justice Rehnquist's little slight of hand come off. Still and all, I was not fooled. Justice Stevens' dissent in Diehr had the right of it---the Diehr rule constituted an overturning of the Flook rule, even if it was not honest enough to come out and say so.

Unfortunately for us all, Justice Breyer took note of this little bit of ju-jitsu and turned it back on us all in Mayo. He piously intoned that he was not overturning Diehr, even as the Mayo rule effectively achieved as much. And what could we on the Diehr side do about that, but stand and gape? After all, our side had done the same to Flook, and if Diehr can say that its holding is fully consistent with Flook, then when Mayo reinstates the Flook rule, it is not possible to say that the new rule is not also fully consistent with Diehr.

Justice Breyer has done unto Rehnquist just as Rehnquist had done unto Stevens. Diehr is---for all intents and purposes---a dead letter *for the moment*.

The good news is that the pendulum swings one way, and then it swings back. *Eventually* either the Court or the Congress is going to reinstate the Diehr rule. Who knows, maybe American Axle will be the vehicle by which this happens (I am skeptical of that, but I would be delighted were it to come to pass). For the moment, however, one really has to be a fool to cite Diehr as the precedent that saves one's claim. Diehr has no juice right now.

[Dan Feigelson]

I note that example 25 of the PTO's patent eligibility examples analyzes the Diehr claim and finds it eligible. Not that that matters to the courts...

[skeptical]

Mr. Feigelson,

That is no surprise as the courts have even rejected USPTO examples PRIOR TO the 2019 Patent Eligibility Guidance from Iancu.

See Cleveland Clinic.