Feb 092013

Living in the DC area is nice because you’re close to a lot of interesting action. Yesterday, I visited the Court of Appeals for the Federal Circuit for oral arguments of the much-anticipated CLS v. Alice en banc case. Interesting arguments and questioning show that “abstract idea” is being over-used and how the expansion of the §101 patent ineligibility doctrine is bad for the patent system.

An early exchange illustrates how abstract ideas being over-used.  Counsel for CLS (Mark Perry) kicked off the hearing by arguing that Alice patented an abstract idea.  He argued that initially Alice’s patent applications included method claims that were rejected as “abstract ideas” under §101 until Alice amended the claims to recite a computer.  Thus, Perry contended that the patented claims were nothing more than an abstract idea dressed up in machine claim clothing. But Judge Moore intervened as if on behalf of Alice, asking whether a claimed system in an asserted patent that recited a computer and specific hardware limitations qualified as an abstract idea. Perry answered very confidently that this system claim was nothing more than an abstract idea. Judge Moore could not believe it, pointing the Counsel not only to the specification that detailed the hardware, but to the flowcharts that detailed the steps to be performed. To Moore, if there was ever a valid software patent, this was it. But Perry responded that the claim was simply a method claim dressed up as a system claim to overcome 101. Moore rhetorically asked, “But don’t we look at the language of the claims?” Good question. Yes, claim language does matter people. Judge Moore’s next point brought up an example of the first calculator that solely performed addition functions after which someone else comes along and reconfigures the calculator to perform subtraction. If a first-of-its-kind machine or computer is not an abstract idea, why are improvements of it?

This exchange illustrates why it doesn’t make sense to characterize claims directed to computers as abstract ideas. No matter the generality of the steps the computer performs, if a claim claims a computer, then it is no longer an idea. Historically, the only type of claim that has been subject to the abstract idea exception has been method claims.  See, e.g., Benson, Flook, Diehr, Bilski, and Mayo.  This makes sense, especially in light of what an “idea” has long been understood as. An idea is a concept or a principle. You can’t touch it with your hands.  Like a method, an idea is something that you hold in your mind.  See e.g.,Tilghman v. Proctor, 102 U.S. 707 (1881) (“The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “[conceptions] of the mind, seen only by [their] effects when being executed or performed.”). If a claimed method is recited at such a high-level of generality, such as in Bilski or Mayo, then it is an abstract idea. But it makes little sense to categorize a claimed tangible machine, such as a computer, as an idea. Thus, generic computer claims should not be referred to as “abstract ideas” because it goes against the common usage of the word “idea.” If a judicial exception is going to exclude computer claims on the grounds of patent-ineligibility, another exception should be created, such as an “abstract computer” exception.

But such a new judicial exception is neither necessary nor desirable. The current system does a fine job of remedying abstract ideas from getting patented.  CLS’s counsel argued that it would be a shame for someone to patent the abstract idea of a car that drives itself only to have Google, having spent a billion dollars on actually developing the car, get sued for infringing this abstract idea patent. However, under the current system, such a scenario is unlikely because §112 requires a sufficient disclosure for the claimed invention. Abstract ideas that use computers are also unlikely when an Examiner does the job because they are relatively easy to find prior art against. The Examiner has the right to construe claim language as broadly as reasonably possible consistent with the specification when assessing prior art. See MPEP §2111.  And Examiners are pretty good at finding prior art, especially in their particular areas of technology. So if someone has really claimed something at a high-level of abstraction, it’s likely that an Examiner can find a disclosure that anticipates or would have rendered obvious that concept. CLS’s counsel even admitted that he had arguments for showing that Alice’s patent was invalid under §§102/103. Why not proceed with the already well-developed and relatively objective area of law?

Increasing the focus on §101 discourages a level playing field. A big disadvantage of expanding the §101 doctrine of patent eligibility instead of relying on well established patent code sections is that §101 is highly subjective, and other sections of the patent code can prevent abstract ideas from getting patented. Section 101 has become a lightning rod for anti-patent folk who quickly want a particular patent to go away. It’s scary to see judges experimenting with the §101 doctrine; it’s even scarier to think about patent examiners doing so.

 Posted by at 8:10 pm

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