In an Abstract Idea Context, Little Is Unmistakably Within the Bright-line Eligibility Prohibition

This is part two of a three-part article suggesting that the Supreme Court’s “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” Commissioner v. Clark, 489 U.S. 726, 727 (1989), should be applied to narrowly construe the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas.

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In part one of this article I noted that “cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern,” Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 88-89, 132 S.Ct. 1289, 1303 (2012).  Part one suggested that this bright-line prohibition should be narrowly construed, and that it would be reasonable to only apply the Alice/Mayo two-step framework implementing this bright-line prohibition for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Phillips, Inc. v. Walling, 324 U.S. 490, 493 (1945), of the bright-line prohibition.

Part two of this article notes that the bright-line eligibility prohibition was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level, and suggests that, with respect to an abstract ideas eligibility exception, the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Phillips, 324 U.S. at 493, of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

The bright-line eligibility prohibition was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level.

Although the Court has not fully defined exactly what does fall within the abstract ideas eligibility exception, what does seem clear from the Court’s jurisprudence is that the Court’s “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303, is not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level.

As a first matter, categorically prohibiting patenting of everything which can be characterized as an abstract idea at some level would risk this “exclusionary principle … swallow[ing] all of patent law,” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014), exactly as the Supreme Court warned against.

This is the case because any idea can be characterized as abstract at some level, and it is well established that every invention is a conceived idea.  On this latter point, the Supreme Court has unequivocably held that “[t]he primary meaning of the word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception rather than to a physical embodiment of that idea.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998).  This is neither a new development nor an isolated case, as the Court made clear a century earlier that “[i]n every case the idea conceived is the invention.” Gill v. United States, 160 U.S. 426, 434 (1896).

Because every invention is itself a conceived idea which can be characterized as abstract at some level, every invention can in theory be characterized as an abstract idea at some level.  Thus, interpreting the abstract ideas eligibility exception as categorically barring patenting of everything which can be characterized as an abstract idea at some level would create the exact slippery slope that the Supreme Court warned against in its recent eligibility jurisprudence.

Moreover, it seems clear that the Supreme Court did not intend to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level because the Court indicated that there are at least some abstract ideas that are sufficient to confer patent eligibility: namely, inventive concepts.  The Court’s bright-line prohibition against patenting laws of nature and mathematical formulas clearly was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea because such a bright-line extension would bar patenting of inventive concepts, which by definition are capable of characterization as abstract ideas but which the Court explicitly acknowledged are sufficient to signal eligibility.

In this regard, the very first entry in the Oxford English Dictionary for “concept” defines it as “An abstract idea”. Oxford English Dictionary, “concept”, https://en.oxforddictionaries.com/definition/concept.  Even though every inventive concept by definition could theoretically be characterized as an abstract idea, it is clear from Supreme Court eligibility jurisprudence that an inventive concept is sufficient to confer patent eligibility on a claim directed to an abstract idea.  In this regard, an inventive concept may be thought of as an abstract idea that can properly be preempted by a patent claim.  This is consistent with the notion of an invention as an idea, as a patent claim to an invention is inherently preemptive of the idea representing the invention.

Currently, though, Supreme Court eligibility jurisprudence offers very little guidance on distinguishing a patent-ineligible abstract idea which cannot properly be preempted by a patent claim from an inventive concept sufficient to confer patent eligibility which can properly be preempted by a patent claim.

For example, as referenced in part one, in characterizing the second step of the Alice/Mayo test, the Court indicated that “we have described step two of this analysis as a search for an ‘inventive concept’ — i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice, 134 S.Ct. at 2355 (internal quotations and alterations omitted).  In making this statement, the Court was quoting its own statement in Mayo (in a law of nature context) regarding the search for “an ‘inventive concept[]’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo, 566 U.S. at 72-73, 132 S.Ct. at 1294.

Applying this approach in an abstract ideas context creates a unique issue not present in a law of nature context, however: while it is generally easy to differentiate between an inventive concept and a law of nature, it is often possible for an inventive concept to itself be characterized as an abstract idea.  The Court in Alice specifically contrasted the “search for an ‘inventive concept’” with “the ineligible concept itself,” Alice, 134 S.Ct. at 2355 (internal quotations and alterations omitted), but the Court has not yet had the occasion to offer additional guidance on distinguishing an inventive concept from an ineligible concept.

While this lack of guidance is problematic to attempts to determine whether a particular concept is an ineligible abstract idea or an inventive concept which signals patent eligibility, the Court’s recognition that an inventive concept can signal patent eligibility signals that the Court did not intend its “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303, to categorically bar patenting of everything which can theoretically be characterized as an abstract idea at some level.

In an abstract ideas context, there is little that has been indicated to be plainly and unmistakably within the terms and spirit of the bright-line prohibition.

Because the Court’s “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Id., was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea, it is necessary in each case to determine whether a particular concept that a claim is alleged to be directed to is intended to fall within this bright-line prohibition.

As outlined in part one, the implicit statutory exception for abstract ideas should be construed “narrowly in order to preserve the primary operation of the provision,” Clark, 489 U.S. at 739 (citing Phillips, 324 U.S. at 493), as to do otherwise would risk “frustrat[ing] the announced will of the people.” Phillips, 324 U.S. at 493.  Given that such a narrow construction is necessary for the implicit judicial exception itself (for “patents that claim the ‘buildin[g] block[s]’ of human ingenuity,” Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 89, 132 S.Ct. at 1303; Mayo, 566 U.S. at 72, 132 S.Ct. at 1294)), one must be even more careful in construing the “bright-line prohibition … which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

Analogously to Phillips, there is an argument that “[t]o extend [such a bright-line prohibition] to other than those [concepts] plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Phillips, 324 U.S. at 493.

Here, one result of the Supreme Court’s very reasonable choice to decline to “labor to delimit the precise contours of the ‘abstract ideas’ category,” Alice, 134 S.Ct. at 2357, is that there are only a limited number of concepts which it is clear are “plainly and unmistakably within [the] terms and spirit,” Phillips, 324 U.S. at 493, of this bright-line prohibition.  In particular, in an abstract ideas context, arguably the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

As to the first of these, as noted above, the Supreme Court has clearly “endorsed a bright-line prohibition against patenting … mathematical formulas …, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

For example, with respect to mathematical formulas, in Parker v. Flook, 437 U.S. 584 (1978), the Court held that where “[a] formula is the only novel feature of [a] method,” “the discovery of this feature [does not] make[] an otherwise conventional method eligible for patent protection.” Flook, 437 U.S. at 588.  Likewise, in Gottschalk v. Benson, 409 U.S. 63 (1972), the Court indicated that “[t]he mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula.” Benson, 409 U.S. at 71-72.

Similarly, with respect to fundamental practices that are long prevalent, in Alice, the Court found “a fundamental economic practice long prevalent in our system of commerce” to lie within its bright-line prohibition, and applied the test it had articulated in Mayo to find claims ineligible. Alice, 134 S.Ct. at 2350; see also Bilski v. Kappos, 561 U.S. 593 (2010). (The Supreme Court has only specifically indicated the ineligibility of fundamental economic practices that are long prevalent, but for purposes of this article, it is assumed arguendo that the broader, genericized formulation of “fundamental practices that are long prevalent” can be utilized. Arguably, there is no real need to employ an eligibility exception for fundamental practices that are long prevalent, as it seems like a claim directed to such a concept (absent an additional inventive concept), would clearly be unpatentable under 35 U.S.C. § 102 as lacking novelty or under 35 U.S.C. § 103 as obvious.)

None of this is intended to suggest that there is any sort of “talismanic significance,” see Alice, 134 S.Ct. at 2356-57, to mathematical formulas and fundamental practices that are long prevalent.  Instead, this is only intended to point out that while it is clear that the Court intends these to be within the ambit of the Court’s bright-line prohibition so as to warrant application of the Mayo/Alice framework, it is not clear how to determine whether other concepts that don’t fall within either of these groups is intended to be within such ambit of the bright-line prohibition.

That is, with respect to an abstract ideas eligibility exception, the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Phillips, 324 U.S. at 493, of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

The bright-line eligibility prohibition should be narrowly construed, and the Mayo/Alice test implementing it only applied for concepts plainly and unmistakably within its terms and spirit.

As outlined in part one, given that the Alice/Mayo two-step framework is only designed to determine whether a claim is directed to a patent-ineligible concept barred by a bright-line prohibition, it would be reasonable to only apply the Alice/Mayo two-step test for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition.

As noted above, with respect to an abstract ideas eligibility exception, mathematical formulas and fundamental practices that are long prevalent are arguably the only things that the Supreme Court has indicated to be “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition.

Accordingly, given that the abstract ideas eligibility exception must be narrowly construed, it would be reasonable to only apply the bright-line prohibition to mathematical formulas and fundamental practices that are long prevalent, because “[t]o extend [such a bright-line prohibition] to other than those [concepts] plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Id.

Consequently, given that the Alice/Mayo two-step framework is only designed to determine whether a claim is directed to a patent-ineligible concept barred by this bright-line prohibition, it would be reasonable to only apply the Alice/Mayo two-step test for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition, e.g. mathematical formulas and fundamental practices that are long prevalent.

Notably though, nothing in this article is intended to suggest that it is not possible to still apply the abstract ideas eligibility exception to other concepts which are not a mathematical formula or fundamental practice that is long prevalent.  For example, even if the Alice/Mayo test is not applied because a claim isn’t directed to a concept that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Id., of the bright-line prohibition, a claim could still be found ineligible under § 101.

Part three of this article elaborates on this, and suggests that even if the bright-line eligibility prohibition is construed narrowly, this would not foreclose the ability of the judiciary and the U.S. Patent and Trademark Office to address issues raised by claiming at a level of abstraction that results in overbroad claiming, either under 35 U.S.C. § 101 or under 35 U.S.C. § 112.