Is the Federal Circuit Closer to Requiring a Real Claim Construction for Patent Eligibility?

To date the United States Court of Appeals for the Federal Circuit has not explicitly required district courts to conduct a formal claim construction prior to determining whether a patent claim is directed to patent eligible subject matter. How one can know whether a patent claim is directed to patent eligible or patent ineligible subject matter without a full-blown claim interpretation is a mystery. It is axiomatic that one cannot know what a claim actually covers unless and until a proper analysis is conducted. Yet, district court judges somehow know with certitude what a claim covers while doing nothing more than a facial review of the claim that would be considered a defective and reversible claim construction if done at a later stage of the proceedings when actually attempting to define the metes an bounds of the claim.

According to Markman and its progeny, a proper analysis requires consideration of both intrinsic and extrinsic evidence[1], if presented. Intrinsic evidence that must be considered includes the claims themselves, the written specification, and the entire prosecution history. Intrinsic evidence must be considered and is relevant because the specification is the glossary for the claims, teaching the invention and defining the concepts and terminology used to specifically identify and particularly point out the claimed invention.

The prosecution history must be considered in all proper claim constructions because what practitioners argue, admit and is accepted and understood by examiners becomes legally binding and limiting. That is black-letter, well established patent law. Without consideration of admissions made during prosecution, for example, it is impossible to know the meaning of claim terms, and therefore impossible to know what a claim actuallycovers. Yet, somehow some district court judges are capable of determining both that patent claims are directed to abstract ideas or laws of nature and that there is nothing significantly more added to the claim while only conducting a facial review of the claims and never considering the prosecution history.

How can one know whether a claim incorporates significantly more such that the claim does not merely claim an abstract idea, law of nature or physical phenomenon without a full and complete claim interpretation? It simply cannot be done – at least not consistently with U.S. patent laws.

Obviously, all of the decisions on motions to dismiss since Alice purporting to inherently know what the claim means simply by reading the claim language itself are legally flawed. Motions to dismiss practice based on patent eligibility has become nothing more than a charade. Litigators admit the real reason for the misapplication of the law when they proclaim they don’t want to lose the ability to get rid of patent cases on motions to dismiss because it is so much cheaper for their clients than litigating whether the patent claims lack novelty or cover something obvious.

In order to solve a legitimate problem related to the costs associated with getting to a litigated resolution, patent eligibility has become stretched and tortured. It is being used well past its intended purpose, and that is causing damage to innovators who find it impossible to get funding in America to pursue innovations in such important areas as medical diagnostics or artificial intelligence.

The United States Court of Appeals for the Federal Circuit does seem to be inching closer to righting the ship and bringing much needed sanity back to 35 U.S.C. § 101. In Berkheimer and Aatrix the Federal Circuit explained that when plead properly there are factual issues implicated with respect to Step 2B of the Alice/Mayo framework – the so-called hunt for the inventive concept where one asks whether significantly more has been added to the claim. Thus, it will become more difficult for defendants to prevail on a motion to dismiss, or even on summary judgment, when the patent and claims are well-written and the complaint is properly plead.

More recently, on October 8, 2018, the Federal Circuit issued an important decision in Data Engine Technologies LLC v. Google, an opinion which provides new insights into how the Court views and applies the Alice/Mayo framework when determining whether patent claims exhibit patent eligible subject matter. The case is of particular interest and meaningfully supplements our existing understanding of the body of law interpreting 35 U.S.C. 101 because the three-judge panel (Stoll, Reyna and Bryson) found certain of the claims asserted to be abstract and patent ineligible while finding other asserted claims directed to specific improvements and, therefore, patent eligible. More importantly, perhaps, the panel made reference to specifically reading the claims in light of the specification.

Judge Stoll wrote:

When considered as a whole, and in light of the specification, representative claim 12 of the ’259 patent is not directed to an abstract idea. Rather, the claim is directed to a specific method for navigating through three-dimensional electronic spreadsheets.

This is hardly shocking language when one is discussing a proper claim construction during litigation, but it is a clear indication that at least this panel did more than a perfunctory facial review of the claims. Sadly, a perfunctory facial review of claims has become the norm on motions to dismiss filed challenging claims as invalid under 35 U.S.C. 101. Of course, a truly proper claim construction would not only consider the claim as a whole in light of the specification, but as already discussed would also consider the prosecution history.

Perhaps the Federal Circuit is nearing the point where the Court is preparing to make the statement that should have been made years ago: Before a patent claim can be invalidated for embodying patent ineligible subject matter a full-blown claim construction that considers intrinsic and extrinsic evidence, if present, must be conducted.

About Data Engine Technologies v. Google

The case came to the Federal Circuit on appeal from the United States Federal District Court for the District of Delaware. Chief Judge Leonard Stark of the District of Delaware entered judgment on the pleadings after find the asserted claims of Data Engine’s patents ineligible under 35 U.S.C. § 101. More specifically, Stark found that all the asserted claims were of the Data Engine patents were directed to abstract ideas and fail to provide an inventive concept. The patents asserted by Data Engine at the District Court were U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146.

Writing for the unanimous panel, Judge Stoll explained that, with the exception of claim 1 of the ’551 patent, the asserted claims of the ’259, ’545, and ’551 patents (“Tab Patents”) are directed to patent-eligible subject matter. The claims of those patents were found not abstract, but instead “are directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets.” She would go on to explain, however, that the panel did agree with Judge Stark that the asserted claims of the ‘146 patent were directed to the abstract idea of “directed to the abstract idea of collecting, recognizing, and storing changed information” in spreadsheets without any additional “inventive concept sufficient to render the claims patent eligible.” Thus, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the case for further proceedings.


[1] Extrinsic evidence can include expert testimony, dictionary definitions and treatises. Extrinsic evidence is considered to the extent presented and considered helpful by the district court.



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Join the Discussion

2 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    November 7, 2018 08:30 am

    The problem is that a 101 analysis under Alice includes a 103 analysis and they know it. They can’t develop the law without also coming to the conclusion that Alice is not consistent with the 1952 Patent Act.

  • [Avatar for BP]
    November 5, 2018 11:25 pm

    Very nice post: “patent eligibility has become stretched and tortured. It is being used well past its intended purpose”. I bet there are some that intended that purpose and even more. Alice wiped-on a bit of Mayo to grease the wheels of efficient infringement:

    Oh, he feels the pistons screaming
    Steam breaking on his brow
    Old Charlie stole the handle
    And the train it won’t stop going
    No way it could slow down