It Is Time to Fix the Courts’ Section 101 Tests on ‘Directed to …’ and ‘Abstract Ideas’—Whether in Chamberlain or Beyond (Part II)

“The garage-opener case has received its share of attention. But for the patent laws and the country, fixing these crucial tests will be the right attention that it needs to help end the state of a patent-system emergency.” we concluded in Part I of this article, the courts are being called upon in The Chamberlain Group v. Techtronic Industries, Inc to respond to an emergency situation in which they must stop the Federal Circuit’s “directed-to” version of the Mayo-Alice test from expanding into, and negating, claims in every subject imaginable.

As Chamberlain urges, the patent statute, whether in Section 101 or beyond, does not limit the universe of eligible claims to those where a court can dissect its claim elements into old or “conventional” ones and those that represent the claim’s “patentable advance.” On that point, too, the Patent Act and the Supreme Court have been in unison: You can’t do that.

In enacting the Section101 eligibility provision, Congress emphasized that patent protection is available to “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980); S. Rep. 1979, 82nd Cong. 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82nd Cong., 2nd Sess. 6 (1952)). Pursuant to its broad text, the Act’s threshold eligibility provision thus includes, without qualification, any “process” or “machine” (among other things) that can meet the statute’s separate requirements for patentability, e.g., that the claimed invention is new (“novel”), useful, and “non-obvious.” 35 U.S.C. § 101.

Supreme Court Precedent Bars Dissecting Claims for Section 101 Review

The Supreme Court’s precedent appears even more at odds with the Federal Circuit’s current Section 101 test and, more specifically, its “directed to” definition. As Chamberlain notes, of course the Federal Circuit’s opinions recite that they are not dissecting claims and confining their Section 101 review to the element directed to the “patentable advance.” But that is exactly what the court’s “directed to” definition and cases require and do, including in this case. See, e.g., Chamberlain, 2018-2103, at 5; Training Techs, 921 F.3d at 1384; Affinity Labs., 838 F.3d at 1257-58. And it is no excuse to say that some or even nearly all of those claim elements are conventional, meaningless, or don’t add anything to the claim. That, after all, is what the USPTO said in Diehr.

The Federal Circuit in Chamberlain Took the Same Approach as the USPTO in Diehr

There, the Court addressed the eligibility of a multi-step process for curing synthetic rubber. 450 U.S. at 177. As with the Chamberlain claims, the Diehr claims recited steps that used an ineligible abstract idea (the “Arhennius equation”) and a computer to implement it, “in conjunction with” multiple other claim elements or steps—e.g., steps for heating the rubber and determining the “amount of time” for opening the rubber mold. Id. at 177-78. As with the Federal Circuit in Chamberlain, the PTO in Diehr rejected the rubber-curing claims as ineligible. Id. at 178. And as in Chamberlain, the PTO in Diehr took the same dissection approach, finding that the equation steps “carried out by a computer” were ineligible—and thus couldn’t count for Section 101 consideration—while the other rubber-curing steps were merely “conventional” and “cannot be the basis of patentability.” Id. at 180-81.

The Court’s Diehr ruling rejected this Section 101 approach. For one thing, Diehr recognized that a “claim drawn to subject matter otherwise” eligible does not become ineligible “simply because it uses a mathematical formula” or other ineligible matter. Id. at 187. Indeed, Diehr rejected the notion that having even several [claimed] steps” or elements on ineligible matter would necessarily render the claim ineligible. Id. at 185.

Analyzing its then-recent case law, moreover, Diehr explained that a claim could prove ineligible if “in practical effect [the claim was] on [a] formula itself” or on [an] algorithm itself.” See id.; Parker v. Flook, 437 U.S. 584, 595 (1978) (claim is ineligible under Section 101 if claim is on or “directed essentially to” an ineligible category) (quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)). “In contrast,” Diehr’s multi-step claims for producing rubber products did “not seek to patent a mathematical formula or other patent-ineligible concept. Instead, they [sought] protection for a [multi-step] process of curing rubber:

[Diehr’s claimed] process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process [for curing rubber] …. Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use … significantly lessens the possibility of “overcuring” or “undercuring,” the [claimed] process as a whole does not thereby become unpatentable subject matter.

Id. at 187; accord id. at 188 (court evaluating eligibility must consider a patent’s “claims … as a whole”). Accordingly, the Court concluded that Diehr’s claims were drawn not to an ineligible concept, such as a mathematical equation, but instead to an eligible “physical and chemical process for molding” and curing rubber products. 450 U.S. at 180, 184, 192-93.

Importantly, Diehr went on to hold that considerations of what claim elements “were well known and in common use” before the claimed invention—or whether those claims were “novel” or “non-obvious”—had “no relevance in determining whether the subject matter of a claim” was eligible under Section 101. Id. at 189-90.

The Supreme Court’s Precedents Require a Different “Directed To” Test

Diehr highlights why the Federal Circuit’s “focus of claimed advance” standard cannot stand. That confining test has no basis in the statutory text. The “claimed advance” part doesn’t either and, more than that, it specifically requires consideration of what the Court has long held has “no relevance” to Section 101: namely, invalidity or patentability considerations. E.g., Diehr, 450 U.S. at 189-90. Worse, the “focus” part of the Federal Circuit’s definition specifically adjudges the claim with the narrow focus of examining only the claimed advance—contrary to Diehr’s unqualified rule that courts must examine the claim “as a whole.” An issue of this importance with a standard this at odds with the Supreme Court’s precedents are reasons alone to grant certiorari in many instances. That the courts have been using Section 101 and this particular “directed to” test to wipe out, threaten, and discourage scores of patents and potential patent applicants and investors makes it all the more critical that the Court intervene. A patent emergency indeed.

The “Directed Essentially To” Standard Should Replace the “Focus of the Claimed Advance” Definition for Step One’s Test

On balance, however, the eligibility issue still needs a practical, more predictable, and duly narrow standard, consistent with the text of the Act and how the Supreme Court has long treated the issue. In our view, the formulation that meets these criteria is the “directed essentially to” test that the Supreme Court’s Flook decision favorably quoted and effectively used, and which the Court’s Flook, Bensen, and Diehr precedents all illustrate. E.g., Parker v. Flook, 437 U.S. 584 (1978) (holding claim-at-issue ineligible when it “would in practical effect be a patent on the [ineligible] formulaitself”); Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (same); accord Diehr, 450 at 185 (emphasizing requirement to examine claim “as a whole”); accord id. (explaining that the Court’s precedents “stood for no more than” the “long established principle” that “[a]n idea of itself is not patentable.”). The Supreme Court’s 2012 Mayo decision, to be sure, recognizes that each of these precedents remains good law. See Mayo, 132 S. Ct. at 1298, 1302.

Unlike the Federal Circuit’s current test, the “directly essentially to” standard doesn’t invite comparisons to prior art or otherwise engage in some quick-and-dirty invalidity analysis, which is verboten on step one even in today’s Mayo-Alice regime. It would restore the requirement for viewing the claim “as a whole.” And it would properly calibrate the scope of these implied exceptions to the Court’s still duly approved precedents, including Flook, Diehr, and Benson, supra. In our view, it will help make s101 more consistent, predictable, and more likely to reduce the ambiguity and subjectivity that the case law currently permits. See, e.g., Wheeler v. Pilgrim’s Pride Corp., 591 F.3d 355, 363 (5th Cir. 2009) (addressing “how the law rules best by being predictable and consistent. It is predictability that enables people to plan their … conduct, that encourages respect for law … and its officials by treating citizens equally ….”).

The Courts Need to Define the Judicially Created “Abstract Idea” Exception.

The Federal Circuit’s “directed to …” definition alone warrants review. But the other issue in the case demands it too, namely, the ongoing lack of any set definition or standard for the judicially created “abstract idea” exception to Section 101. Remember, at its core, the Federal Circuit in Chamberlain held that a claim on a device such as a garage-door opener—a physical structure made of metal and plastic, with buttons and the usual technology (and then some) tucked inside—is ineligible for a patent because, in the eyes of the law, it’s just an “abstract idea” on “wireless” communications.

These rulings can undermine confidence in the law and the U.S. patent system. That is, combined with the Federal Circuit’s erroneous “focus-of-claimed-advance” test, the “abstract idea” exception permits findings that appear to blinker the obvious—e.g., that the physical device you’re holding in your hand is really just an abstract idea, not a physical, tangible item. But as Chamberlain notes, what could be less “abstract” than a claim on a physical garage remote control or (as the claim calls it) a “moveable barrier operator”—a device comprising the physical elements of a “controller,” a moveable-barrier “interface,” and a “wireless status condition data transmitter”? With a proper definition of abstract idea, the analysis at last would have a standard, making it more predictable and consistent generally, and consistent with the longstanding notion that the public and interested parties are entitled to know the law now and how it applies—and not have to find out later in a litigation itself. We join the strong commentary in years past that likewise urges, “It is Time to Define the Term ‘Abstract Idea,” G. Quinn, IP Watchdog, (May 18, 2017).

As Chamberlain Illustrates, the Lack of a Set “Abstract Idea” Definition Naturally Raises More Questions Than It Answers (or Avoids)

Using the Federal Circuit’s analysis, one might ask about the “wireless” element that the Chamberlain decision cited for so much of its ineligibility rationale. But as Diehr emphasized, that “wireless” element alone shouldn’t drive the Section 101 analysis, not when Diehr instructs that one must consider the claim “as a whole” and in view of the claim’s other elements, regardless of whether they’re considered conventional or abstract. Indeed, as in Diehr, supra, one can reasonably view the “garage-opener” claim as a “whole”–not as some abstract-sounding invention (as the Federal Circuit characterized it), but as an “improved garage remote” or even “improved garage remote” with “wireless” two-way communications. And all this properly applies to the step-one analysis, since Diehr focuses explicitly on that “abstract” or ineligibility step, disregards prior art and Sections 102-103 invalidity issues as not relevant and ignores mention of an inventive-concept test.

Further, without a judicial definition of “abstract,” we are left to ask why, for example, is the “wireless” feature for the Chamberlain opener necessarily related to anything “abstract”? Put aside the legalistic exercise of comparing claim language to whatever “abstract” cases that a Google search may yield. The short answer is that the wireless feature should probably count as much as any other physical feature for the claimed device, making the Section 101-eligibility conclusion here stronger, not weaker. The broader answer is that, without any readily available standard for “abstract,” courts and litigants remain free to employ it however they see fit.

If the Supreme Court Doesn’t Define an Abstract Idea, The Federal Circuit Can and Must

Accordingly, as the Supreme Court created the “abstract idea” as an implied Section 101 exception, it should now take the responsibility of defining it. It indeed is well past time to restore some definable boundaries to this analysis. And defining and interpreting terms, standards and boundaries generally is precisely what courts do, or should. As the Chamberlain case illustrates, not having such a definition for “abstract idea” after all these years only magnifies the frustration and unpredictability with the U.S. patent system.

In its current state, the “abstract law” exception has an appearances problem. Without delving into examples, courts appear to just adopt, sui generis, the list of constituent parts from a patent claim and the supposed list of long-known human activities as they go—matching it to whatever the particular judicial case or claim is at issue. And then they label it “abstract.” That may or may not be the correct conclusion in any given case. The larger point here is that, when the law behaves as the modern law, with a known standard or definition, the particular analyses and conclusions that follow bear not just the legitimacy of the test or standard itself, but of the fact that it resulted from such a “law” or principle (as opposed to a backed-up or reverse-engineered result).

So, break out the dictionary or cobble a standard or definition together from precedents that address the issue. In all events, define “abstract idea.” Make that the standard for the exception and apply it reasonably and based on what it means. And replace the Federal Circuit’s “directed to” definition with the “directed essentially to” standard discussed above. The garage-opener case has received its share of attention. But for the patent laws and the country, fixing these crucial tests will be the right attention that it needs to help end the state of a patent-system emergency. Otherwise, the sense of unpredictability and inconsistency will grow, the urge to use the U.S. patent system will dwindle, and U.S. innovation and economic vitalism will erode.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

31 comments so far.

  • [Avatar for Anon]
    June 16, 2020 08:31 am


    Your post diverts from the issue being put to you.

    While on its face, you are being “polite,” you are nonetheless being disrespectful.

  • [Avatar for MaxDrei]
    June 16, 2020 05:03 am

    But aside from all that, perhaps we can all agree that “abstract idea” is not a happy criterion with which to filter patent eligibility under 35 USC 101.

    Fortunately, here in Europe, we don’t do that, and so we don’t need to get so heated about eligibility, thank goodness.

    As to “moral principles”, there is a connection with eligibility, at least under the EPC which excludes from patentability inventions that are immoral. Inventive new and improved methods of genocide (certainly much more than an “abstract idea”) is one category that comes to mind. Would such methods be eligible, in the USA, I wonder.

  • [Avatar for Anon]
    June 15, 2020 10:24 pm

    Ternary and Curious, what MaxDrei obfuscates — even as he claims that he couches his answers in deference to “sensibilities to me” is that he LIES about this through his teeth.

    And he expects both that you would believe him and that I would not call him out for this.

    Can one be any more disrespectful?

  • [Avatar for Ternary]
    June 15, 2020 06:52 pm

    Amen, Curious.

    I was going to make a joke about patents on ethics. But I have lost interest in this exchange.

    Ethics deal with moral principles, which fall outside 35 USC 101. 35 USC 101 and related cases are the matter being discussed. Especially the bad, confusing and undefined “directed to an abstract idea” is the subject of this specific post, in which you have so far avoided to provide pertinent arguments.

  • [Avatar for Curious]
    June 15, 2020 02:01 pm

    I have no idea.
    Unqualified, truer words have never been spoken.

  • [Avatar for Anon]
    June 15, 2020 07:41 am

    in a way that tries to be deferential to the sensibilities of anon,

    Utter B$, MaxDrie.

    You continue to do the opposite — as the string of my posts calling out your disrespect present.

    Let me further remind you that is what you that cheered on Mr. Cole’s whining behavior and call for silencing a critic because of “politeness” and “respect” — while you continue to show disrespect by evading points out squarely to you and maintaining your drumbeat of advocacy regardless of any conversation, effectively — even if ‘politely’ ignoring any attempt to have you engage in the conversations.

  • [Avatar for MaxDrei]
    June 15, 2020 03:33 am

    Ternary I have answered both questions, in a way that tries to be deferential to the sensibilities of anon, who scolds me constantly for not respecting the sovereign choices of the USA.

    As to the Chamberlain case, the court asked itself what distinguished the claimed opener from the well-known concept of a door opener and came to the conclusion that that difference amounted to nothing more than an abstract idea. Patent attorneys joke amongst themselves that it is always possible, with enough airy-fairy, arm-waving language, to write a claim that looks impressive but amounts to nothing more than an old teapot (or whatever). Who am I to tell that court it was wrong. Instead, I think I am familiar with a way of enquiring into eligibility which delivers cleaner results. I like to debate whether that is really so.

    As to “under the sun” with your “wow” do you want to tell me that “ethics” is i) not man-made or ii) man-made and patentable or iii) under the sun, man-made but that the idea of its being patentable is absurd? I have no idea.

  • [Avatar for Ternary]
    June 14, 2020 11:35 pm

    “Is anything (provided it is under the sun) that is “made by man” useful as the criterion of eligibility, you ask, Ternary.” No that is not what I ask. I ask if you have any objections to it as a US rule (well, in context of 35 USC 101 of course, without made-up judicial exceptions). No answer to that yet.

    A patent on ethics? Wow!!

    Any answer from you yet on the question if a door opener as claimed is directed to an abstract idea?

  • [Avatar for Anon]
    June 14, 2020 09:14 am


    You assert “try again,” even as you have countless times deflected from Useful Arts.

    That is highly disrespectful.

  • [Avatar for MaxDrei]
    June 14, 2020 05:36 am

    Is anything (provided it is under the sun) that is “made by man” useful as the criterion of eligibility, you ask, Ternary.

    Well, that non-statutory formulation is itself an update on the formulation found in the English Statute of Monopolies in the 17th century, namely, any “manner of new manufacture” which would cover new articles, materials, uses, products, processes and methods.. It does rather depend though, on what was meant by the word “made”. Like in science, every answer sets up ten new questions.

    Do you think mathematics, ethics, philosophy, works of art, literature are things “made by man”? I do. Should we open up eligibility to the field of ethics? I say not.

    How about new languages? That’s one area where the question of eligibility gets interesting. But in my opinion, the test question “made by man Y/N?” is not precise enough.

    Try again?

  • [Avatar for Anon]
    June 13, 2020 11:21 pm

    Thank you concerned — we fight for people like you and for the larger concepts of promoting innovation for innovation’s sake.

  • [Avatar for concerned]
    June 13, 2020 10:42 pm

    My sincere condolences to the professionals in the patent field who attempt to respect the rule of law and your oath. I literally do not know how you can maintain your professionalism in light of the proceedings that mock jurisprudence.

    I have one patent application and regret the awareness resulting from such.

  • [Avatar for Anon]
    June 13, 2020 08:35 pm

    Trouble is, in the USA, the law of obviousness is in no condition to filter patentable subject matter from stuff that never ought to get to issue.

    You do realize that our Sovereign has chosen to NOT use obviousness as a condition for eligibility, right?

    This statement from you MaxDrie is simply disrespectful of our Sovereign.

  • [Avatar for Ternary]
    June 13, 2020 07:27 pm

    The issue at hand: is a garagedoor opener as claimed directed to an abstract idea? I say no. What say you? So far nothing pertinent to this matter from you.

    You now say that a discussion about being “abstract” is not useful. While I agree with the basic sentiment, abstractness of inventions is what the whole discussion is all about.

    Anything under the sun that is made by man. Any objections to the US having that as patent eligibility rule? (And no, I am not really concerned what the EPO has to say about that. Europe, as you admitted elsewhere, has its own problems to achieve economic growth through innovation.)

  • [Avatar for MaxDrei]
    June 13, 2020 04:31 pm

    Ternary, judges (and those who sit on juries) are only human. They cannot help themselves from assessing subjectively the merits of the cases that are before them.

    Consider for example the UK and its Civil Procedure Rules. Link below. Part I, Rule 1, sub-Rule 1 announces as the over-riding objective of the Rules that the courts shall decide civil disputes “justly”. In other words, the one who seeks to win needs to make sure that justice is on their side. I (and Paul Cole, I believe) simply suggest ways for an inventor to craft their patent application so as to enhance their chances of prevailing in court, against an infringer.

    You suppose this column to be a conversation between patent prosecutors. Sorry, but I was supposing it to include those who are routinely involved in civil disputes about the validity of duly issued patent claims, and just as frequently on the side of the accused infringer as on the side of the patent owner..

    Personally, I think it unfortunate, the line the English (and now the US) courts have taken on patent eligibility. I much prefer the way the EPO does it (on statutory language identical to that binding on the courts of England). All you need for eligibility is “technical character” which is not much of a hurdle at all. But to clear the test for non-obviousness at the EPO you need non-obviousness in a field of technology. That’s the way to do it. An argument whether or not a particular thing lies in a “field of technology is worthwhile (if only because GATT-TRIPS confines patents to a field of technology”). An argument whether or not something is “abstract” is about as useful as arguing how many angels can sit on the point of a needle.

    Trouble is, in the USA, the law of obviousness is in no condition to filter patentable subject matter from stuff that never ought to get to issue.

  • [Avatar for MaxDrei]
    June 13, 2020 02:11 pm

    Oh I’m not in any doubt what The Rule of Law means to me. And I’m in no doubt that it means something quite different to the Party ruling in China. More like Rule with Law.

    What it means to you is something again, I suspect. In any case, something.

  • [Avatar for Ternary]
    June 13, 2020 12:22 pm

    MaxDrei, that would be a pretty stupid claim. Sorry to be so blunt, but we are supposedly having a discussion among seriously engaged patent prosecutors or at least people having some knowledge and experience in patent claim drafting.

    (You yourself could be the garagedoor opener in this claim, which sucks in structure. I don’t even have to discuss enablement, purely functional claiming or the spec. Your claim is fully anticipated.)

    But you don’t answer the question: how is a garagedoor opener (a device as claimed) directed to an abstract idea?

    Chamberlain’s 275 patent claim 1:
    … a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states; a movable barrier interface that is operably coupled to the controller; a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

    Yes, I have problems with this claim, like with terms as “substantially uniquely”. I can imagine what it may mean, but I personally would not use this without express definition in the spec. But that doesn’t make the claim abstract.

    You (and others) seem to imply that we support bad claims. I have seen nothing that indicates that people who have trouble with Alice and other 101 rejections are in some way proponents of “bad claims.” It is a diversion in the discussion to take attention away from the nonsense of “directed to an abstract idea.” Why?

    “judges are not going to uphold a claim which strikes them as bad” And that is exactly the problem. They should not be able to invalidate a patent because it “strikes them as bad,” There are rules for that. And currently we see judges making up rules based on unscientific arguments to strike down claims “which they don’t like.” How do they know the claims are bad? They know it when they see it.

    I am wondering, you living in Germany, a country that values science and technology and education and above all rules (I believe), why do you come up with these strange arguments?

  • [Avatar for Anon]
    June 13, 2020 12:05 pm


    Stop already.

    It is entirely disrespectful to ignore and conflate the different sections of law and pretend that everything is ok.

    Judges do NOT get to decide based on “feel.”

    The Rule of Law must mean something.

    Else, all you have is lawLESSness.

  • [Avatar for MaxDrei]
    June 13, 2020 05:42 am

    Suppose I claim: A garage door opener, that opens the garage door when I want it open, and shuts it when I want it shut.

    If you start your claim with the words “Garage door opener…” is that the perfect and unassailable defence to any charge that one’s claim is directed to an abstract idea?

    Is physical structure, nuts & bolts if you will, implicit in the claim, simply by beginning it with the words “Garage door opener”, rendering the claim qualitatively different from “consciousness opener” or “conversation opener”?

    Whether you like it or not, judges are not going to uphold a claim which strikes them as bad in that it is not commensurate in scope with the contribution to the art. If they are blocked from doing it down under one Section of the Statute, they will use another one when necessary.

    So, if you don’t want that to happen, use the specification to spell out how significant a contribution to the art is the subject matter of the claim. Simple as that.

  • [Avatar for Ternary]
    June 12, 2020 11:55 pm

    “… to deliver a work product that will deliver protection ie “stand up in court” twenty years later.”

    Not in my wildest dreams would I have thought 20 years ago or even 2 years ago that a “garage door opener” or “wireless communication” would be considered by the Courts as being directed to an abstract idea. It is beyond nuts. That we are even engaging in such discussions by itself indicates that something is seriously wrong in patent land.

    There is no “common sense” reasoning that makes one arrive at such a conclusion. If you can tell the world with a straight face (no, write it down for everyone to read) that a garagedoor opener is directed to an abstract idea, you clearly have left the world of empirical and rational science and have entered the world of metaphysics.

    One would expect that some rational filter (“common sense?”) would have kicked in, where a thoughtful person would say: no, that is not right, it cannot be right, because I open my own garagedoor with a device that is a garagedoor opener. But no, it gets nuttier with each new decision.

  • [Avatar for Curious]
    June 12, 2020 11:33 pm

    Paul is suggesting how to rise to that challenge. What he suggests is not rocket surgery. Rather, mere common sense. All that it requires is to reflect on what the judges look for, whether 100 years earlier or 20 years later.
    There are so many disrespectful comments I could make that could hardly express my utter contempt for your statement and overall logic (or lack thereof) contained in your statement. I’ll leave the readers to their own imagination as to what I might have said.

  • [Avatar for Anon]
    June 12, 2020 09:01 pm

    I will further add — something BOTH of you seem unable to respect — is that in our Sovereign we have a separation of powers that the Supreme Court itself disrespects with its rewriting Statutory law from the Bench.

    Mind you, Common Law has a place in our Sovereign, but that is most decidedly not what is going on here.

  • [Avatar for Anon]
    June 12, 2020 07:57 pm

    What he suggests – MaxDrei – is simply not correct.

    There is neither anything “common” nor “sense” in ANYONE thinking that they can predict what the Court (and ensuing courts following the “Simian in a Cage” training) will do.

    ANY pretending otherwise is simply disingenuous.

  • [Avatar for MaxDrei]
    June 12, 2020 06:09 pm

    It could be that what Paul Cole has in min when citing those very old cases is the professional duty and obligation of a patent attorney, when drafting a patent application, to deliver a work product that will deliver protection ie “stand up in court” twenty years later. The challenge, for any such attorney, is not knowing how the case law will evolve during those 20 years.

    Paul is suggesting how to rise to that challenge. What he suggests is not rocket surgery. Rather, mere common sense. All that it requires is to reflect on what the judges look for, whether 100 years earlier or 20 years later. There might well be creep, and therefore consequential shocking touches on the tiller from time to time but, basically, it hasn’t changed yet, and won’t change either because it is inherent in any patent system.

  • [Avatar for Pro Say]
    Pro Say
    June 12, 2020 02:32 pm

    Superb post Curious @ 6.

    Noting especially:

    “Moreover, in case you haven’t noticed, there is patent ineligibility creep at the Federal Circuit. We’ve gone from prohibitions against fundamental truths and the basic tools of scientific and technological work, to fundamental economic practice long prevalent in our system of commerce, to garage doors and propeller shafts. Every time the Federal Circuit does some invalidation by analogy they expand the previously-identified ineligible concept.”


  • [Avatar for Curious]
    June 12, 2020 11:19 am

    We have no right to call for help from the courts or from Congress if we do not first do all we can to help ourselves and our clients by careful drafting of the description and especially the claims.
    That’s a nice little aspiration. However, it doesn’t reflect reality in which the patents being invalidated today were drafted 15-20 years ago and the claims put into their final form a little after that.

    35 USC 101 has not changed, which should be the real law of the land. However, we have decades worth of patents having their validity questioned because SCOTUS doesn’t follow its own guidance by introducing conditions into patent law that were not expressed by Congress. We also have a Federal Circuit that has taken the very limited decision of Alice and blown it entirely out of proportion.

    Moreover, in case you haven’t noticed, there is patent ineligibility creep at the Federal Circuit. We’ve gone from prohibitions against fundamental truths and the basic tools of scientific and technological work, to fundamental economic practice long prevalent in our system of commerce, to garage doors and propeller shafts. Every time the Federal Circuit does some invalidation by analogy they expand the previously-identified ineligible concept.

    It won’t surprise me in the least if some (anti-patent) panel at the Federal Circuit invalidates a claim directed to some type of gasoline engine because it supposedly preempts the Otto cycle … or that some new type of airplane is invalid because it is directed to the abstract idea of flying using the aerodynamic principle of lift.

    We had this debate some time ago about all the Rule 36 affirmances that the Federal Circuit was issuing, and some people didn’t like it. I didn’t like it either, but the silver lining to that cloud was that at least the Federal Circuit wouldn’t be making more bad law. With few exceptions, ever time the Federal Circuit passes on a 101 issue, they expand the scope as to what isn’t patent eligible under 101. Unless Congress or SCOTUS steps in, the best hope for patent law is to have several judges at the Federal Circuit to retire — and it will take several.

    Getting back to the point about “careful drafting of the description and especially the claims,” that is all well and fine — except what is acceptable in 2020 might not be acceptable in 2021 or 2025 or whenever. Every single one of the patents invalidated by the Federal Circuit under 101 was examined based upon 35 USC 101, and all were deemed patent eligible by the USPTO at the time they were issued. What guarantee do my clients have that the patents I get issued in 2020 will remain valid (under 35 USC 101) for the life of those patents? There is ZERO guarantee.

    The Federal Circuit COMPLETELY IGNORES the presumption of validity under 35 USC 282. You rarely ever see them even mention it in their decisions. They ignore 35 USC 282(a). Aside from the presumption of validity, they ignore the burden of proof — how can patents be evaluated under in 12b6 context (i.e., on the pleadings) when this is before proof is even presented? They’ve expanded upon the specifically enumerated defenses within 35 USC 282(b).

    Tell me — how can I carefully draft the claims and specification when the Federal Circuit keeps moving the bar? Moreover, it is difficult enough for me to even know where that bar is at any point in time as neither the Federal Circuit nor SCOTUS has ever set forth a specific test as to what constitutes a claim that is directed to an abstract idea.

  • [Avatar for Ternary]
    June 12, 2020 10:19 am

    Paul Cole, what does your comment on enablement have to do with the ongoing discussion on being “directed to an abstract idea?”

    What does Watt’s condenser have to do with abstract idea? The physical principle of condensing in Watt was the same as in Newcomen. Just in a different location, so Watt did not have to waste energy to reheat the cylinder. Watt did not apply a new principle of condensing. Watt had a better understanding of energy flows, the insight to apply that understanding, and the tools (which were not available to Newcomen) to enable his invention.

    Your connection to abstract is “… not mere general abstraction the elements that are combined together to produce these.” But that is not what this discussion is about. Even if one provides a schematic of electronic circuits including a parts list of a computer with a patent application then (in the US) the claim can still be deemed to be “directed to an abstract idea.”

    Directed to an abstract idea in this discussion does not mean the claim language is in some way “too abstract” or unsupported. It means that the claim itself (in fact the invention) is directed to an abstract idea, like “wirelessly activating.” You really don’t mean to say that “wirelessly activating” is directed to an abstract idea, do you? Because in the same sense Watt invented “remotely condensing.”

  • [Avatar for Anon]
    June 12, 2020 07:58 am

    Mr. Cole – I call B$ on your paradigm of “We have no right to call for help from the courts or from Congress if we do not first do all we can to help ourselves and our clients by careful drafting

    We have every right for the law to be applied properly — whether or not an “ideal” application has been written.

  • [Avatar for Paul Cole]
    Paul Cole
    June 12, 2020 04:01 am

    I am glad to see that my mention of Galileo did not fall on wholly stony ground.

    It is worth recalling what the celebrated attorney George Ticknor Curtis who acted for Samuel Morse, Charles Goodyear and Cyrus McCormick wrote in the preface to his 1848 textbook on patents, subsequently mentioned by SCOTUS:

    “It is evident, therefore, that the whole of the act of invention, in the department of useful arts, embraces more than the new arrangement of particles of matter in new relations. The purpose of such new arrangements is to produce some new effect or result, by calling into activity some latent law, or force, or property, by means of which, in a new application, the new effect or result may be accomplished. In every form in which matter is used, in every production of the ingenuity of man, He relies on the laws of nature and the properties of matter, and seeks for new effects and results through their agency and aid.”

    The point can be traced even further back to the celebrated Evans v Eaton case 20 U.S. 356 (1822) concerning the so-called hopperboy – where Justice Washington said at first instance:

    “That a new modus operandi, by a new combination of old instruments or machines, so as to produce either a new effect, or an old effect in a new way, is the proper subject matter of a patent, appears from numerous authorities, and may be considered as a settled principle of the patent law. It was on this principle that Watt’s patent for his improvements on the steam engine, which made so much noise in Westminster Hall, and produced such important effects, was finally supported and established …. In what did this new discovery consist? I answer with the two judges of the Common Pleas in England who were in favour of this patent, and one of whom was Lord Chief Justice Eyre, and with the four Judges of the King’s Bench, who were unanimous on the point, that it consisted in the new principle on which the steam was condensed, and which was carried into effect by a new combination of the old machinery, with the addition of one new instrument. The word ‘principle,’ as used in relation to this subject, is not taken in its general philosophical sense, where it means a law of motion or a property of matter; but in what may he termed its mechanical sense, in which it signifies a method of doing a thing, or of effecting a purpose, in other words, a modus operandi.”

    It is interesting to see such fundamental principles discussed with such clarity so long ago. But it should be recollected that the true addressee of the patent specification is not the skilled reader or even an examiner in the USPTO but is a district judge and members of a jury who are tasked with deciding on validity and are foreseeably likely to lack prior knowledge either of patent law or of the relevant scientific or engineering background. It is utterly critical that the specification should clearly explain the unexpected new function or result that has been achieved (and from which in Europe the technical problem is reconstructed) and that the claims should recite with specificity and not mere general abstraction the elements that are combined together to produce these.

    For example, the main claim of US 5258540 involved in the celebrated case of Ariosa v Sequenom recites:

    “amplifying a paternally inherited nucleic acid from the serum or plasma sample”.

    By what means? Using what starting materials? To what extent or by what factor (1000 to 1,000,000 according to Judge Reyna who later ignored the point, but probably a severe underestimate)? For what purpose (e.g. to achieve a level where radiochemical or spectroscopic analysis become effective)? If the amplified material differs from the naturally occurring nucleic acid in its nature (abundance) and function, how is this truly and unmistakeably made clear by the sparse language of the claim? The rest, as Hamlet said, is silence. There is no wonder that Judge Reyna and others in the panel regarded the claims as over-broad and ineligible subject-matter.

    We have no right to call for help from the courts or from Congress if we do not first do all we can to help ourselves and our clients by careful drafting of the description and especially the claims.

  • [Avatar for Ternary]
    June 11, 2020 04:40 pm

    “In all events, define “abstract idea.” Make that the standard for the exception and apply it reasonably and based on what it means.”

    I would say: NO. While I appreciate the intention, it should not be up to the Courts to make Patent Law. “Congress emphasized that patent protection is available to “anything under the sun that is made by man.” ” And that is where it should be: at Congress.

    Computers and computer-implemented inventions have drastically changed society, science and technology and even what we consider to be “reality.” A substantial part of the US population lives “on-line”, something that some may consider “abstract.”

    It is ridiculous to have a bunch of Judges decide what is patent eligible or not based on a vague notion what “abstract” is (I know when I see it). I realize that we are following a path that has been paved by the Supreme Court. But it is no longer of this time. It is not based on the actual state of society and technology. It is still being followed because a body of Authority refuses to re-assess its decisions in light of the state of science. And keeps making scientifically unsupported decisions.

    It is like the Church dictating that the sun revolves around the Earth. The “directed to an abstract idea” edict is unworkable as being undefined, unpredictable and being discriminatory against whole classes of inventions.

    Letting the Courts solve this issue is impossible. It cannot and it won’t be done. The whole “abstract idea” notion is un-salvageable as an objective and evidence based application of patent law and should be removed from it.

  • [Avatar for Pro Say]
    Pro Say
    June 11, 2020 04:22 pm

    Great series guys. And you’re absolutely right.

    Here’s the fundamental problem, though:

    The CAFC doesn’t care.

    They. Just. Don’t. Care.