“The syndrome has recently reached an acute stage, which if applied consistently to all similarly situated patents with similarly drafted claims, would result in many hundreds of thousands of clearly tangible inventions that one can actually hold in one’s hand being mysteriously declared to be ‘abstract.’”
Alice in Wonderland syndrome is a medical condition for which there is no known treatment. It causes a disturbance of perception and has a serious impact on the life of those afflicted, and I suspect on those who surround those afflicted. Of course, those in the patent community who work on software implemented innovations know all of this too well.
Think this is a joke? Sadly, no. Alice in Wonderland syndrome is a real thing.
A Disturbance of Perception
According to Wikipedia, Alice in Wonderland syndrome is named after the Lewis Carroll character because the distortions of perception and size experienced by Alice are reminiscent of those experienced by individuals afflicted with the syndrome. For those unfamiliar with the connection to patent law, Alice Corp. v. CLS Bank is the case of seminal importance where the Supreme Court most recently announced the patent eligibility test for computer implemented innovations, better known as software.
“Alice in Wonderland syndrome is a disturbance of perception rather than a specific physiological condition,” Wikipedia explains. “[T]hough the symptoms may acutely impact the patient’s life while they are present, Alice in Wonderland syndrome typically resolves itself within weeks or months.” If only that were similarly true in the legal sphere!
Unfortunately, the Federal Circuit seems to be dealing with an exceptionally prolonged and worsening version of Alice in Wonderland syndrome. The syndrome has recently reached an acute stage, which if applied consistently to all similarly situated patents with similarly drafted claims, would result in many hundreds of thousands of clearly tangible inventions that one can actually hold in one’s hand being mysteriously declared to be “abstract” by the Federal Circuit.
And, as previously mentioned, according to Wikipedia, “[a]t present, Alice in Wonderland syndrome has no standardized treatment plan.”
‘Six Impossible Things Before Breakfast’
In addition to a litany of inventions that have fallen as patent ineligible under the Supreme Court’s Alice-Mayo framework, the Federal Circuit recently ruled — over a strong dissent by Judge Newman — that a digital camera was both abstract and patent ineligible. Remarkably, the claim in Yu v. Apple 2020-1760 (Fed. Cir. June 11, 2021) recited image sensors, lenses that are mounted to the image sensors, a digital image processor and even analog-to-digital converting circuits. How could the claim be abstract? How can a claim that recites circuitry be abstract? Moreover, this claim went the final mile to recite the delivery of a tangible application, namely, the delivery of a resultant digital image.
Yu did not argue that it is well known to use multiple pictures to enhance each other, but rather argued that claim 1 was directed to a patent eligible application, which by its express, literal terms, it is. Nevertheless, Judge Prost (who was joined by Judge Taranto) found that the components used were conventional and there was nothing unique about the claimed configuration of the lenses and sensors.
The only conclusion is that the Federal Circuit judges are experiencing the world as Alice’s White Queen, who was known to have sometimes “believed six impossible things before breakfast.”
‘Curioser and Curioser’
What is interesting is that, in reaching the patent eligibility determination under 35 U.S.C. 101, Judge Prost reviewed the specification to find that the configuration for which the inventor described uniqueness compared with the prior art was a version of the invention containing 4 lenses and 4 sensors, which she wrote made claim 1 overbroad because it only required 2 lenses and 2 sensors. Such a determination, however, is really a matter properly decided under 35 U.S.C. 112. Indeed, the only way one can truly appreciate the scope of a claim vis-à-vis the specification is to undertake a proper and thorough claim interpretation, which did not happen here, and is, for reasons the Federal Circuit has not explained, not required for a 101 inquiry. A complete and thorough claim interpretation is, however, required for analysis of claims under 35 U.S.C. 102, 103 and 112, because those sections relate to invalidity.
In Yu, the district court granted the defendants’ motion to dismiss—a motion that is supposed to have all inferences drawn in favor of the non-moving party (i.e., the patent owner). And still, the Federal Circuit stretched to find that while the specification does explain the invention is unique compared to the prior art, the scope of claim 1 is too broad and therefore patent ineligible? Simply stated, this is not a proper 101 analysis, period.
If we must live under the fiction foisted upon us by the Supreme Court that their patent eligibility jurisprudence is perfectly consistent, and specifically, that Diamond v. Diehr has not been overruled, then that has to mean the Federal Circuit does not have the authority to ignore the explicit teachings from Diehr. And Diehr is extremely clear — you cannot collapse the patentability inquiry into a single question under 101, period. In Diehr, then Associate Justice Rehnquist wrote that the other sections of the statute must be allowed to do their work, which makes perfect sense, otherwise those sections become superfluous, which violates basic canons of statutory construction.
‘We’re All Mad Here’
Can’t we all at least agree that when a claimed invention is concrete and tangible enough to, when thrown at your head leave a scar upon impact, it cannot possibly be abstract? Apparently not, because we are told by the Federal Circuit that no amount of tangibility allows a claimed invention to escape the clutches of an abstract idea designation! And they say that with a straight face as if we are supposed to believe it simply because it has been spoken by those wearing black robes. Madness.
Whatever the Supreme Court’s patent eligibility jurisprudence is or means at this point, determining breadth of a claim pursuant to 101 without a proper claim construction is wrong. Making such a determination based on a specification the court itself recognizes as explaining that the invention is unique (i.e., not conventional, not routine, not well established) compared to the prior art shows the very reason for requiring a proper claim construction in the first place. Claims are to be interpreted in light of the specification, not in spite of the specification.
It is a basic tenet of patent law that one cannot understand what a claim covers unless and until the claims, the specification and the prosecution history are all reviewed. A complete claim interpretation can even include expert testimony to explain what someone of skill in the field would understand since the relevant question isn’t whether a judge on the Federal Circuit understands or thinks the scope is too broad, but whether the specification explains the claimed invention to the relevant technical audience.
Perhaps at the end of the day these claims should be found invalid, having been improvidently granted by the U.S. Patent and Trademark Office. But there is no way Judges Prost and Taranto can know that now, based on the obvious cursory review they have given this case, the lack of any claim construction, and the confusion of 101 and 112. It is long past time to stop with the shortcuts and start treating examined and issued patents with the presumption of validity they deserve.
Image Source: Deposit Photos
Join the Discussion
19 comments so far.
AnonJune 23, 2021 11:44 am
“understanding why the courts are doing what they’re doing seems, to me, highly material ”
You are confusing your beliefs with understanding.
Note that I did not say that understanding was not material.
TFCFMJune 23, 2021 10:15 am
Anon@#15: “Your “beliefs’ are not material.”
To practitioners seeking to secure meaningful (i.e., won’t be held to be invalidly “abstract”) patent claims for their clients, understanding why the courts are doing what they’re doing seems, to me, highly material (whether my opinion of “what they’re doing” is accurate or not).
The majority opinion appears to me to all-but-expressly say that if the patentees had claimed what-they-actually-invented-and-described, then the outcome might well have been different.
At a minimum, practitioners who believe that “anything-and-everything-that-works” type claims are appropriate should consider including as a backup position one or more claims directed to what an applicant actually invented (and perhaps also to variations that are reasonably described in the specification).
Pro SayJune 23, 2021 09:35 am
“How can IBM get over 9,000 patents in one year alone and I cannot get even one patent?”
The answer is easy, concerned.
IBM pays the Patent Office untold millions of dollars a year . . . while you pay them virtually nothing.
It’s not about the merits, it’s about the money.
Sell your patent app to IBM for a dollar and watch what happens . . .
concernedJune 23, 2021 07:51 am
LF @13: “Is it possible that some Federal Circuit judges are going to great lengths to give deference to even incorrect decisions by District Court judges invalidating patents?”
CBNC today asked the question “Who received the most patents in 2020?” I knew the answer was IBM, over 9,000 patents from reading this blog.
How can IBM get over 9,000 patents in one year alone and I cannot get even one patent? Literally over one million working professionals, attorneys and experts have tried since 1956 (program inception) to find a solution to the problem I solved, the USPTO and PTAB admit I solved the problem, admit I meet the language of s101 as had been written by Congress (but not as has been re-written by judges with undefined terms), yet I still get the on-going “reject at all cost” treatment. We defeat one rejection argument, a new rejection argument surfaces.
Really, IBM solved over 9,000 problems that were all at a greater standard than the one I solved? If true, we might as well closed the USPTO as every problem in the world must have been solved by IBM in 2020 or surely the remaining problems solved by 2021.
To answer your question, which was probably rhetorical to anybody truthful about what is going on in the patent world: It sure looks like a hidden agenda is in play. Your litigation funding must require great nerves to play in a game where the playing field is not level.
AnonJune 22, 2021 01:59 pm
Your “beliefs’ are not material.
TFCFMJune 22, 2021 12:37 pm
Anon@#11: “Your “any and every” has already been debunked.”
I believe it has not. The patentee here obtained a claim directed to any and every device that has a few features and performs function X (i.e., “produc[es] a resultant digital image from said first digital image enhanced with said second digital image.”
Litigation FunderJune 22, 2021 11:18 am
I agree that this is an atrocious opinion, but I also wonder why the original lawsuit was filed in the Northern District of California? Is it possible that some Federal Circuit judges are going to great lengths to give deference to even incorrect decisions by District Court judges invalidating patents, as opposed to the proper de novo review? And if so, that makes NDCal an even more inopportune forum.
There seems no reason why this case could not have been first filed against Samsung in the Eastern District of Texas, and then later against Apple in the Western District of Texas, and I am 100% confident that a different result on 101 validity would have occurred (112, 102, and 103 issues not withstanding). As a funder, I would vehemently counsel against discretionary filing in California, and would likely reconsider funding if the patentee and counsel wished to proceed in that manner.
Stephen SchreinerJune 21, 2021 05:37 pm
Gene, great article. Yu is one more decision that illustrates how [shall we say “nutty” or “schizophrenic”? let’s go with nutty] nutty patent eligibility case law has become. A camera is not eligible to
be patented, nor is a metal axle… The outcomes of these cases are truly unpredictable, which illustrates that the analytical framework is fatally flawed.
AnonymousJune 21, 2021 02:16 pm
There is no more rule of law as concerns patent eligibility.
Unconstrained by any statute, this is the only “rule” the courts seem to apply:
“The court, in its sole discretion, shall determine whether or not a patent is directed to patent eligible subject matter.”
Having completely jettisoned any connection to the actual statute, the rest, whether stylized as a “framework” or a “judicial exception” or a “test,” is just handwaving and inarticulable whim of the court. Pick a winner, then back fill the reasons.
The American patent system has become an embarrassment and must be fixed by Congress.
AnonJune 21, 2021 01:22 pm
Your “any and every” has already been debunked.
Please return to the prior thread and answer the question put to you (as opposed to the question that you may have wanted to have been put to you).
BJune 21, 2021 11:48 am
@ Anonymous “Is the camera claimed a “new and useful machine” or “a new and useful improvement [of a machine]” per 35 USC 101, or is the court free to ignore that statutory language, or any discussion thereof, when determining patent eligibility?”
Great question, but I already know the answer.
The court is 100% free to ignore any statutory language involving patents when determining patent eligibility.
The court is also free to ignore the holding of the previous 101 case before the CAFC even if the previous case was published the day before by the same panel of judges.
DominicJune 21, 2021 11:36 am
Great article, Gene.
TFCFMJune 21, 2021 11:27 am
How can a claim that recites circuitry be abstract?
A: Simple. Claim “any and every circuit that achieves function X,” irrespective of how many or few such circuits one has disclosed and/or invented — just as the patentee did in this case.
Pro SayJune 21, 2021 10:26 am
. . . and the innovation cancer that is ineligibility continues to grow and spread . . . with Congress standing silently by as the patient dies.
AnonymousJune 21, 2021 10:20 am
Yu v. Apple is a good candidate for cert. The Fed Cir is totally off the rails. Even better, Congress must act immediately. As Judge Newman says, this nonsense is “contrary to the public’s interest in a stable and effective patent incentive.”
Questions presented: May the court skip the statutory definition of patent eligibility under 35 USC 101 and instead apply only the court’s patent eligibility standard involving “judicial exceptions,” or, in the mutually exclusive alternative, is it true that the Supreme Court “may not engraft its own exceptions onto the statutory text,” per Henry Schein, Inc. v. Archer & White, Inc., 139 S.Ct. 524 (2019)?
Is the camera claimed a “new and useful machine” or “a new and useful improvement [of a machine]” per 35 USC 101, or is the court free to ignore that statutory language, or any discussion thereof, when determining patent eligibility?
Steven WilgusJune 21, 2021 09:36 am
One must seek to determine WHO benefits from these obviously prejudicial decisions.
Follow the money. There you will find who is at the end of this mess.
Eileen McDermottJune 21, 2021 09:04 am
Thanks for that B – I’ve corrected!
BJune 21, 2021 12:23 am
Great writing, Gene
“The only conclusion is that the Federal Circuit judges are experiencing the world as Alice, who was known to have sometimes ‘believed six impossible things before breakfast.’”
Gene, I daresay you haven’t had much practice at believing impossible things.
Small pedantic issue: The White Queen, not Alice, “believed as many as six impossible things before breakfast.”
ConcernedJune 20, 2021 02:31 pm
I hope the PTAB had a straight face when they wrote my process met s101 as written by Congress but not as (undefined) by the judges.
And when the PTAB was challenged that no process that met my level of a solution was ever denied a patent, the PTAB said for the first time in my prosecution history that the claims did not do what everyone agreed the claims did. Of course, the PTAB had to throw out 2 university studies, their previous statements, the acknowledgment of the USPTO examiners regarding my process solved the long standing problem, and hard documents from the administering agency.
Understand, my process corrects working professionals, attorneys and family members who put a situation outside the law. Millions if dollars are wrongly paid and also not distributed by the mistake. My process recifies Congressional intent and resolves the financial aspects. Naturally PTAB could not say “Who cares about Congressional intent and the loss of millions of Federal/State dollars?” So the PTAB simply says my process does no such thing deep i to the prosecution with no evidence, no proof, no reasoning and with complete ignorance of the official record.
The situation has to be move 3 levels up before we can be talking Alice in Wonderland syndrome. Even a mad hatter would not argue what the PTAB is stating.