Unpatentable Subject Matter (abstract ideas)

Mayo v. Prometheus

• To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.  For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

• [T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.”
• The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?
• If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.

CLS BANK v. ALICE CORP.

• The abstractness of the “abstract ideas” test to patent eligibility has become a serious problem, leading to great uncertainty and to the devaluing of inventions of practical utility and economic potential.

• Notwithstanding these well intentioned efforts and the great volume of pages in the Federal Reporters treating the abstract ideas exception, the dividing line between inventions that are directed to patent ineligible abstract ideas and those that are not remains elusive.

• While every inventor is granted the right to exclude, or “pre-empt,” others from practicing his or her claimed invention, no one is entitled to claim an exclusive right to a fundamental truth or disembodied concept that would foreclose  every future innovation in that art.

• [T]he essential concern is not preemption, per se, but the extent to which preemption results in the foreclosure of innovation.  Claims that are directed to no more than a fundamental truth and foreclose, rather than foster, future innovation are not directed to patent eligible subject matter under § 101.  No one can claim the exclusive right to all future inventions.

• The mere implementation on a computer of an otherwise ineligible abstract idea will not render the asserted “invention” patent eligible. 

• It can ... be appreciated that a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not.

• But even with that appreciation, great uncertainty remains, and the core of that uncertainty is the meaning of the “abstract ideas” exception.

• Any claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed.  But nothing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims.  It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 U.S.C. § 101.  Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised. 

• In light of the foregoing, this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.

• Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.

CLASSEN IMMUNOTHERAPIES, INC. V. BIOGEN IDEC

• Methods that simply collect and compare data, without applying the data in a step of the overall method, may fail to traverse the §101 filter.


• The ’283 claims do not include putting this knowledge to practical use, but are directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. In contrast, the claims of the ’139 and ’739 patents require the further act of immunization in accordance with a lower-risk schedule, thus moving from abstract scientific principle to specific application.

FORT PROPERTIES, INC. V. AMERICAN MASTER LEASE LLC.

• The computer limitation [in this case] … does not play a significant part in permitting the claimed method to be performed. … At the claim construction stage, AML agreed that “using a computer” merely meant “operating an electronic device that features a central processing unit.” Such a broad and general limitation does not impose meaningful limits on the claim’s scope. AML simply added a computer limitation to claims covering an abstract concept—that is, the computer limitation is simply insignificant post-solution activity.

Offer For Sale

AUGUST TECH CORP v. CAMTEK LTD

• Section 102(b) requires that “the invention was . . . on sale in this country” before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).




• The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not.
  


• While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived.


• Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

Unpatentable Subject Matter (mental processes)

CYBERSOURCE CORP. V. RETAIL DECISIONS, INC.

• Mental processes are not patent-eligible subject matter because the application of only human intelligence to the solution of practical problems is no more than a claim to a fundamental principle.


• It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the … specification.


• Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none.


• We have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.


• We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.


• As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim’s scope. In other words, the machine must play a significant part in permitting the claimed method to be performed. Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope.


• [M]erely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

Bancorp Services v. Sun Life Assurance

• To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.
• Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.

Parsing Therasense v. Becton

When it comes to undisclosed prior art, the Federal Circuit’s new standard outlined in THERASENSE, INC. V. BECTON, DICKINSON AND CO. for inequitable conduct, which was and intended to diminish the importance of inequitable conduct as a defense, is logically flawed. The standard for intent is, taken on its face, not possible to establish. To show the required intent, a defendant must convince a district court to “make a specific finding [that the inventors] knew that withheld information was material and [that] they made a deliberate decision to withhold it.” (See AMERICAN CALCAR, INC. V. AMERICAN HONDA MOTOR CO., INC. at p. 27.) This seems like a pretty rigorous standard to meet by clear and convincing evidence, but it is at some level impossible. It must be shown that an inventor knew—at the time he decided not to disclose a prior art reference—that the prior art reference was material. But the Federal Circuit also redefined “material,” which now must be (usually) “but-for” materiality: “prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” (Therasense, p. 27; see also pp. 27-28 (“[I]n assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”).) Accordingly, a defendant must show that during prosecution an inventor knew of a prior art reference, knew that disclosing it would result in claims not being allowed, and made a deliberate decision to withhold it.





The problem, of course, is that one cannot know what the PTO is going to do with any particular piece of prior art ahead of time. Inventors and practitioners may have opinions about how they think the PTO will respond to a particular prior art reference, but they can never know. What the Federal Circuit likely meant, and how this standard will probably be applied in practice, is that to meet the intent standard it must be shown that an inventor believed (subjectively, one would presume) that a prior art reference would have resulted in claims not being allowed had the examiner known of it and deliberately decided to withhold it for that reason. Since this standard relies on the subjective view of the person(s) accused of inequitable conduct, it will be exceedingly difficult to establish.

Invalidity (Burden of Proof)

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

• "[W]e now hold that an accused infringer cannot obtain the benefit of the lower burden of proof that prevails in an interference proceeding simply by alleging, as a defense to infringement, that the asserted patent is invalid based upon a co-pending patent unless common claimed subject matter is first identified and an adjudication of priority is sought."

Derivation Defense

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

• In order to establish derivation, Creative was required to “prove both prior conception of the invention by another and communication of that conception to the patentee.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003).

Enhanced Damages

SPECTRALYTICS, INC. V. CORDIS CORP.

• "Seagate removed the presumption of willful infringement flowing from an infringer’s failure to exercise due care to avoid infringement, but Seagate did not change the application of the Read factors with respect to enhancement of damages when willful infringement under §285 is found. We thus vacate the district court’s denial of enhanced damages, and remand to the district court to redetermine whether enhanced damages are warranted under the guidance of Read, 970 F.2d at 826, that the 'paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances.'”

Bard Peripheral v. W.L. Gore

• We believe that the court is in the best position for making the determination of reasonableness.  This court therefore holds that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.

• When a defense or noninfringement theory asserted by an infringer is purely legal (e.g., claim construction), the objective recklessness of such a theory is a purely legal question to be determined by the judge. When the objective prong turns on fact questions, as related, for example, to anticipation, or on legal questions dependent on the underlying facts, as related, for example, to questions of obviousness, the judge remains the final arbiter of whether the defense was reasonable, even when the underlying fact question is sent to a jury.

• [T]he ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.