> The Court says that an abstract idea need not reduce to some fundamental truth that has always existed. It is sufficient for it to be a "fundamental economic practice" or "longstanding commercial practice," like the concept of "risk hedging" in Bilski. (Slip. Op. at 10)
If your quote is accurate, and they applied the same logic as Bilski, this sounds like they're conflating patent eligibility (101) and patentability (102, 103 etc.) again. To understand the difference between "patent-eligible" and "patentable", if you invent a car colored red [1], it's patent-eligible because a car is an articles of manufacture i.e. it satisfies 101. But it's not patentable because red cars have been around forever, i.e. it fails 102.
For those of you following along at home, 101, 102 and 103, etc. are bars that patent claims must clear to be valid. 101 is "patent eligibility", i.e. it excludes things like laws of nature and "abstract" ideas. 102 is novelty, i.e. it excludes things found in the prior art. 103 is non-obviousness, i.e. it excludes things that are obvious (note: not "trivial") combinations of existing prior art. These are long-standing principles for judging patents, each providing a distinct criteria for judging and invalidating a patent, and this arrangement has a long, well-known and mostly consistent history behind it.
Now essentially, the SC is saying "prior art" can sometimes make something an "abstract idea". You don't have to be a patent lawyer to see that this does not really make sense.
This patent is obviously invalid, but we already have the tool for invalidating it, and that's section 102: a "longstanding commercial practice" or "fundamental economic practice" clearly falls under the umbrella of prior art -- things we already knew.
By mixing 102 analysis with 101 analysis, they're just "muddying the water" even more. I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent.
1. Whether a "car" is an abstract concept is not relevant to the analogy.
Your point is, at a purely statutory level, fairly compelling. And it's essentially the point the plaintiffs made in this case: the "abstract principle" exception to subject matter eligibility should be construed narrowly, given the broad wording of 101 and the fact that it's a judicially-created exception.
But, invalidating this patent on 101 grounds versus 103 grounds is not the same. Subject matter eligibility is something that can be ruled on in a motion to dismiss, In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), while obviousness will generally need to wait after claim construction. It should be possible to knock out patents that claim a fundamental practice in any field as early as possible.
You can make other distinctions between "a fundamental practice" and "prior art," too. In the field of cooking, do we have to point out prior art for making a roux, or do we just accept that someone, perhaps many someones independently, did it sometime long ago, but it's so established now that it might as well be a fundamental law of the field?
Over time, the Supreme Court has been beefing up 101 as a bar to patent eligibility. Is the interpretation in CLS v. Alice the one that's most faithful to the text of the statute? Probably not. But interpretation in the name of controlling the flow of litigation in lower federal courts is one of the key roles of the Supreme Court.
I have a tangentially related question: has there been any thought given to raising patent validity standards around teachability? A big constitutional point of a patent is to teach someone "skilled in the art" how to replicated the subject matter of the patent. That's typically intepreted as "can you pay an expert witness to claim the patent teaches them to construct the claimed infringement," which is, of course, always true. But to me, this seems like fertile ground for the defense, and ought to be a negative test: can the defense find an expert witness to say that the patent is too vague, unspecific, or abstract to teach them to construct the claimed infringement.
Is this approach ever tried in these cases? It seems to me that the more convoluted and abstract the patent (which seems to be the point of many of these patents explicitly written to try and reach as broad as possible), the more juries will tend to identify with the expert saying "I can't make heads or tails of this thing" and invalidate bad patents as simply failing to adequately teach the construction of the infringement claim.
This would be a challenge to the validity of a patent on Section 112 grounds. However, there would not be an expert witness involved, as it's a question of law to be determined by a judge. See: http://scholar.google.com/scholar_case?case=1212705333151944... (Section B, starting on page 495). This does get used in practice, successfully.
Ah, I had not considered how this would affect downstream litigation procedures. Thanks for the explanation. I strongly believe we need more tools to dismiss frivolous litigation as early as possible, so in that light this seems more favorable.
If your quote is accurate, and they applied the same logic as Bilski, this sounds like they're conflating patent eligibility (101) and patentability (102, 103 etc.) again. To understand the difference between "patent-eligible" and "patentable", if you invent a car colored red, it's patent-eligible because a car is an articles of manufacture
101 does not (and much more does not only) require that something relate to "an articles of manufacture" to be patent-eligible, it requires it to be an invention of a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"
It is quite arguable that, assuming cars exist, a "red car" is, to the extent that it is new not useful, and to the extent that it is useful not new, and therefore patent ineligible.
So, no, while I agree that your analogy may be relevant, I don't think it illustrates that the Supreme Court is confusing patent eligibility with patentability. I think you are reading patent eligibility far too broadly.
102 is novelty
Its true that 102 has specific novelty requirements on top of the patent-eligibility requirements in 101, but that doesn't mean that things don't need to be "new and useful" under Section 101 before one even needs to consider whether they meet the specific novelty rules in Section 102.
You're right that the actual wordings of the statutes make them far less orthogonal. However, the way I've most frequently seen the statutes applied has been that 101 is applied broadly -- only used to exclude things like laws of nature -- whereas 102, 103 etc. have been used to judge the actual "quality" of a patent. To me, that also makes technical sense, but as you said downthread, that's more a personal aesthetic preference than anything grounded in the actual language on the books.
Edit: however, my original point regarding the opinion was, the SC did not just say this fails 101 because it's not new, but they went on to say that "long prevalent" practices (i.e. prior art) can make something "abstract". This, to me, simply makes no sense.
Edit: however, my original point regarding the opinion was, the SC did not just say this fails 101 because it's not new, but they went on to say that "long prevalent" practices (i.e. prior art) can make something "abstract". This, to me, simply makes no sense.
In what I've seen of the Supreme Court jurisprudence on patent-eligibility, "abstract idea" seems to have (based on the way it is used, not any explicit statement) evolved into a sort of a term of art for things that fail both the "new and useful" and "process, machine, manufacture, or composition of matter" requirements of Section 101.
I would say that this is one of the ways in which case law gets unnecessarily and confusingly self-referential and loses its visible connection to the underlying enactments that it is interpreting, which makes it less accessible and avoidably opaque. But good luck getting people on the Supreme Court that see that as something important to minimize.
I can't tell if you are heavily drinking the kool-aid, or trolling, but ...
You say each has a "well-known and mostly consistent history behind it"
None of these have a consistent history, being subject to the whims of changing panels and ideological en-banc fights every couple years when a new judge gets appointed.
You act as if they are well thought out, well applied doctrines, when they are completely hit-or-miss bullshit that has caused the MPEP to explode due to the inconsistencies.
"I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent."
The federal circuit needs no help becoming more inconsistent, they do a great job on their own.
> I can't tell if you are heavily drinking the kool-aid, or trolling, but ...
No, just armchair-lawyering :-) My experience in this field, while more extensive than most non-attorneys, has been as a hobbyist. What I lack in hands-on experience, however, I try to make up by reading empirical studies.
I would agree that the standards of 101, 102, etc. have not been evenly applied, to say the least. In fact, that's why the Federal Circuit was formed. There are studies evaluating to what extent they have been successful in harmonizing patent law. To your point, there is even a study on how consistent (or not) the CAFC is. (Will try to dig them up when I get a chance.)
However, what I'm trying to say is, regardless of how the statutes have been implemented, the theory is sound and rational: a patent has multiple, largely orthogonal, dimensions and it should be judged along those lines. To my engineering mind, anything that conflates those dimensions is an inelegant and problematic ruling.
However, what I'm trying to say is, regardless of how the statutes have been implemented, the theory is sound and rational: a patent has multiple, largely orthogonal, dimensions and it should be judged along those lines. To my engineering mind, anything that conflates those dimensions is an inelegant and problematic ruling.
Yeah, the problem with that idea is that rulings aren't intended to implement abstract theories independent of the controlling enactments (the statutes and the Constitution). The theory that patents have "multiple, largely orthogonal dimensions", at least as you seem to identify those dimensions -- and particularly the idea that newness is a consideration only for Section 102 patentability, and not Section 101 patent eligibility -- is inconsistent with the actual text of Section 101, which explicitly requires for eligibility that the thing sought to be protected is (a) an invention that is (b) new and (c) useful.
Your aesthetic preference for orthogonal considerations where newness would be a considered only for Section 102 patentability is, of course, a legitimate aesthetic preference -- but its not what the statute says, and I think it would a more "problematic ruling" for the court to ignore the statute simply out of aesthetic preference for orthogonal categories with a certain configuration.
This is more true to the realities of this issue than anything else in these comments. We're still stuck with an "I know it when I see it rule" that depends on what the examiner/judge had for breakfast.
that's not at all what the SC is saying, what they are essentially saying is that business method patents are nonstatutory, with or without the computer in which executed. An iphone on the other hand is not a business method (though shopping with one is.
Comments
Haven't finished reading it, but...
> The Court says that an abstract idea need not reduce to some fundamental truth that has always existed. It is sufficient for it to be a "fundamental economic practice" or "longstanding commercial practice," like the concept of "risk hedging" in Bilski. (Slip. Op. at 10)
If your quote is accurate, and they applied the same logic as Bilski, this sounds like they're conflating patent eligibility (101) and patentability (102, 103 etc.) again. To understand the difference between "patent-eligible" and "patentable", if you invent a car colored red [1], it's patent-eligible because a car is an articles of manufacture i.e. it satisfies 101. But it's not patentable because red cars have been around forever, i.e. it fails 102.
For those of you following along at home, 101, 102 and 103, etc. are bars that patent claims must clear to be valid. 101 is "patent eligibility", i.e. it excludes things like laws of nature and "abstract" ideas. 102 is novelty, i.e. it excludes things found in the prior art. 103 is non-obviousness, i.e. it excludes things that are obvious (note: not "trivial") combinations of existing prior art. These are long-standing principles for judging patents, each providing a distinct criteria for judging and invalidating a patent, and this arrangement has a long, well-known and mostly consistent history behind it.
Now essentially, the SC is saying "prior art" can sometimes make something an "abstract idea". You don't have to be a patent lawyer to see that this does not really make sense.
This patent is obviously invalid, but we already have the tool for invalidating it, and that's section 102: a "longstanding commercial practice" or "fundamental economic practice" clearly falls under the umbrella of prior art -- things we already knew.
By mixing 102 analysis with 101 analysis, they're just "muddying the water" even more. I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent.
1. Whether a "car" is an abstract concept is not relevant to the analogy.
Your point is, at a purely statutory level, fairly compelling. And it's essentially the point the plaintiffs made in this case: the "abstract principle" exception to subject matter eligibility should be construed narrowly, given the broad wording of 101 and the fact that it's a judicially-created exception.
But, invalidating this patent on 101 grounds versus 103 grounds is not the same. Subject matter eligibility is something that can be ruled on in a motion to dismiss, In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), while obviousness will generally need to wait after claim construction. It should be possible to knock out patents that claim a fundamental practice in any field as early as possible.
You can make other distinctions between "a fundamental practice" and "prior art," too. In the field of cooking, do we have to point out prior art for making a roux, or do we just accept that someone, perhaps many someones independently, did it sometime long ago, but it's so established now that it might as well be a fundamental law of the field?
Over time, the Supreme Court has been beefing up 101 as a bar to patent eligibility. Is the interpretation in CLS v. Alice the one that's most faithful to the text of the statute? Probably not. But interpretation in the name of controlling the flow of litigation in lower federal courts is one of the key roles of the Supreme Court.
I have a tangentially related question: has there been any thought given to raising patent validity standards around teachability? A big constitutional point of a patent is to teach someone "skilled in the art" how to replicated the subject matter of the patent. That's typically intepreted as "can you pay an expert witness to claim the patent teaches them to construct the claimed infringement," which is, of course, always true. But to me, this seems like fertile ground for the defense, and ought to be a negative test: can the defense find an expert witness to say that the patent is too vague, unspecific, or abstract to teach them to construct the claimed infringement.
Is this approach ever tried in these cases? It seems to me that the more convoluted and abstract the patent (which seems to be the point of many of these patents explicitly written to try and reach as broad as possible), the more juries will tend to identify with the expert saying "I can't make heads or tails of this thing" and invalidate bad patents as simply failing to adequately teach the construction of the infringement claim.
This would be a challenge to the validity of a patent on Section 112 grounds. However, there would not be an expert witness involved, as it's a question of law to be determined by a judge. See: http://scholar.google.com/scholar_case?case=1212705333151944... (Section B, starting on page 495). This does get used in practice, successfully.
Ah, I had not considered how this would affect downstream litigation procedures. Thanks for the explanation. I strongly believe we need more tools to dismiss frivolous litigation as early as possible, so in that light this seems more favorable.
101 does not (and much more does not only) require that something relate to "an articles of manufacture" to be patent-eligible, it requires it to be an invention of a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"
It is quite arguable that, assuming cars exist, a "red car" is, to the extent that it is new not useful, and to the extent that it is useful not new, and therefore patent ineligible.
So, no, while I agree that your analogy may be relevant, I don't think it illustrates that the Supreme Court is confusing patent eligibility with patentability. I think you are reading patent eligibility far too broadly.
Its true that 102 has specific novelty requirements on top of the patent-eligibility requirements in 101, but that doesn't mean that things don't need to be "new and useful" under Section 101 before one even needs to consider whether they meet the specific novelty rules in Section 102.
You're right that the actual wordings of the statutes make them far less orthogonal. However, the way I've most frequently seen the statutes applied has been that 101 is applied broadly -- only used to exclude things like laws of nature -- whereas 102, 103 etc. have been used to judge the actual "quality" of a patent. To me, that also makes technical sense, but as you said downthread, that's more a personal aesthetic preference than anything grounded in the actual language on the books.
Edit: however, my original point regarding the opinion was, the SC did not just say this fails 101 because it's not new, but they went on to say that "long prevalent" practices (i.e. prior art) can make something "abstract". This, to me, simply makes no sense.
In what I've seen of the Supreme Court jurisprudence on patent-eligibility, "abstract idea" seems to have (based on the way it is used, not any explicit statement) evolved into a sort of a term of art for things that fail both the "new and useful" and "process, machine, manufacture, or composition of matter" requirements of Section 101.
I would say that this is one of the ways in which case law gets unnecessarily and confusingly self-referential and loses its visible connection to the underlying enactments that it is interpreting, which makes it less accessible and avoidably opaque. But good luck getting people on the Supreme Court that see that as something important to minimize.
I can't tell if you are heavily drinking the kool-aid, or trolling, but ...
You say each has a "well-known and mostly consistent history behind it"
None of these have a consistent history, being subject to the whims of changing panels and ideological en-banc fights every couple years when a new judge gets appointed.
You act as if they are well thought out, well applied doctrines, when they are completely hit-or-miss bullshit that has caused the MPEP to explode due to the inconsistencies.
"I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent."
The federal circuit needs no help becoming more inconsistent, they do a great job on their own.
> I can't tell if you are heavily drinking the kool-aid, or trolling, but ...
No, just armchair-lawyering :-) My experience in this field, while more extensive than most non-attorneys, has been as a hobbyist. What I lack in hands-on experience, however, I try to make up by reading empirical studies.
I would agree that the standards of 101, 102, etc. have not been evenly applied, to say the least. In fact, that's why the Federal Circuit was formed. There are studies evaluating to what extent they have been successful in harmonizing patent law. To your point, there is even a study on how consistent (or not) the CAFC is. (Will try to dig them up when I get a chance.)
However, what I'm trying to say is, regardless of how the statutes have been implemented, the theory is sound and rational: a patent has multiple, largely orthogonal, dimensions and it should be judged along those lines. To my engineering mind, anything that conflates those dimensions is an inelegant and problematic ruling.
Yeah, the problem with that idea is that rulings aren't intended to implement abstract theories independent of the controlling enactments (the statutes and the Constitution). The theory that patents have "multiple, largely orthogonal dimensions", at least as you seem to identify those dimensions -- and particularly the idea that newness is a consideration only for Section 102 patentability, and not Section 101 patent eligibility -- is inconsistent with the actual text of Section 101, which explicitly requires for eligibility that the thing sought to be protected is (a) an invention that is (b) new and (c) useful.
Your aesthetic preference for orthogonal considerations where newness would be a considered only for Section 102 patentability is, of course, a legitimate aesthetic preference -- but its not what the statute says, and I think it would a more "problematic ruling" for the court to ignore the statute simply out of aesthetic preference for orthogonal categories with a certain configuration.
Replying since I can't edit the post... Some studies regarding the contributions, consistencies and inconsistencies of the CAFC.
1. "Promoting the Progress: Three Decades of Patent Jurisprudence in the Court of Appeals for the Federal Circuit", Damon C. Andrews" - http://law.missouri.edu/lawreview/files/2012/11/Andrews.pdf
2. "On the Causes of Unpredictability of Federal Circuit Decisions In Patent Cases", Paul M. Janicke - http://papers.ssrn.com/sol3/papers.cfm?abstract_id=960636
3. "How Federal Circuit Judges Vote in Patent Validity Cases", Mark Lemley and John R. Allison - http://papers.ssrn.com/sol3/papers.cfm?abstract_id=189512
This is more true to the realities of this issue than anything else in these comments. We're still stuck with an "I know it when I see it rule" that depends on what the examiner/judge had for breakfast.
that's not at all what the SC is saying, what they are essentially saying is that business method patents are nonstatutory, with or without the computer in which executed. An iphone on the other hand is not a business method (though shopping with one is.