This is not patentable, but where is the guidance on what is?
As we predicted, the per curium Federal Circuit got it right! Read prior blog on CLS Bank
In Alice Corp. v. CLS Bank Intl., decided on June 19, 2014, the Supreme Court affirmed the per curium Federal Circuit analysis under Mayo in striking down four software patents under § 101 as patent ineligible. Read Mayo blog
In Mayo, the first step identifies the abstract idea represented in the claim. Op. 7. The analysis then turns to whether the claim “tranforms the abstract idea into a patent-eligible invention” as the CLS Bank Court calls it (Op. 11) or “ adds significantly more” as the Federal Circuit put it in the per curium decision. The Court found that the claims in CLS Bank failed on all counts.
Hence, the song remains the same. A claim cannot pre-empt an abstract idea. And yet, defining that point — or boundary line — where an abstract idea has been preempted continues to be the Achilles heel in Mayo, CLS Bank and other Court jurisprudence on this matter.
Where to draw that preemption defining boundary line, within which a claim is patent eligible (i.e., does not preempt the abstract idea), remains a fuzzy logic in jurisprudence on patent eligibility because the Court continues to define that preemption boundary line in the negative. In other words, the Court continues to define criteria on what makes a claim not patent eligible, rather than defining what criteria does make a claim patent eligible.
See, for example, “transformation into a patent-eligible application requires ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’” Id. at 11. The claims here do no more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer. Id. at 14. “The method claims do not, for example, purport to improve the functioning of the computer itself. Id. at 15.
This negative guidance continues a pattern provided by the Court in Benson (simply implementing a mathematical principle on a physical machine, namely a computer, is not a patentable application of that principle (Benson, at 64) and in Flook (We rejected the argument that “implement[ing] a principle in some specific fashion” will “automatically fall within the patentable subject matter of §101.” Flook, at 593.) Op at 12.
Only in Diehr did the Court provide criteria on what software is patent eligible in the affirmative. As explained by the CLS Bank Court ”[t]he claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer. Op. at 13. But even there, the Diehr Court employed a fuzzy logic in making that determination. (“When a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”) Diehr, at 193.
The jurisprudence of stating the criteria for patent eligibility in the negative – e.g., in terms of what is not patent eligible rather than stating what is patent eligible – provides indefinite guidance to patent practitioners because it excludes what claims are not patent eligible rather than distinctly and particularly pointing out what criteria make a claim patent eligible. Perhaps the Court itself is uncertain about the criteria that makes a claim patent eligible and so the Court can speak only to what it is not. “I Know It When I See It”
Technology has leapfrogged the jurisprudence of the Court on the issue of software patent eligibility. The patent community cannot wait another period of years until Jurists are provided with the perfect case where the claims fall just inside the boundary line of patent eligibility and on with which the Jurists can opine with confidence “this is why the claims that apply an abstract concept are patent eligible.” The patent community needs clear guidance now.
Seeking a preemption-defining boundary
The “physical and virtual links test,” as we have described it since Bilski, predicts where that preemption point – or boundary line – may be drawn, with clarity not yet provided by the Court.
The “physical and virtual links test” provides a predictable basis for whether or not software data manipulates something real, that is to say, physical or tangible objects. According to this test, the manipulation can occur physically, as in Diehr (e.g., the electrical data or signals generated by the software instructions are manipulating in this case physical [not tangible] objects of a “mold” and a “press” through the steps of “loading of the mold” and “opening of the press”); or virtually, as in Morse, by manipulating data that represents physical or tangible objects (e.g., opening or closing of a physical telegraphic switch or manipulation of tangible sound, light, etc., such as on-off tones, lights, or clicks in telegraphic use).
The patent community needs a predictor of the patent eligibility of software and the physical and virtual links test does just that by focusing on what the per curium Federal Circuit court astutely explained as “[t]he § 101 preemption analysis centers on the practical, real-world effects of the claim” citing Mayo. Op., at 20
The “practical, real-world effects” of the claim lie in the claim having manipulated something real; which after all is what the physical and virtual links test is all about
About Paul R. Juhasz