By Lawrence Hoffman
In our most recent newsletter, and in a related post on our website, [see here, and here] I discussed the patent eligibility of business method claims, and three recent proposals for revision of §101 of the U.S. Patent Act to deal with what I called the “Alice mess”. In Part II of that article, in discussing State Street Bank & Trust Co. v. Signature Financial Group, I observed that the CAFC rejected the view of the District Court that the means plus function claims in suit were method claims because the application adequately disclosed “means” for performing the recited functions. In what I now think was a misguided effort at brevity, I suggested without discussion that the court in its decision could have stopped there.
I should say more about whether an apparatus claim could legitimately be treated as “directed to an abstract idea”. I will therefore correct that omission below. However, before you go further, I suggest you read the two parts of the website article if you have not done so.
In 1997, when State Street was decided, Gottschalk v. Benson represented the Supreme Court’s view of the abstract idea exception as it applied to software. But Benson only involved method claims. There certainly was no clear Supreme Court authority for excluding an apparatus claim from eligibility under the abstract idea exception. I think the court should have supported its decision to continue its analysis into the abstract idea exception and the business method non-exception.
Nor was there any Supreme Court precedent after State Street until 2014 when the Court decided Alice Corporation v. CLS Bank: The Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos, and Mayo Collaborative Services v. Prometheus Laboratories, Inc, cases all involved only in process claims.
However, by 2011, the CAFC began to look specifically at whether only process claims could be ineligible under the abstract idea exception. In CyberSource Corp. v. Retail Decisions, Inc., The court held that the abstract idea exception could apply to a claim for a computer readable medium containing program instructions for implementing a business method. And in its 2012 decision in CLS Bank International v. Alice Corp., (a predecessor to the infamous Alice decision), the CAFC held that “the format of the various method, system, and media claims asserted in that case “d[id] not change the patent eligibility analysis under § 101.
In Bancorp Services v. Sun Life the court decided, in 2012, on involved method, computer-readable media, and system claims. The court described the latter as tracking the content of the method and medium claims. Relying on Cybersource and CLS, the court found the system claims to be equivalent to the method claims.
In Alice, the Supreme Court explicitly held that a claim drawn to a computer system could be directed to an abstract idea. Alice involved method claims and also claims directed to a computer system and a computer readable medium bearing a program to implement the method. The parties agreed that the method and medium claims stood or fell together, but the Court ruled that the system was no more than a conventional computer programmed to implement the abstract idea.
That ruling highlights one of the problems inherent in the Alice test, i.e., what does it mean to say a claim is “directed to an abstract idea” and then to look at the claim for “something more”.
If you look in a dictionary for the word “directed”, you will find various definitions, even some related to law, but none really seems to fit the Court’s use of the word. The closest one I came across is “to concentrate or focus (one’s sight or attention, for example) on a particular object or activity” (See American Heritage® Dictionary of the English Language, Fifth Edition. Copyright © 2016.) That definition suggests “aimed” as a possible synonym and I think that’s what the Court had in mind. Note, however that at least once in the opinion the Court refers to the claims as “drawn to” an abstract idea.
Even if ”aimed at” and/or ”drawn to” are what the Court meant by “directed to”, it still does not make logical sense that an apparatus claim, computer or otherwise, can be aimed at an idea. And for certain, an apparatus claim is not “drawn to” an idea in the sense that patent attorneys use that phrase.
Sure, a programmed computer can be an obvious implementation of an idea, but we are not allowed to consider §103 issues under §101. Oh, I forgot, we are supposed to look for an ‘inventive concept’ under part 2 of the test.
Ok, sarcasm and linguistic fuzziness notwithstanding, what are we to take away from the Court’s holding that the computer system claims were directed to an abstract idea? In the Court’s words:
But what petitioner characterizes as specific hardware—a “data processing system” with a “communications controller” and “data storage unit,” for example, is purely functional and generic. Nearly every computer will include a “communications controller” and “data storage unit” capable of performing the basic calculation, storage, and transmission functions required by the method claims. As a result, none of the hardware recited by the system claims “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.
The best I can make of this is that the Court regarded the system claims to be method claims in apparatus claim clothing. In that case, a true apparatus claim would be one that is not just a dressed-up method claim. Such a claim should not be rejected or invalidated as directed to an abstract idea.
So, where are we today? Since Alice was decided, there have been several more cases in which claims to computer systems have been found to fail the first part of the Alice test. See, for example, Smartflash LLC v. Apple Inc., and Intellectual Ventures I, et al. v, Capital One Financial Corporation, et al.
Given the fact that a computer claim can be directed to an abstract idea, and the questionable guidance provided by the Alice test, the CAFC has had to find its own way. Citing its 2016 decision in Elec. Power Grp. v. Alstom S.A., in the Capital One case, the court stated, [U]nder the “abstract idea” step we evaluate “the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” To me, that seems like a practical solution.
In applying Step 2, the court, again citing Elec. Power, described its methodology as, “look[ing] with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.”
Applying that approach, the court held that the claims failed Step 2 because the “computer components as recited in the claims merely restated their individual functions”—i.e., organizing, mapping, identifying, defining, detecting, and modifying. In the court’s words, “[T]hat is to say, they merely describe the functions of the abstract idea itself, without particularity.” As in Alice itself, the court is saying that the claims are really process claims in apparatus claim clothing. In a way, that sidesteps the “directed to” issue, but it works in practice, allowing evaluation of a claim written in apparatus form under both steps of the Alice test.
About the author: Larry Hoffman has a B.S. in Electrical Engineering and Comp. Sci. from Massachusetts. Institute of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work has included preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.