The U.S. Court of Appeals for the Federal Circuit, in AatrixSoftware, Inc. v. Green Shades Software, Inc., recently denied a rehearing en
banc concerning two cases that may make it more difficult to dismiss a
claim challenged for lack of patent eligible subject matter under the
Alice/Mayo test because of factual issues.
This leaves intact the ability of counsel to raise factual issues which
may avoid early resolution of a patent infringement action on patent eligible subject matter grounds. Notably, Judges Lourie and Newman, both of
whom have graduate degrees in technical fields and are very experienced
members of the Federal Circuit, requested in a concurring opinion that the U.S.
Congress revisit patent eligible subject matter, particularly in light of the
Alice/Mayo test and the U.S. Supreme Court “abstract idea gloss.” Judge Lourie states:
The case before us involves the abstract idea exception to
the statute. Abstract ideas indeed
should not be subject to patent. They
are products of the mind, mental steps, not capable of being controlled by
others, regardless what a statute or patent claim might say. Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“[M]ental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.”). No one should be inhibited from thinking by a
patent. See Letter from Thomas Jefferson
to Isaac McPherson (Aug. 13, 1813) (“[I]f nature has made any one thing less
susceptible, than all others, of exclusive property, it is the action of the
thinking power called an Idea.”). Thus,
many brilliant and unconventional ideas must be beyond patenting simply because
they are “only” ideas, which cannot be monopolized. Moreover such a patent would be
unenforceable. Who knows what people are
thinking?
But why should there be a step two in an abstract idea
analysis at all? If a method is entirely
abstract, is it no less abstract because it contains an inventive step? And, if a claim recites “something more,” an
“inventive” physical or technological step, it is not an abstract idea, and can
be examined under established patentability provisions such as §§ 102 and
103. Step two’s prohibition on
identifying the something more from “computer functions [that] are
‘well-understood, routine, conventional activit[ies]’ previously known to the
industry,” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2359
(2014) (alteration in original) (quoting Mayo, 566 U.S. at 73), is essentially
a §§ 102 and 103 inquiry. Section 101
does not need a two-step analysis to determine whether an idea is
abstract. I therefore believe that §
101 requires further authoritative treatment.
Thinking further concerning § 101, but beyond these cases, steps that
utilize natural processes, as all mechanical, chemical, and biological steps
do, should be patent-eligible, provided they meet the other tests of the
statute, including novelty, nonobviousness, and written description. A claim to a natural process itself should
not be patentable, not least because it lacks novelty, but also because natural
processes should be available to all.
But claims to using such processes should not be barred at the threshold
of a patentability analysis by being considered natural laws, as a method that
utilizes a natural law is not itself a natural law.
Judge Lourie also criticized the
U.S. Supreme Court’s decision in Myriad Genetics:
[F]inding, isolating, and purifying such products are genuine
acts of inventiveness, which should be incentivized and rewarded by
patents. We are all aware of the need
for new antibiotics because bacteria have become resistant to our existing
products. Nature, including soil and
plants, is a fertile possible source of new antibiotics, but there will be much
scientific work to be done to find or discover, isolate, and purify any such
products before they can be useful to us.
Industry should not be deprived of the incentive to develop such
products that a patent creates. But,
while they are part of the same patent-eligibility problems we face, these
specific issues are not in the cases before us. Accordingly, I concur in the decision of the
court not to rehear this § 101 case en banc.
Even if it was decided wrongly, which I doubt, it would not work us out
of the current § 101 dilemma. In fact,
it digs the hole deeper by further complicating the § 101 analysis. Resolution of patent-eligibility issues
requires higher intervention, hopefully with ideas reflective of the best
thinking that can be brought to bear on the subject.
There are numerous proposals for changing patent eligible
subject matter before the U.S. Congress, for example, see the AIPLA proposal,
here.
