United States: Our Attention Is Now Directed To: "Directed To"

My last post focused on definitions for the terms "well-understood," "routine," and "conventional"—or W-URC—from the subject matter eligibility test set forth in Mayo and further described in Alice. Those terms relate to one part of the current test only. It seems fair to consider another important term in the test, one that's considered before even reaching the W-URC issue: Whether the claim is "directed to" patent-ineligible subject matter, e.g., a law of nature.

I was particularly reminded of the need to address this when reading last week's Federal Circuit opinions in Vanda Pharmaceuticals v. West-Ward Pharmaceuticals. Not only did Judge Prost pen a stark dissent from Judge Lourie's opinion for the court, but both the majority and dissenting opinions focused on this phrase over and over. The opinion of the court referenced "directed to" 17 times and the dissent used it 10 times. Further, the phrase was used either in italics or quotes five times, emphasizing the importance of the term. So it's worthwhile to give a look to what "directed to" means.

The term is not one that dictionary definitions help with very much. In the relevant uses, we find dictionaries suggesting synonymous phrases such as "aim," "target," "point at," and "focus on." What is interesting is the observation that "directed at" suggests a single target (and nothing else) while "directed towards" is thought of as being aimed in the direction of some particular thing and perhaps other things as well. This is potentially a huge difference in our context, as the discussion of the cases below will show.

Mayo and Alice

It bears noting that although the overall test is often referred to as the Mayo/Alice test, Mayo did not actually use this term at all. That said, Mayo certainly addressed the concept. Justice Breyer, delivering the opinion for a unanimous Court, said "Prometheus' patents set forth laws of nature...." Similarly, "And so a patent that simply describes that relation sets forth a natural law." The opinion discussed Einstein and Archimedes to establish that, "A patent, for example, could not simply recite a law of nature and then add the instruction 'apply the law.'" (emphasis in all three mine) 

Though Mayo did not use the "directed to" language, it nonetheless helps inform our understanding of what "directed to" does not mean. Mayo famously reminded us that, "The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law.  For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo is thought of as the genesis of the two-step test because it stated, "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." So for the part we're looking at presently, Mayo uses the term "reciting" rather than "directed to."

It was in Alice that the phrase "directed to" was really applied in this context. The en banc Federal Circuit opinions in that case used this phrase in various ways, recalling that the Supreme Court in Parker v. Flook held, "[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory." The Supreme Court then followed up saying that Mayo provided the "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts." Unfortunately, the Supreme Court in Alice did not go on to detail what it meant by "directed to" in this context. In applying the test, the Court explained that the claims are "drawn to" a long prevalent fundamental economic concept, i.e., intermediated settlement. Justice Thomas, delivering the opinion for a unanimous Court, went to the trouble of expressly admitting that the Court would "not labor to delimit the precise contours of the 'abstract ideas' category in this case," but the term "directed to" did not even warrant such a disclaimer. 

Just as subsequent courts have had great difficulty delimiting the precise contours of "abstract ideas," the term "directed to" ends up being quite uncertain yet extremely important.

Internet Patents

Only a year after the Alice opinion, the Federal Circuit observed in Internet Patents v. Active Network that, "Recently, the courts have focused on the patent eligibility of 'abstract ideas,' for precision has been elusive in defining an all-purpose boundary between the abstract and the concrete, leaving innovators and competitors uncertain as to their legal rights." The Federal Circuit understood that, "Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." So it's the "character as a whole" of the "claims ... considered in their entirety" that matters, but are we given guidance as to what a claim's "character as a whole" might be? The Federal Circuit said that in Alice the Supreme Court "distilled [the] ineligible concept from the claims as a whole...." Again, what are the distillation instructions? The Federal Circuit didn't provide much help: "We start by ascertaining the basic character of the subject matter...." In Internet Patents, the patent itself described its "most important aspect" and that's what the court went with, finding the character to be the abstract idea of "retaining information in the navigation of online forms." Unfortunately, there was no further explication of any of the terms used: "directed to," "character as a whole," or "distilled."

Enfish

The following year, the Federal Circuit again considered this phrase, but this time made an effort to more specifically bound it. In Enfish, the court emphasized that this first step of the Mayo/Alice inquiry was important, "i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The 'directed to' inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world." The Enfish court held that the inquiry before it involved "whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." So the Enfish court used the "focus" of the claims—again a rather squishy concept. The court helped provide some clarity by chastising Microsoft for its proposed application of step one of the test, saying that "describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule." While emphasizing the importance of the claim language in this regard, the Federal Circuit said that its conclusion was "bolstered by the specification's teachings," so it seems that even this panel thought it acceptable to look at least a bit beyond the claims.

Interestingly, the Enfish opinion provides several different statements of what the claims in the patent at issue are directed to:

  • "Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database." (italics original)
  • Enfish is perhaps most famous in rejecting the notion that "the invention's ability to run on a general-purpose computer dooms the claims" because unlike various other cited cases the court discussed, "the claims here are directed to an improvement in the functioning of a computer."
  • "[T]he claims are directed to a specific implementation of a solution to a problem in the software arts."

Those are three very different statements of what the claims are directed to, which should underscore the fact that there is very likely not one single answer here (think "directed towards" rather than "directed at"). Indeed, the Enfish panel itself observed that, "We recognize that, in other cases involving computer-related claims, there may be close calls about how to characterize what the claims are directed to." 

Vanda and Rapid Litigation Management

Last week's Vanda case was not in fact the first in which the Federal Circuit opinions elevated the term "directed to" by repeatedly flanking it with quotation marks or embellishing it with italics. Shortly after Enfish, the Federal Circuit decided Rapid Litigation Management, and the court's opinion there surrounded the term with quotation marks 10 separate times, apparently to underscore the term's importance (the court held the claims to be directed to a new, useful and accordingly patent-eligible laboratory technique). The court emphasized that the claims recited a "method of producing" and explained, "That one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim 'directed to' that natural ability." (emphasis original) Summing up, the court held, "At step one, therefore, it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is 'directed to.'" Again, while this helps in the determination of some cases, the extensive use of quotation marks falls far short of helping us understand what "directed to" actually means.

Clarification Please

Let's circle back now to our discussion of what the dictionaries said and whether "directed to" is non-exclusive (i.e., the aim can be toward multiple targets) as opposed to the suggestion that "directed at" means only one target. The most current Supreme Court authority (Alice) says the test is whether the claim is directed to patent-ineligible material. So if "directed to" allows multiple targets, it seems that only one such target needs to be non-statutory to potentially doom the patent. But if that's the case, then it seems insufficient for the court in cases such as Vanda and Enfish to identify a statutory target, since that still leaves open the possibility of other, non-statutory targets. In reality, it seems clear that neither the Supreme Court, nor the Federal Circuit, has really thought about this distinction. The fact remains that very subtle differences in how one thinks about the phrase "directed to" can be outcome-determinative, and we've not been provided with sufficient guidance as to how that phrase should be interpreted. The conclusion is the same as in my last post: such uncertainly allows result-oriented opinions that cannot readily lead to any meaningful settling of this fundamental issue. We should demand clarification from either the courts or Congress, since the viability of so many patents depends on what this phrase is understood to mean.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
12 Dec 2018, Other, California, United States

Fenwick Counsel Robert Brownstone is lead chair​ in this highly interactive colloquium will provide a deep understanding and practical advice regarding major e-discovery challenges facing organizations today.

21 Jan 2019, Speaking Engagement, California, United States

Now entering its fifth year, the Pocket Gamer Connects events series has grown to become the biggest and most influential mobile games conference in the west as well as th​e biggest games event overall in the UK and Helsinki.

8 Mar 2019, Conference, Austin, United States

Join the world’s largest gathering of creative professionals at the 2019 SXSW Conference & Festivals in Austin, Texas from March 8-17.

Similar Articles
Relevancy Powered by MondaqAI
Cadwalader, Wickersham & Taft LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Cadwalader, Wickersham & Taft LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions