United States: Patent-Eligibility Under 35 U.S.C. § 101: We Can't See The Forest Or The Trees

Last Updated: July 27 2018
Article by David M. Longo

Judge Plager wrote a compelling concurrence-in-part and dissent-in-part in Interval Licensing LLC v. AOL, Inc., Apple, Inc., Google LLC, Yahoo!, Inc. (Fed. Cir., July 20, 2018).  It rings yet another alarm concerning the wildfire of patent-eligibility (§ 101) jurisprudence.  This jurisprudence has grown from the spark of searching among individual trees for a definition of an "abstract idea" to the conflagration that is the "doctrine" of searching for the meaning of an "inventive concept."  It now threatens to consume much of an otherwise wide forest of patent law, as it "does not distinguish good from ill in any coherent sense, and thus does not serve well either patent law or the public."  Interval, slip op. at 14 (Plager's opinion). 

Judge Plager paints a vivid picture of the "definitional morass" of "Alice Step 1:  Abstract Idea":  "An idea, whether abstract or not, is something that lives in the interstices of someone's brain..." and "can have an infinite range of abstractness."  Id. at 3, 4-5.  "[F]or example, compare "I have an idea—let's have hamburgers for dinner," with "I have an idea—I am going to invent how to make time go backwards.""  Id. at 5 (footnote omitted).  But this doesn't help us "pick the line where the articulation and explication of an idea is sufficiently concrete to be 'non-abstract,' but not so much as to be 'generic and conventional'."  Id.  The Federal Circuit's "decision-by-example" approach of looking to "what prior cases have contained, and which way they were decided," also fails to help.  Id. at 4, citing to Plager's majority opinion in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294-95 (Fed. Cir. 2016).  Instead, abstract ideas are "like the term 'obscenity,'" because "only the judges who have the final say in the matter can say with finality that they know it when they see it."  Interval at 6-7 (Plager's opinion).

Without silencing the alarm, Judge Plager delves into "Alice Step 2:  Inventive Concept."  He uses rhetorical puzzles to highlight pitfalls in considering whether patent claims determined to be abstract in Alice Step 1 "are not really abstract because they limit the abstractness by an 'inventive concept'" under Alice Step 2.  Id. at 7.  For example, "if a court, after reviewing challenged claims in light of their terminology and written description, determines the claims to be 'abstract' in Step 1, how can the same court be expected to determine on a second reading that the same claims have become 'un-abstract' via Step 2?  Could it be that an 'inventive concept' cannot exist until the court reads the patent at least one more time?  Perhaps courts cannot be expected to read the claims carefully enough the first time?"  Id. 

To clear the air, Judge Plager sends us to draw from the deep well of knowledge available from Judge Giles Rich's analogous writings on replacing the "vague concept of 'invention'" with the specific criteria set forth in § 103 (nonobviousness) of the 1952 Patent Act.  Id. at 7-8.  For example, Judge Rich "thought that the undefinable—truly abstract—concept of 'inventive concept' had been put into the dustbin of history by the specific criteria for ... non-obvious subject matter."  Id. at 8.  Yet for years after the 1952 Patent Act, Judge Rich "bemoaned the fact that ... some still used the meaningless [term] 'invention' or 'inventive requirement' phrase."  Id. at 9. 

Judge Plager's point unexpectedly hits us with the force of water spewing from a fire hydrant:  Judge Rich's writings are equally applicable in the context of the § 101 conundrum today as they were for § 103 following the 1952 Patent Act.  As we see today with the court-derived "doctrine" of searching for the meaning of an "inventive concept" under § 101, "the doctrine persists while the facts out of which it arose are forgotten.  The opinion in [a] first case is quoted to the judge in a second and he does an opinion embroidering on it, his words being quoted in turn and reembroidered and so on."  Giles S. Rich, "The Vague Concept of "Invention" as Replaced by Sec. 35 U.S.C. § 103 of the 1952 Patent Act," 46 J. Pat. Off. Soc'y 855, 860 (Dec. 1964).  See also Interval at 8 (Plager's opinion).  Just as the "idea of a necessarily underlying 'inventive concept' proved unworkable," our modern notion of "abstract idea" is also unworkable:  it too "provide[s] no discernable boundaries for decision-making in specific cases, resulting in an incoherent legal rule that [leads] to arbitrary outcomes."  Id. at 10. 

In a final section entitled "The Emperor Has No Clothes," Judge Plager explains that his "purpose in this discussion is not to critique the Court's handiwork, but rather to highlight the number of unsettled matters as well as the fundamental problems that inhere in this formulation of 'abstract ideas.'"  Id.  He notes that "[t]here is almost universal criticism among commentators and academicians that the 'abstract idea' idea has created havoc in the patent law."  Id. at 11.  This havoc has left us "with a process for finding abstract ideas that involves two redundant steps and culminates with a search for a concept—inventiveness—that some 65 years or so ago was determined by Congress to be too elusive to be fruitful.  Is it any wonder that the results of this process are less than satisfactory?"  Id. at 14. 

Judge Plager says we shouldn't fault the Supreme Court "for trying to find some way to decide what is an abstract idea, or at the least for trying to find a way to decide the question."  Id.  Nor should we fault the Federal Circuit "for doing its best to honor the Supreme Court's formula, even when the results demonstrated that the [Alice] test did not produce coherent, readily understandable, replicable, and demonstrably just outcomes."  Id. 

But his suggestions for putting out the fire seem more like a plea for a bucket brigade from the patent community.  For example, he is pessimistic on a judicial solution, as "there is no particular incentive for the Supreme Court to immerse itself again in this intellectual morass."  Id. at 15.  He is likewise pessimistic on a legislative solution, as "waiting for that may be the ultimate test of patience."  Id.  Instead, Judge Plager suggests that district courts first address other statutory issues, namely in §§ 102, 103, and 112—reversing "the current notion, held by some, that a determination of patent eligibility under § 101 is necessarily the first thing to be decided in every case."  Id.  But this "raises somewhat more difficult questions" as to whether the Federal Circuit "should take the initiative and instruct the trial courts to follow such a procedure."  Id. at 16.  Rather, the Federal Circuit "should have little difficulty with respecting a district court's decision about how best to manage its own docket."  Id. at 17. 

Judge Plager concludes with an homage to Hans Christian Andersen:  "This emperor clearly has no clothes; we need not wait for our children to tell us this.  The legitimate expectations of the innovation community, as well as basic notions of fairness and due process, compel us to address this § 101 conundrum."  Id. (footnote omitted).  Now, we can all see the conflagration.  The smoke no longer obscures our view of the forest or of the trees burning within it.  We are being called out for sitting in awkward silence waiting for someone else to yell "fire" when we should be grabbing buckets of water. 

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