Today’s Supreme Court decision in Alice Corp. v. CLS Bank shows that we’ve basically gone nowhere since the 2010 Bilski decision.
Alice says simply: “Apply the two-step approach of Mayo,” which in turn simply asserts the holding in Bilski in two parts: “does the claim include an abstract idea?” and “does the claim recite more than just that abstract idea?”
The same two problems apply to Alice that applied to Mayo and Bilski:
1) Still no definition of an “abstract idea.”
Alice continues the courts’ trend of looking at a claim and saying, “This is basically this simple concept.” This tactic discards the entire concept of claims as a very precise, nuanced, carefully chosen description of an invention. Under this rationale, there’s no need to scrutinize the claims, to figure out why it was structured that way, to figure out whether the approach is new. You just draw a big circle around a bunch of words in the claim and say, “All of this is basically (x),” and then you can summarily dismiss all of it as having patentable value.
Like other Supreme Court cases, Alice drops some hints as to factors that might be relevant – e.g.: “Viewed as a whole, these method claims simply recite the concept of intermediated settlement as performed by a generic computer. They do not, for example, purport to improve the functioning of the computer itself or effect any improvement in any other technology or technical field.”
This rationale is almost word-for-word identical to how EPO practitioners describe the “technical effect” requirement. (As an aside, the phrase “effect any improvement in any technology” is a rather tortured way of avoiding the phrase “technical effect.” I don’t know why the Supreme Court doesn’t just say that, and why they kind of dodged the term “technical effect,” other than wanting to appear as a leader rather than a follower in this area of law.)
Practical takeaway message: Every single case where the claims are not purely structural needs to have a “technical effects” section in the detailed description that states, in clear bullet-point manner, a set of technical effects that are achievable by the claimed invention.
2) Still no appreciation of the fuzzy line between “idea” and “implementation,” which invites circular reasoning.
At first glance, the approach decided in Mayo and Alice looks clear:
Step 1: Identify the abstract idea covered by the claim, and identify the portions of the claim reciting that abstract idea.
Step 2: Look at the remainder of the claim, and decide whether it adds “something more” than the abstract idea.
(As an aside, I can’t imagine a more vague, empty, and foreboding notion in jurisprudence than proposing “is there something more?” as a significant question. The fact that the Supreme Court is seriously proposing such a meaningless phrase as a significant legal consideration, let alone as a critical legal test of patentability, should make all of us break out into hives.)
The two-step test is, to steal from Huxley, “a beautiful theory killed by an ugly fact” – that fact being the inherent fuzziness of the line between abstract idea and implementation. There’s no distinction or discussion in Alice (or Mayo, or Bilski, or anywhere else) of how to distinguish between “a general-purpose computer implementing an abstract idea” and “the application of an abstract idea to a specific problem.”
On the one hand, Alice reviews Diehr with approval, and notes that “the temperature measurements were fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation,” which “transformed the process into an inventive application of the formula.” And yet, Alice also approves Bilski because “one of the claims in Bilski reduced hedging to a mathematical formula, but the Court did not assign any special significance to that fact.” And in invalidating Alice’s patent, the Court generally characterizes every step of the method as something “routine” – “electronic record-keeping, “or “obtaining data,” or “adjusting account balances” – and then summarily dismisses all of them together as “conventional activitiy of a computer.” Beyond providing absolutely no guidance, Alice doesn’t even recognize that these decisions may be at odds.
So how are we to determine which implementation details constitute “something more,” and which constitute merely an expression of the “abstract idea?” What’s to prevent an examiner or court from summarizing any claim as “basically” an abstract idea, characterizing all of the elements as merely an expression of that idea (no matter how specific or detailed), and then advancing to the rather meaningless step 2: “once we’ve chosen to ignore the entirety of the claim, we find that there’s ‘nothing more’ in it?”
The severity of the problem is demonstrated by applying Alice to Diamond v. Diehr: the very aspect of Diehr’s claims that Alice cites as imparting patentability – “recalculating the cure time by using a mathematical equation” – can just as easily be dismissed by the rationale of Alice as the “conventional activity” of a computer in “performing math.” The only reason why any court, presented today with Diehr’s claims, would not invalidate Diehr’s patent is that the Supreme Court has repeatedly upheld that particular claim. Nothing more concrete can be stated than that.
But none of this is new. It’s the very same problem created by Bilski, and tacitly reinforced by every decision since then. A massive void exists between “abstract concept” and “application of that idea to a specific problem,” and no one in our entire field can state a sure-fire way of bridging it. Alice changes nothing in this regard; it simply shines a spotlight into the massive void of patentability jurisprudence that Bilski opened.
I suppose that the small consolation is that we’ve been contending with this void of patentability jurisprudence since 2010, and the patent system hasn’t collapsed in flames yet.