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The Alice Trajectory

The Alice Trajectory published on 1 Comment on The Alice Trajectory

The Alice decision has been heralded as the “end of software patents,” the “end of business method patents,” the “end of patent trolls,” etc.

However, it is difficult to square such characterizations with the actual Alice opinion, which (1) centrally focuses on the absence of specific software in the patent claims; (2) refuses to state that business methods are categorically unpatentable; and (3) makes no reference to the business models of the litigants or the intended uses of the patents.

Rather, the Alice decision has forged a tool that enables the invalidation of patent claims, via dissection into a concept that can be dismissed as “abstract,” and a non-inventive remainder (i.e., implementation) that can be dismissed as “conventional” engineering.

Notably, this dissection technique can be applied irrespective of the field of technology; irrespective of novelty; irrespective of the scope and form of the claim. It can be applied irrespective of whether the patent is “good” or “bad,” and irrespective of how the patentee intends to use the patent. And the expansive manner in which the PTAB and various courts are applying the Alice decision is steadily moving patent law in this direction.

Since the Alice decision, reams of paper (thankfully, mostly virtual) have been spent analyzing the meaning of the term “abstract.” Of course, the Alice opinion is reticent on this point, describing “abstract” using flowery, empty phrases like “the basic tools of scientific and technical work”; “an idea of itself”; “a principle, a fundamental truth, an original cause, a motive”; and “the building blocks of human ingenuity.”

In the absence of any guidance in Alice for specific guidance about this critical determination, where else can we look?

  • Analogies to technologies in other cases. We can look to the following cases that evaluate a patent claim under the Alice decision, and try to find common trends that help us distinguish between “abstract” and non-“abstract” inventions. And there’s certainly an abundance of post-Alice case law about 35 USC 101:

    However, this review proves unhelpful for this analysis… because, together, these cases have a 100% invalidation rate under 35 USC 101. Today, over three months past the issuance of Alice v. CLS Bank, the courts have yet to find any patent that satisfies the rationale of Alice / Mayo.

    Moreover, these opinions often characterize the 101 eligibility decision as a broad reference to “good patents” and “bad patents,” before invariably casting the present patent into the latter bin. The overall trend looks like: “There are lots of patent-eligible inventions out there! – just not this one… or this one… or any of these…” And the longer this trend continues, the more the “patent-eligible invention” comes to resemble a mythical entity.

  • Rationale presented in other cases.

    If we don’t have an example of a patent-eligible claim, can we at least identify a common theme as to the reasons given for invalidation? Digging beneath the term “abstract,” is there a small set of factors or criteria cited in these cases that enable a consistent determination?

    To consider this question, I reviewed each of the above-listed cases, and pulled out the rationale cited by each court as the basis for holding the claims invalid.

    I present for consideration: Post-Alice Rationale for 35 USC 101 Ineligibility

    What can we make of this tangled mass of rationale?

    • Every rationale is conclusory. There is no objective analysis behind a statement that a claim is “abstract” or “preemptive” or “non-limiting”; the judges simply said it was so. One cannot present objective evidence of any argument for or against “the claim is preemptive,” any more than one can present objective evidence that “disco is tacky” or “curry is delicious.” Every statement is simply an empty opinion – and is susceptible only to the similarly empty opinions of the courts higher up the appeal chain.

    • Several of the rationale directly conflict:
      • “The claim doesn’t explain how an ordinary practitioner could use the concept, but only says, ‘apply the concept,'” vs. “The claim explains how an ordinary practitioner could use the concept, but those steps are purely conventional,” vs. “The claim explains a specific use of the concept, but the presence and novelty of such details are irrelevant to the basic 101 determination.”
      • “The claim doesn’t provide a field of use,” vs. “The claim provides a field of use that we consider non-limiting,” vs. “The claim identifies a field of use that has long been known to humans,” etc.
      • “The claim recites a function of a computer but does not recite an algorithm,” vs. “The claim recites a computer using a specific algorithm, but algorithms are math and therefore abstract.”

    • None of the rationale are based on the text of the Patent Act. Not one of the decisions cites legislative history, or a more specific teaching than section 101, to support its interpretation of the law. A few decisions make vage reference to “what the patent system was intended to protect,” but inevitably without citation to any source of such conjecture. Rather, the decisions invariably cite other court opinions. This is perhaps not surprising, as not one word of 35 USC 101 has changed since it was passed in 1952.

    • Many of the decisions cite economic policy reasons. Several judges cited their motivation to “promote innovation” or “protect human ingenuity” when holding some patents invalid. The most extreme version of this assertion is by CAFC Senior Judge Mayer: “The need for specificity sufficient to cabin the scope of an invention is particularly acute in the software arena, where claims tend to be exceedingly broad, development proceeds at a breakneck pace, and innovation often occurs despite the availability of patent protection rather than because of it.” 1

      These statements are troubling, because the judiciary has no authority, responsibility, or proficiency in the areas of economic policy and business.

      According to the federal separation of powers, judges have exactly one power: to apply the text of the law and the express intent of Congress to the facts of a lawsuit. They are not empowered to protect commerce or guide the economy. Judges are neither elected by the public, nor accountable to it, thanks to lifetime judicial appointments. Moreover, judges typically have no training or experience in business, economics, or technology – most have careers exclusively limited to law and academia. On what basis do judges assume the mantle of “protectors of the technology economy” in making sweeping economic policy decisions?

  • Technology fields. Can we assert that Alice only applies to patents in certain technical fields? Maybe “only” routine software, or “only” business methods?

    • First, the Alice rationale, on their face, are completely field-agnostic. The same rationale – dissecting a claim into “abstract” and “conventional”; finding a “preemptive effect”; providing “not enough detail” – can be readily applied to inventions in any technical field.

      While Alice certainly has been used more frequently to target patents involving business methods (buySAFE, CMG, Loyalty Conversion, EPC) and purely nominal computing inventions (DietGoal, Planet Bingo), there is no explicit or inherent limitation on its use in other fields. These frequencies seem more likely driven by litigation volume, and popular opinion (noting the frequency with which opinions applying Alice cite trendy views about “protecting the economy” types of rationale), than by any inherent limitation of the Alice rationale to these fields.

    • Second, Alice is already overrunning the borders between the categories of “business methods” and “routine software” to other areas. McRO involves a software technique with enough substance to warrant publication in an academic journal. Cote relates to semiconductor fabrication process control. Ex parte Jung and Genetic Tech, like Mayo and AMP v. Myriad, involve biotechnology and drug development – as did the pre-Alice case of In re Roslin, which is cited with approval in the USPTO’s guidelines to examiners for applying Alice in biotech.

    • Other factors suggest a broad use of Alice across all fields of technology. Anecdotal evidence indicates that USPTO examiners currently are using Alice in more than just business method, computer, and biotech-related art units – even in low-tech areas, such as basic mechanical products. Like the ubiquitous “inequitable conduct” threats in the 00’s, patent litigation will inevitably include a ubiquitous use of “patent-ineligible as per Alice” in every case going forward. And a future USPTO Talk post will discuss the widespread but misplaced confidence in perceived differences between claim styles and disclosure sufficiency among technology areas.

  • Structural vs. functional language. Can we at least limit Alice to the types of claims that involve functional language?

    There is certainly much rhetoric in the post-Alice decisions about the perceived overbreadth of functional claiming, and Alice is more likely to be used there. But Alice also has been used to invalidate claims that recite structural limitations, in a variety of ways:

    • Ignore such elements as “conventional elements of the field” that do not add “something more” to the claim.
    • Characterize such elements as indefinite: “a ‘database’ can be anything, including a locked file cabinet.” Cite thing like the “broadest reasonable interpretation” to interpret a plain term like a “nail” as also possibly encompassing a staple, or an adhesive (“Liquid Nails”), or a bolt.
    • Find a method claim invalid, and then characterize a structurally specified claim as covering “basically the same thing” in a nominally different form.

    These tactics do not depend on the form of the claim, as structural vs. functional. Indeed, arguments about the form of the claim are likely to provoke the type of response at the conclusion of Alice: “This Court has long warned against interpreting 101 ‘in ways that make patent eligibility depend simply on the draftsman’s art.’ The concept of patentable subject matter under 101 is not ‘like a nose of wax which may be turned and twisted in any direction…'”

In conclusion, the post-Alice cases identify a pattern of activity that provides a roadmap for invalidating any claim – irrespective of its technical field, claim style, or novelty:

  1. Look for the useful concept of the invention – the principle of physics, math, or engineering at the heart of the technology. Examples:
    • “Using a temperature differential to generate motion” (the Stirling engine).
    • “Converting ambient electromagnetic energy to stored energy” (inductive charging).
    • “Adapting a protein to match the binding site of a selected target” (drug development).

  2. Characterize the useful concept as an “abstract idea.” Bonus points for characterizing the “abstract idea” as a law of nature or science, or of characterizing the problem as “old.” (If there is no “useful concept,” invalidate the application as failing to disclose any utility of the invention.)
    • “The physical effects induced by temperature differences are simply the laws of thermodynamics.”
    • “Energy conversion from one type to another is a problem as old as civilization. Converting and storing electromagnetic energy is a long-familiar version: greenhouses transform sunlight into heat.”
    • “Proteins bind to one another according to well-established principles of molecular biology. The applicant did not invent the structure of this target binding site, nor the set of proteins that naturally bind to it according to the natural laws of molecular biology. The applicant merely first observed the structure of the binding site, as a basic scientific principle.”

  3. Draw a big circle around the elements of the claim that relate to the identified abstract concept, and draw a big, red X through them. Cite preemption as a problem, and dismiss any specific configuration as irrelevant to the 101 determination.
    • “The pistons and chambers of the recited engine provide only an expression of the abstract idea of converting temperature differences to motion. Allowing this patent would preempt any use of temperature differences to drive an engine.”
    • “The winding recited in the inductive charger is simply an expression of the abstract idea of inductive charging. While the claims recite a specific physical configuration of the winding, such details are relevant to novelty, not to patent eligibility under 101. Allowing this patent would preempt any use of wires in the context of inductive charging.”
    • “Having identified the shape of the binding site of a target, which naturally defines the class of proteins that may bind to it, the applicant’s invention takes the trivial step of reciting one such example. This is nothing more than a basic expression of the abstract idea of targeting this binding site using a protein having a suitable structure. Allowing this patent would preempt any protein that attaches to binding sites of the discovered shape.”

  4. Look at the remainder of the claims, and dismiss it as a collection of “conventional” steps that fail to provide “something more” than the abstract idea.
    • “Disregarding the pistons and cylinders of the engine, we are left only with conventional engine parts that are put together using routine mechanical engineering principles.”
    • “Other than the inductive windings, the claimed invention recites only known elements, such as rechargeable batteries, that the applicant did not invent.”
    • “If we discount the binding site, the remainder of the claimed protein is the routine work of pharmaceutical development.”
This moment is a turning point for patent law. Either the judiciary will acknowledge and grapple with the monstrosity that Alice is becoming; or the judiciary will stand idly by as Alice arbitrarily tramples the patent landscape. Passivity may even prompt Congress to step in and rescue the judiciary from its own ill-conceived mess… just as it did in 1952.

(There is one final source of authority from which we could glean some insight about Alice – about which, more later.)


  1. I/P Engine v. AOL.

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