What is an Abstract Idea, Really?

My daily feeds sent me to this great Patently-O article guest-written by U.C. Hastings professor of patent law Jeffery Lefstin about the recent developments in 35 U.S.C. § 101 case law.

Here's a quick introduction for those who don't understand the specific issues behind the parade of section 101, Alice v. CLS, Bilski v. Kappos, Mayo v. Prometheus, and how it all ties together, read this article on historical cases regarding patent eligibility.

As a result, software people like myself end up wringing our hands every time a 101 challenge goes to court. It's not because we think it will end software patents as a matter of law: most of Congress and the Supreme Court see the value in software and the power of the United States in the software industry, both as a buyer and seller. It's more because we think that a weak, dysfunctional, unpredictable system of software patents is worse than no system at all. It's because of our failure to produce an easily-comprehensible, predictable, non-black-boxed framework by which a patent professional can bring a software application before a patentee and say: "YES, patentable" or "NO, not patentable", rather than the current answer of "It looks like it will probably be okay but knock on wood". As I heard Gene Quinn comment at the 2015 ABA-IPL Spring Conference: The current jurisprudence smacks of "I'll know it when I see it".

There's been a growing chorus of voices, notably many of the authors including Eric Guttag at IPWatchdog, Iain Cunningham and Tom Vigdal on Scotch and Patents, and more, who kind of dig into the proverbial sausage stuffer and figure out that Eligibility-wurst is really made of three ingredients:

  • Non-novel or obvious patents that should never have been issued and would never be patentable under 102/103;

  • A period of torpor, that the USPTO is still recovering from, where these patents, largely on software, were issued without the usual rigors of examination;

  • A litigation process that can incur millions in legal fees just to reach the combined question of law and fact under 102/103 to invalidate the patent.

And that somewhere along the way, Courts discovered that 101 could serve as a stopgap to the problem of abusive litigation (e.g.: patent trolls). Why? Eligibility under 101 is a question of law. That means that 101 can be resolved without any discovery, meaning no ridiculous billing, meaning that a defendant who may eventually be determined not to infringe will have much greater leverage to keep from settling with an aggressive plaintiff with an overbroad patent.

However, the problem that arises is that there is no test. I think Cunningham and Vigdal put it best in Episode #6 of Scotch and Patents (listen here): When the best patent litigator in the world has to throw in every argument made over the past 250 years in an oral argument on Eligibility, something is not right. We don't have a pure-legal bright-line test, and it's what we sorely need.

The problem with 101 is that, on its face, it does not actually solve a problem that the rest of the patent law can't take care of. The way we should be thinking about this, in my opinion, is as follows:

  • You can't patent laws of nature - Because there is no constitutional basis for patenting things you did not invent. The case-law basis for not patenting "mere applications" of laws of nature can be solved by 102: the underlying law of nature was not invented, and the mere application was either known or obvious. If it wasn't, then technically the inventor has made a discovery.

  • You can't patent abstract ideas - For multiple reasons other than "because 101 says so": the most major of which is enablement under section 112. An abstract idea, by definition, shouldn't be able to be practiced, because once it's practiced it becomes a concrete process. Once it's a process, it should fall directly under the plain language of 101.

  • You can't patent the basic building blocks of an art - This is laid forth in 102 and 103. If it's obvious to a person of ordinary skill in the art, it's not patentable.

At the risk of making a manifesto, I think patent practitioners should obviously be keeping up with the state of the law but also thinking long and hard about what can be done to absorb 101 jurisprudence in the rest of the patent act, and to call on Congress and the Bar to come up with a real solution to abusive litigation.

What would I do? It's clear that what we want is a way to take patents which are clearly invalid and eliminate them prior to discovery. The AIA's new reexamination procedures were directed towards this goal, but what patent litigators are really clamoring for is a bright-line test that can invalidate a patent with certainty as a matter of law when even the lay district judge can see from the outset that the patent is invalid.

Why? Because the defendants, the victims of patent trolls, have shareholders who get uncomfortable in the face of high litigation bills. They have a business to run and they can't have millions in potential settlement dollars locked away.

Until this gets done, they have a laundry list of complaints:

  • Clients, junior associates, and non-software patent counsel have trouble wrapping their head around software's 101 jurisprudence;

  • Even the most intelligent and resourceful patent counsel will not be able to propose a stable chance of success in an Eligibility hearing;

  • Instead of strengthening good patents by separating out the chaff, 101 jurisprudence is eating away at the perceived legitimacy of all patents;

  • Clients are beginning to question whether a patent is right for them, which leads to less disclosure to the rest of the industry, less flexibility in monetizing the invention, more draconian treatment of employees with respect to non-compete and non-disclosure agreements, and much more;

  • Every day our patent act has not solved the abusive litigation problem is a day that we don't model the best possible patent system for the rest of the world. In a globalized economy, a harmonized intellectual property system is key, but you don't reach harmonization if the world's model intellectual property regime appears toxic to outsiders.

I wish I could say that there wouldn't be more 101 rants to come, but nobody would believe me.

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