Plager calls to overturn current patent eligibility analysis

The holding of Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2018) is similar to Electric Power Group, LLC v. Alstom (Fed. Cir. 2016).  In these cases, the courts invalidated the patent as being directed to an abstract idea for claiming an end result and not the how to achieving it.  In Interval Licensing LLC, the dissent’s opinion is much more interesting.

1. He explains the frustration over the current legal analytical framework (Alice/Mayo two step format) for determining patent eligibility.
2. He suggests that the “inventive concept” analysis was replaced with the obviousness analysis in the 1952 Patent Act.
3. He gives specific next steps to fix the current problems with Alice/Mayo two step analysis.

1.  Frustration over patent eligible subject matter laws

Interval Licensing LLC v. AOL, Inc. is significant for the dissenting opinion.  The dissenting opinion explains the frustration at the Federal Circuit level over the current Alice/Mayo framework.

Judge Plager (dissent) explains that he and at least two other judges on the Federal Circuit have gone on record to voice their frustration with the current Alice/Mayo analytical framework for deciding patent eligible subject matter.  Judge Richard Linn in Smart Systems Innovations, LLC v. Chicago Transit Authority and Judge Alan Lourie in Berkheimer v. HP Inc.  He additionally indicated that there are more judges that are frustrated but only behind the scenes.  Judge Plager states that:

“I do not mean to suggest that they are the only two such judges on the court – to my knowledge, other than myself, they are the only two who have gone on record in such clear terms regarding the law of ‘abstract ideas.’”

Judge Plager’s main objection appears to be that the current legal framework for deciding which patents are patent eligible does not give confidence that the outcome is necessarily correct and impossible to know with any certainty whether the invention is or is not patent eligible.  He wants a just result and a clear framework that is more repeatable.  That is what others want but are not getting with the current Alice/Mayo framework.

Commentators have recognized the current problems with our Section 101 jurisprudence.  See comments by former head of the USPTO has called for abolishing Section 101.  See also USPTO Report on Patent Eligible Subject Matter.

For Judge Plager, the problem exists because abstractness is just one of degree. It is impossible to tell when an abstract idea turns into a concrete idea.  He gives an example where two statements are both abstract but one is more abstract than the other.  He argues that the statement “let’s have hamburgers for dinner” is less abstract compared to “I have an idea-I am going to invent how to make time go backwards.”  He rhetorically asks:

• How much abstractness is a function of concreteness?
• How do we pick the line where the articulation and explication of an idea is sufficiently concrete to be ‘non-abstract,’ but not such much as to be ‘generic and conventional?’
• Does it help to phrase the notion as the difference between claiming a desired result and claiming how to produce that same result?
• Or are we just substituting one set of vague notions for the other, with the same line-drawing problem?

Another source of frustration is the current method of comparing your case with other similar cases to determine patent eligibility.  Why? He states that “’Abstract ideas,’ like the term ‘obscenity,’ may provide a cultural consensus in a given instance regarding whether a past event qualifies, but it fails to provide the kind of specificity and clarity that makes it useful for future prediction of outcome.”

2.  Inventive concept was abolished long ago with the advent of the nonobviousness requirement

On page 7 of the dissenting opinion, importantly, Judge Plager explained the history of 35 USC 103 (i.e., Section 103) and how it relates to the current analysis for determining patent eligibility.   Section 103 is a statutory requirement that the claimed invention must be nonobvious in light of the prior art or existing technology. The dissenting opinion suggests that historically the “inventive concept” analysis was replaced by the nonobviousness requirement.

The dissenting opinion explained that before enactment of the 1952 Patent Act, nonobviousness was not a requirement to secure a patent.  During this time, the court had injected a “requirement for invention” to secure a patent.  For 100 years prior, the courts opined on what did and did not amount to “invention” which was not very fruitful.  At the end, the courts concluded that “’invention’ resulted from the exercise of the ‘inventive faculties’ and other circular reasonings.”  With the enactment of the 1952 Patent Act, Congress had made nonobviousness a requirement to secure a patent.  Later, a famous judge, namely, Judge Rich shortly thereafter had written about the 1952 Patent Act.  He wrote:

“that when 103 has been complied with, there is no further and different requirement called ‘invention’; that compliance with 103 is the policy judgment of Congress on how to bring the invention within the Constitutional purpose.” Giles S. Rich, The Vague Concept of “Invention” as Replaced by Sec. 103 of the 1952 Patent Act, 46 J. Pat. Off. Soc’y 855 (1964).

Before the 1952 Act, the “requirement for invention” had caused problems for the court.  Judge Plager suggests that the current “inventive concept” requirement in the Alice/Mayo framework is just the “requirement for invention” but in different words.  He suggests that the current nonobviousness analysis can do the work to ferret out and exclude abstract ideas that the “inventive concept” step in the Alice/Mayo framework is trying to do.

3.  Next steps

Judge Plager reaches out to the Supreme Court.  He asks them to abolish the abstract idea rules.  For the district courts, he suggests that they analyze 102 (novelty), 103 (obviousness) and 112 (enablement and written description) before analyzing 101 (patent eligibility).  Lastly, he asks Congress for help in resolving this issue.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.