Breyer's Reinvention of the 'Inventive Concept'

By: Robert R. Sachs

In Prometheus, Justice Breyer reintroduced the phrase “inventive concept” as it first appeared in Flook. “The Court’s precedents,” Breyer wrote:

Insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself. Flook, supra, at 594. Mayo, 132 S.Ct. 1289, 1294 (slip op. at 3).

Judge Lourie, in his opinion in CLS Bank Int’l v. Alice Corp., elaborated on this view of Flook, saying:


An “inventive concept” in the § 101 context refers to a genuine human contribution to the claimed subject matter. “The underlying notion is that a scientific principle . . . reveals a relationship that has always existed.” Flook, 437 U.S. at 593 n.15. From that perspective, a person cannot truly “invent” an abstract idea or scientific truth. He or she can discover it, but not invent it. Accordingly, an “inventive concept” under § 101—in contrast to whatever fundamental concept is also represented in the claim—must be “a product of human ingenuity.” See Chakrabarty, 447 U.S. at 309.

Breyer and various judges of the Federal Circuit have used the “inventive concept” phrase to support the theory that some level of qualitative assessment of the “inventiveness” of the invention must be performed as part of the §101 analysis. That is, “inventiveness” or “human ingenuity” becomes part of a test for patent eligibility. Prometheus’ claims failed this test because they added only “well understood, routine, conventional activity, previously engaged in by those in the field” to the (alleged) law of nature. Prometheus at 4. Similarly, in CLS, Lourie argued that Alice’s claims were merely “generic computer automation” which “evinces little human contribution.” Lourie slip op. at 26.

However, a close reading of Flook indicates that the Supreme Court was not using the term “inventive concept” as a test. Rather, the Court was using this phrase as a label—a shorthand—for referring to the subject of the patent eligibility inquiry. Stevens in Flook states:

Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application. Flook, supra at 594.

This usage of “inventive concept” is not an evaluation of whether the claim is “inventive” in regards to convention or routine, but rather a framing analysis to identify the target of the § 101 inquiry, to find the thing that can “support a patent.” Once the mathematical algorithm was removed from the claim, then what is left over is judged, not for conventionality, etc., but for patent eligibility directly. Stevens again makes this perfectly clear in his dissent in Diehr: “Proper analysis, therefore, must start with an understanding of what the inventor claims to have discovered—or, phrased somewhat differently—what he considers his inventive concept to be.” Diehr, 450 U.S. 175, 213 (emphasis added). Stevens is not using “inventive concept” as a qualitative assessment in and of itself, he is not looking for “human contribution” or “ingenuity;” rather, he is articulating that the process begins with identifying that which the inventor considered to be his invention. So identified, the concept is then evaluated for patent eligibility.

Stevens makes perfectly clear that the Court was not engaging in any form of §102 analysis: “In the § 101 analysis, we must assume that the sequence of steps in this programming method is novel, unobvious, and useful,” and he criticized the majority in Diehr because “it fails to understand or completely disregards the distinction between the subject matter of what the inventor claims to have discovered—the § 101 issue—and the question of whether that claimed discovery is in fact novel—the § 102 issue.” Diehr, 450 U.S. 175, 211-213 (dissent). Thus, Stevens’ use of “inventive concept” is purely to identify the subject matter of the inquiry—not a conclusion about its conventionality. Rather, Stevens resorts to §101 to decide whether the identified subject matter qualifies as the kind of subject matter that can be patented. Breyer, however, did not strictly follow Stevens’ logic. Whereas Stevens required that the steps of the method claim be assumed to be novel when conducting the § 101 analysis, Breyer instead rejected Prometheus’ claim precisely because he viewed the steps as entirely conventional.

Judge Lourie attempted to rehabilitate Breyer’s use of the “inventive concept” and his “conventionality” analysis within his own “integrated approach,” which focuses on whether there are “meaningful limitations” in the claim so that it does not preempt all practical uses of an abstract idea (or similarly, law of nature or natural phenomena). First, Breyer recasts the “inventive concept” as simply another way of determining whether there are “meaningful limitations” in the claims: “The requirement for substantive claim limitations beyond the mere recitation of a disembodied fundamental concept has “sometimes” been referred to as an “inventive concept.” See Mayo, 132 S. Ct. at 1294 (citing Flook, 437 U.S. at 594).” Shoehorning the “inventive concept” into his version of the preemption test enables Lourie to give no less than three different reasons why the “conventional” and “routine” steps in Prometheus’ claim of administrating a manmade drug to a patient and testing the patient’s blood were insufficient for patent eligibility: (1) they were necessary to every practical use of the natural law and thus did not actually limit the claim; (2) they were “token” or “trivial” limitations comparable to “insignificant post-solution activity;” and (3) they were field-of-use limitations since the claim as written still preempted “all uses” of the fundamental concept.

In medieval times, alchemists often reasoned about the properties of nature by analogical reason that like begets like. Thus, the sun was made of gold because it was golden in color; Saturn was made of lead because it moved so slowly it must be heavy, and lead was the heaviest of substances; Mars was a violent planet because it was red in color, and red was the color of anger, etc. The more metaphors and metonyms that could be generated for given correspondence, the more “true” the relationship was deemed to be. In our context, analogical and metaphorical reasoning continues to pile up, with old tests being reinterpreted in new contexts, and new tests being explained by restatements of old ones.

Thus, Breyer refashions Stevens’ inventive concept from an analytical tool into a qualitative test and brings in conventionality considerations that Stevens rejected in Flook. Lourie can take Benson’s preemption focus as the primary test for § 101 (contradicting cases like The Telephone Cases, where preemption was essentially seen as evidence of an important invention) and map that onto identifying “meaningful limitations,” into which the prohibitions on field-of-use limitations, pre- and post-solution activity, and conventional routine activity are shuffled, while at the same time equating a “meaningful limitation” to an “inventive concept,” which is a “contribution” of “human ingenuity.” This is one mean feat of alchemy.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.