Of Pies and Patent Eligibility: A Dialogue

By: Robert R. Sachs

You are heading to Grandma’s house for yet another family gathering. Upon entering the front door, you are belted by a thunderclap of the smells of mothballs, yellowed plastic sofa covers, cat hair and foot powder. As you regain your bearings, the mellifluous under notes of Grandma’s apple pie reach you: tiny, moist, fragrant, individually encapsulated particles of Granny Smiths, butter and sugar, all borne upon the dry, hard air like foam upon breaking waves. You beeline to the kitchen, bypassing the hubbub of family, friends and distant cousins congregating in the living room.

The pie rests on the counter, steaming, beckoning, irresistible. Above the pie is a sign, written in that graceful hand that has not been taught in public schools since the 1930s:


You are both a Boy Scout (motto: Be Prepared) and an adherent of Occam’s Razor (motto: Do Not Multiply Entities Beyond Necessity). You reach into your pocket and produce a titanium spork/knife:


Today you’re feeling mischievous, so you surgically extract a 3” diameter circular section from the center of the pie:


As you are clearing your plate with your spork, Grandma Benson appears. She sees her apple pie with its central hole and scowls.

“Look young man, just because you read Godel, Ester, Mozart when you were 14 doesn’t make you any smarter than the rest of us. I’ve seen Amadeus a few times, and what you’ve done here is no Ode to Joy.”

“Grandma, it’s Godel, Escher, Bach,” you correct, emphasizing the sch and lingering for a moment on Bach, “and Beethoven wrote Ode to Joy, not Mozart.”

“Don’t you back talk me. The sign says don’t eat the whole pie, and you ate the whole pie. Now there’s nothing left for anyone else.”

“Granny, I didn’t eat the whole thing, I left plenty including the best part, the crust. I just ate a portion from the middle, that’s all. Everyone else can have some from what’s left over.”

“Nonsense. If there's something I cannot tolerate, it’s clever cutting based on your skill with that thing you're holding. Even worse, you cut a perfect circle in the middle and everyone knows that perfect circles are like laws of nature.”

You’re not precisely sure what to make of that, but figured that’s just Grandma being Grandma. After all, you've seen Grandma wield a pretty wicked cleaver on a chicken, reducing it to a collection of detached chicken-parts in a few moments flat.

Grandma continues: “Even though you left pie around the hole, for all practical purposes you ate the whole thing, because who’s going to want a piece of pie that’s incomplete?”

“But Grandma,” you earnestly protest, “there are plenty of foods that have a hole in middle, and people eat them all the time. Like doughnuts and bundt cake.” You quickly pull up a picture of a bundt cake on your smartphone:


“Those are cakes, not pies” Grandma Benson carefully elucidates. “No one eats a pie with a hole in the middle. And we’re not about to start now, not in my house.”

At this point, your great Aunt Flook walks in. “What’s the commotion? What’s going on here?” Then seeing the pie-torus, excitedly exclaims “What happened to the pie!”

“It’s OK, Aunt Flook, there’s plenty of pie left over for everyone else,” you rejoin.

Aunt Flook’s gaze fixes slowly, cautiously on the shiny spork-knife. “I’m not so much worried about that, that was Grandma Benson’s rule, but you clearly broke my rule: don’t eat with your hands, use a particular utensil. I don’t know what that thing is, but it certainly is not a fork like the rest of us use.”

“This is a spork-knife,” you proudly declaim, holding up the gleaming tool, rotating it under the bright kitchen lights. “It combines a spoon, a fork and a knife all into one. That way, I don’t have to carry around three utensils, just one. It’s funny, but when they were first invented, the president of International Cutlery Corporation said that there was a world market for at most five of them. Now, they’re everywhere; all my friends have several of them, and we use them for everything: soup, ice cream, steaks, you name it.”

“I’m not impressed by such gewgaws,” snorts Aunt Flook. “Since it does everything you say, it’s just like eating with your hands. It’s not a particular utensil, it’s a general purpose utensil, and that’s not allowed,” she asserts with an air of logical finality.

“Aunt Flook, please understand. When I’m using it to cut, it’s a knife. When I use it to eat soup, it’s a spoon. When I use it to eat pie, it’s a fork. When it’s being used in one of these ways, it is effectively a particular utensil. Sort of like the Swiss Army knives that had all those tools in them, but this is fully integrated. No one would say that each of the tools in a Swiss Army knife were not particular, so there’s no reason to say this is not particular as well.”

“I agree with Grandma Benson, you’re just being a clever cutter. And your explanation of how that sporky thing really is the same as a particular tool is what your crazy cousin Alappat has been saying for years, and nobody pays any attention to him anymore.” You’ve always been deeply fond of your cousin, and so this uncalled-for slight stings.

Aunt Flook presses on. “In fact, if I ignore the bowl shape, the tines of the fork part, and serrated knife edge, there’s nothing left over but a fancy stick, and that’s not a particular utensil. You’re treading on very thin ice young man.”

“Aunt Flook, I respect you, you’ve been great to me, always making my favorite pies, letting me help with your wonderful piroshkis, never missing my robot war competitions. But I have to remind you what Grandpa Diehr said, rest his soul. Grandpa said that you look at the utensil as a whole, not as individual parts. Grandpa was very clear about this. Now I know you didn’t get along very well with Grandpa Diehr, and your sister Mayo didn’t help matters by what she said about him last year. But the fact of the matter is that Grandpa Diehr was right 30 years ago, and he’s still right today.”

“I think you’re being rather impertinent for such a young man,” retorts Aunt Flook, flustered and annoyed.

Grandma Benson rotates the pie plate in place. “Let me see that spork of yours,” she commands. You hand it over, and Grandma Benson starts carefully sectioning the apple pie into eight pieces, each the shape of an isosceles triangle with its tip cut off. “Well I’ll be, this really does work like a knife. Belinda, will you look at this,” she calls out to Aunt Flook, who glances back over her shoulder, her narrowing eyes targeting the truncated wedges of pie.

Grandma Benson puts each pie wedge on its own plate, dusting them lightly with powdered sugar. “Maybe he’s right, there’s plenty of pie left, and no one will even notice the hole.”

Aunt Flook looks ashen, abandoned by Grandma Benson. She storms out of the kitchen. “Wait till I tell Mrs. Bilski about this!! She’ll agree that this spork of yours is a good-for-nothing abstraction!”

“Did someone call me?” Mrs. Bilski comes bustling into the kitchen. “Let me see that thing,” and she grabs the spork-knife from the table, turning it over several times, staring quizzically at its complex curves and surfaces.

“If this is what I think it is, then nobody will be able to use spoons, forks and knives ever again! How will we eat? Could you imagine a table setting with just a single sporkive sitting pretty and alone on a napkin next to the plate? That would be ridiculous. What’s next, a plate with a bowl in the middle and a built in water glass? And don't even think of mentioning that your famous Uncle Jules Rich or whatever his name was, would be impressed with how useful and tangy a plorkster is."

You shudder to recall the last time Uncle Rich, your cousin Alappat's father, was mentioned in Mrs. Bilski's house. Here was a man who did not make pie merely several times a year as did Grandma Benson, Aunt Flook or Mrs. Bilski. Here was a man who spent an entire lifetime thinking about how pies are made, teaching about pies, consulting with presidents and foreign dignitaries about the nature of pie. A man who quite literally wrote the law of pies. When he died shortly after busting the oldest pie-making myth of them all—to wit, financial businesses are not allowed to make pies—he was mourned by many, and missed by all. All that is except the Bilski household, who mocked the great man as he rested in peace, saying that Rich had made a "grave mistake" in his theory of pie. A small part of your soul died that day.

"I’m getting rid of it,” Mrs. Bilski announces, striding forcefully to the trash bin and unceremoniously dropping the guilty party into a pile of shiny butter wrappers, mottled brown apple peelings and gray stained crumpled paper towels.

You rush over and rescue your precious, wiping it carefully, slowly, thoughtfully. Its cold, metallic heft mirrors your angered heart. That many people think in visual terms is commonplace. You, however, have a highly developed cinematographic cortex, and all physical experiences, thoughts, words read and sounds heard are automatically, subconsciously feature-matched against a mental library of movie shots and scenes, each visualized in the screening room of your mind. Now, the essential features of the present moment are distilled into protagonist-dies-for-principle, and without effort you mentally watch the clips:

  • Star Trek II: The Wrath of Khan, Spock in radiation flooded warp core; dies for many.
  • The Dead Zone; Johnny dies knowing that's he stopped Stillson from being elected President, which would have lead to nuclear war; dies for all humanity.

These are not on precisely point. Next up:

  • Leon: The Professional; Leon dies, handing corrupt cop Stansfield a grenade pin, the resulting explosion of Leon's grenade-studded vest obliterating Stansfield, and avenging his murder of Mathilda's family.
  • Gladiator; Maximus dies after slitting treacherous Commodus's throat with his own blade, thus restoring the republic and avenging the death of his family and his beloved Emperor.
  • Soylent Green; Thorn dies to reveal the truth, "Soylent Green is made of people!"

These are better: revenge, coupled with justice and honor, a revelation of the Big Lie (though the food connection in Soylent Green makes it a rather less appealing). If only, if only….You press the spork's pointed tines and finely honed edge into the crease of your palm to restore rational thinking: not a good time to act on impulse, no matter how noble or just the cause, against the House of Bilski. You secure the spork in an internal coat pocket. Internal experiential-time, one minute 20 seconds; external realtime, 0.5 second.

“Mrs. Bilski, you need not worry so, no one is threatening to do away with all spoons, forks and knives, and you will not starve to death. This is just one way of combining those utensils together, and there’s lots of other ways to do that as well.” You quickly Swype in the search query “spork knife” into your phone’s browser; images of various types of spork-knives tumble into view.

“I don’t care,” retorts Mrs. Bilski, looking past you to the living room. “I know it when I see it, and all I see here is a bad idea.” With that, she briskly turns on the heels of her Dr. Comfort orthopedic shoes and ambles out.

You shrug. You turn back to Grandma Benson, looking confused and resigned. Grandma Benson smiles and gently says, “Let’s go serve some pie.”

This is the drama we face today, as the Supreme Court begins its deliberations in Alice Corp. v. CLS Bank. The Court’s “guideposts” of Gottshalk v. Benson, Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos and Prometheus v. Mayo are inconsistent with each other in both application and theory, harbor internal contradictions, and do not set forth any objective way of deciding patent eligibility in general, or the boundaries of abstract ideas in particular.

The core principle that runs through the Court’s § 101 cases is that a patent claim should not preempt all uses, all practical applications of an idea. Preemption got its start in Benson:

  • “The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and in practical effect would be a patent on the algorithm itself.” Benson, 409 U.S. at 72-73.
  • “Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation.” Diehr, 450 U.S. at 187.
  • “Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.” Bilski, 130 S.Ct. at 3231.
  • “They [Benson, Flook] warn us against upholding patents that claim processes that too broadly preempt the use of a natural law.” Mayo, 132 S.Ct. at 1294.
  • “Pre-emption is only a subject matter eligibility problem when a claim preempts all practical uses of an abstract idea.” CLS Bank Int’l v. Alice Corp. Pty., 717 F.3d 1269, 1300 (Fed. Cir. 2013) (en banc) (Rader, C.J., concurring-in-part and dissenting-in-part).
  • “What matters is whether a claim threatens to subsume the full scope of a fundamental concept, and when those concerns arise, we must look for meaningful limitations that prevent the claim as a whole from covering the concept’s every practical application.” CLS, 717 F.3d at 1281 (Lourie, J. concurring).

The emphasis throughout the caselaw is that a claim is problematic if and only if it will “wholly preempt” “all practical applications” of some abstract idea, law of nature, etc. I take words seriously: preempt means “to seize upon to the exclusion of others.” The adverb wholly means “to the full or entire extent; to the exclusion of other things.” We talk about federal preemption in the sense that a given federal law precludes the operation of a state law, that the federal law is exclusive of the field. If a claim “wholly preempts” then it precludes “every” and “all practical applications”—there’s nothing, absolutely nothing left over. Conversely, if there is a single practical application of the law of nature or abstract idea that is not blocked by the claim, if there is some way to achieve a practical, useful result in the real world that does not infringe, then the patent claim does not wholly preempt, and must be patent-eligible.

The problem is that the Court in Diehr stated, “We rejected in Flook the argument that because all possible uses of the mathematical formula were not pre-empted, the claim should be eligible for patent protection.” Diehr, 450 U.S. at 192 n.14. However, this statement is entirely at odds with the requirement that a claim “wholly preempt” “all” and “every” practical application.

And this is one problem we have with Grandma Benson. Her rule says don’t eat—preempt—the whole pie, the abstract idea, law of nature, etc., leave some for others. But when it’s pointed out that there’s plenty of the pie available, the retort is that we’re just being “clever cutters”—the Court’s repeated admonition against clever claim drafting. How is it that we can leave pie on the plate, and yet still be guilty of eating the whole thing? We can’t. Benson and Diehr were right on the overall theory of preemption, but just got this point of logic wrong.

And what was Grandma Benson talking about when she said that perfect circles are laws of nature? Benson, Flook and Diehr are premised on the assumption that all mathematical algorithms are scientific truths, supposedly “like” laws of nature. “Reasoning that an algorithm, or mathematical formula, is like a law of nature, Benson applied the established rule that a law of nature cannot be the subject of a patent.” Flook, 437 U.S. at 589.

The idea that all mathematical algorithms are scientific truths or laws of nature is simply wrong. Mathematics can certainly be used to describe scientific truths, such as E=mc2, because it is a precise and formal language for describing quantitative aspects of the world. Mathematics “is unique among languages in its ability to provide precise expression for every thought or concept that can be formulated in its terms.” A. Adler, Mathematics and Creativity. Most mathematical algorithms and formulas are for decidedly non-scientific problems, such as fuel-efficient aircraft approach procedures (U.S. Pat. No. 8,442,707), compressing video for transmission on cell phones (U.S. Pat. No 8,494,051), efficiently allocating farming resources (U.S. Pat. No. 6,990,459), or calculating golf handicaps and the difficulty of golf courses (U.S. Pat. No. 8,282,455). Mathematical expressions used in applications like these are not like laws of nature or scientific truths at all.

What about Aunt Flook? Here we have the rule against using a general purpose utensil—a computer—to perform some action that is otherwise well known. The expression general purpose computer is often misunderstood. A general purpose computer does not mean a computer executing basic software such as a word processor, spreadsheet or Internet browser. Rather, the term refers to the underlying hardware architecture of a processor (“CPU”), a memory from which a stored program can be retrieved and executed. Once a computer program is loaded from memory and executed by the processor, the computer is in fact operating as a particular machine, essentially at that point a special purpose computer. This is a consequence of the foundational work in computer science by Alan Turing, who proved in the 1930s that a general-purpose computer (what he called a Universal Turing Machine) executing a program can perform the operations of any specific computer hardware. Thus, just like the spork-knife is operating as a spoon, or a fork or a knife at different times, so too is a general purpose computer in fact a “particular computer” when it is executing a particular program. That we can rapidly shift between programs is no different in kind than being able to shift between the spoon, fork and knife functions of the spork. This also demonstrates that Cousin Alappat and his father Judge Giles Rich—In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc)—knew what he was talking about: “such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” Id. at 1545.

Aunt Flook also argues that she can ignore the conventional features of the spork-knife, and the result is simply a glorified stick. This is the familiar claim dissection analysis, a theory that is directly contradicted by Grandpa Diehr. Stevens, the author of Flook, argued that § 101 applies only at the “point of novelty” in the claim, which he called the “inventive concept.” “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. 204, 212 (Stevens, J., dissenting). On this assumption, claim dissection is appropriate to identify the features that were believed by the inventor to be his inventive concept. Therefore, it also made sense for Stevens to assert the ad hoc rules that post-solution activity or field-of-use limitations do not confer patent eligibility. If the “solution” step were deemed to be the point of novelty, then it would logically follow that claim limitations as to what happens before (pre-solution and data gathering) and afterward (post-solution) could not contribute, nor could the restriction of the solution to a particular field.

Justice Stewart in dissent, joined by Chief Justice Burger and Justice Rehnquist, emphatically disagreed with this approach of applying § 101 only at the point of novelty, stating: “it strikes what seems to me an equally damaging blow at basic principles of patent law by importing into its inquiry under 35 U.S.C. § 101 the criteria of novelty and inventiveness.” Flook, 437 U.S. at 600 (Stewart, J., dissenting).

Just three years later, the dissent in Flook became part of the majority in Diehr, and correctly rejected Flook’s point of novelty approach. The Diehr Court held “the fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101.” Diehr, 450 U.S. at 193. Because § 101 applies to the claim as a whole, “it is inappropriate to dissect the claims into old and new elements,” even if one of those elements is a law of nature or a scientific truth. Diehr, 450 U.S. at 188. Diehr’s rejection of the point of novelty approach was recognized in In re Taner, 681 F.2d 787 (C.C.P.A. 1982) (“The Court in Diehr rejected the "point of novelty" analysis saying "the `novelty' of any element or steps in a process … is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter," 450 U.S. at 189.”).

Stevens clearly disagreed with the Diehr majority in a scathing dissent, noting “the major flaws in the Court's opinion” and that “the Court has compounded its error by ignoring the critical distinction between the character of the subject matter that the inventor claims to be novel—the § 101 issue—and the question of whether that subject matter is in fact novel—the § 102 issue.” In short, Aunt Flook and Grandpa Diehr are simply, irrefutably at odds with each other.

Diehr remained good law for over 30 years, and several million patents were issued based on its approach—until Flook’s “Sister Mayo” spoke up. Mayo resurrected Flook and returned to what amounts to claim dissection. While citing Diehr for the proposition that the claims must be viewed as whole, Mayo held that it is proper to determine patent eligibility by identifying an “inventive concept” and applying § 101 only to that element. The “inventive concept” approach only makes sense in the context of claim dissection, not Diehr’s claim as whole approach. Mayo further extended Flook’s ad hoc rules to include “well-understood, routine, conventional activity,” previously engaged in by those in the field, Mayo, 132 S.Ct. at 1298. Consideration of “conventionality” of individual steps directly contradicts Diehr, 450 U.S. at 193.

Judge Rich, the co-author of the 1952 patent law which is the core of what we have today, penetrated to the heart of the problem of disregarding “conventional” elements when considering patent eligibility: A process would “be statutory during the infancy of the field of technology to which it pertained, when the physical steps were new, and non-statutory at some later time after the physical steps became old, acquiring prior art status, which would be an absurd result. Logically, the identical process cannot be first within and later without the categories of statutory subject matter, depending on such extraneous factors.” In re Musgrave, 431 F.2D 882, 889 (C.C.P.A. 1970).

What did I mean when I said Sister Mayo did not help matters by what she said about Grandpa Diehr? Well, Mayo mischaracterized Diehr’s claim, saying “It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.” 132 S. Ct. 1299. This is simply incorrect. Stevens set forth in detail that the bulk of Diehr’s claim was conventional:

First, there is not a word in the patent application that suggests that there is anything unusual about the temperature-reading devices used in this process—or indeed that any particular species of temperature-reading device should be used in it. Second, since devices for constantly measuring actual temperatures—on a back porch, for example—have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a "process of constantly measuring the actual temperature" had just been discovered. Finally, the Patent and Trademark Office Board of Appeals expressly found that "the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press." This finding was not disturbed by the Court of Customs and Patent Appeals and is clearly correct.

Diehr, 450 U.S. at 207-208. The only non-conventional element of the claim was the use of the programmatic implementation of the Arrhenius equation, which both the majority and Stevens believed to be scientific truth. Thus, if Mayo’s rule against conventional elements was seriously applied to Diehr’s claim, it would have been held invalid. That’s the wrong outcome, so Sister Flook recast Grandpa Diehr as having non-conventional steps.

That leaves us with Mrs. Bilski. The major debate and confusion in § 101 surround what counts as an abstract idea and the Court has not yet squarely addressed this question. In particular, Bilski expressly avoided it, saying only that “Court resolves this case narrowly on the basis of this Court’s decisions in Benson, Flook and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea.” Bilski, 130 S.Ct. at 3229-3230. But the Court mischaracterizes Benson, Flook and Diehr. In all of those cases the Court analyzed the claim as a mathematical algorithm—not as abstract idea. The Court in Benson assumed that the claim embodied the pure mathematics of converting binary-coded-decimal to binary (even though Benson expressly stated that was not what he considered his invention). In Flook, the claim included a broad equation for controlling a catalytic reaction. In Diehr, an application of the well-known Arrhenius equation was claimed. In each case, the Court had before it what it believed to be a “fundamental truth” about the real world, something that no one can be said to have “invented.”

However, the abstract ideas and abstractions used in the vast majority of claims are not fundamental or true in any sense. Even the broad abstract idea of “presenting information on web pages” is not a truth, let alone a fundamental one, though it may be a very obvious one. An abstract idea or abstraction may be very common and well known, but that does not make it a fundamental truth of the type that the Court has indicated as being ineligible for patent. Whatever justifications Benson, Flook and Diehr used to address whether patent claims that scientific truths, those justifications do not automatically apply to all abstract ideas. Mrs. Bilski was simply applying the patent version of Potter Stewart’s famous test for obscenity in Jacobellis v. Ohio 378 U.S. 184 (1964). Mrs. Bilski's preemptive dismissal of Judge Rich refers the Bilski Court's dismissive view of Rich's opinion in State Street Bank and Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). Judge Rich held that there was no rule against business method patents, as had been believed for many years, which the Bilski Court agreed with but without acknowledging Judge Rich's analysis. However, State Street also set forth a test for patent eligibility based on whether the claimed invention produces a useful, concrete and tangible result, which the Bilski Court rejected. Judge Stevens, in his concurrence called this approach a "grave mistake."

What can the Supreme Court do to get out of these tangled theories and contradictory conclusions?

In our amicus curiae brief for Advanced Biological Laboratories, we proposed a theory of objective preemption. Objective preemption grounds the preemption analysis in an objective framework, the person of ordinary skill in the art (POSITA). Objective preemption asks whether POSITA would consider the actual claim limitations to wholly preempt all practical applications of the abstract intellectual idea, law of nature, or natural phenomenon in the real world. Even Judge Lourie states “The § 101 preemption analysis centers on the practical, real-world effects of the claim.” CLS, at 1283. It is a POSITA who would create practical applications of the idea in the real world. A POSITA would recognize as meaningful and significant limitations that may incorrectly appear to be trivial to a layperson unfamiliar with the technology’s subtleties, the practices of the relevant technological community, and the significance of seemingly minor details.

More precisely, if POSITA can identify a practical, non-infringing way of practicing the abstract idea in the claim, then the claim is statutory. “The [system] claims do not claim only an abstract concept without limitations that tie it to a practical application. Confirming this, someone can use an escrow arrangement in many other applications, without computer systems, and even with computers but in other ways without infringing the claims.” CLS, at 1309 (Rader, C.J., concurring-in-part and dissenting-in-part). “Moreover, because the claims require specific computer components, a human performing the claimed steps through a combination of physical or mental steps likewise does not infringe. In sum, this system does not preempt anything beyond the specific claims, let alone a broad and undefined concept” Accenture Global Services v. Guidewire Software, Inc. 728 F.3d 1336, 1348 (Fed. Cir. 2013) (Rader, C.J., dissenting).

Unlike some policy-based approaches, objective preemption is a methodology that is truly “operational” by a court, it need not delve into policy questions or long-range speculations. The POSITA’s viewpoint is used as objective, technology-neutral basis for evaluating questions of law and fact, including claim construction and obviousness. Under objective preemption, patent eligibility remains a question of law to be decided by the courts, but which is predicated on facts. The courts and the USPTO have deep institutional experience in deciding whether a claim is infringed or anticipated—precisely the skill needed to decide whether a claim does or does not to cover all practical applications of an idea in the real world.

Of course, I cannot predict what the Court will do. It could continue to use the imprecise exhortations of its prior cases, with a bit more elaboration, paraphrasing and restatement. This is what the Court has done for 40 years, and the approach has not yet been successful. Or it could take a hard look at its precedent, acknowledge its inconsistencies, and set forth an objective, scientifically sound and pragmatic methodology. Objective preemption provides one such methodology.

*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.