By: Robert R. Sachs
"To coin a phrase, the name of the game is the claim.”
Judge Giles S. Rich, Federal Circuit (1990)
“We look to the words of the claims themselves … to define the scope ofthe patented invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir1996)
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
The above quotations are often cited in discussions and analysis of claim construction, typically in prelude to infringement or validity analysis. But when it comes to determining patent eligibility, there is a clear split within the Federal Circuit as to the importance of claim language, driven by the divergent stances that various members of the court take toward the fundamental question of what counts as an invention.
Judge Lourie and other “Normativists,” like Judges Dyk, Prost, Wallach and Reyna, view using a computer to perform a function as mere “generic computer automation.” As a result, when deciding whether a claim limitation is “meaningful,” they are comfortable reducing the claim language to “plain English” by stripping away “jargon” and translating “extravagant language.”
For example, in her dissent from the underlying panel decision in CLS Bank Int’l v. Alice Corp., No. 2011-1301 (Fed. Cir. July 9, 2012), Judge Prost provided a table comparing the actual claim language with its “Plain English Translation”:
|The Recited Steps||Plain English Translation|
|(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;||(a) creating a debit and credit account for each party,|
|(b) Obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;||(b) checking the account in the morning,|
|(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these [sic] transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and.||(c) adjusting the account balances through the day, and|
|(d) at the end-of-day, the supervisory institution instructing one of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions||(d) paying the parties at the end of the day if both partied have sufficiently performed.|
Note the use of the word translation, as if the claim language was foreign and had to be translated into English.
Judge Prost’s “plain English” rendering strips away specific claimed features, like which entity performed which step (whether the supervisory institution or the exchange institution), the particularly claimed shadow records, the chronological manner in which adjustments were made (something banks do not necessarily do when clearing transactions) and the selective basis for such adjustments (only when the value of the shadow debit does not fall below the value of shadow credit). To be fair, in his majority opinion in the en banc case, Judge Lourie addresses these features more discretely but disregards them as not adding “anything of substance” to the claim.
In considering the system claims of Alice’s patent, which recited specific computer elements, Judge Lourie states that “the system claims recite a handful of computer components in generic, functional terms that would encompass any device capable of performing the same ubiquitous calculation, storage and connectivity functions required by the method claims” and thus, “are not actually limiting in the sense required under § 101; they provide no significant "inventive concept."” Judges Linn and O’Malley argue that Judges Lourie and Prost (along with Judges Wallach, Reyna and Dyk) ignore the fact that “CLS has acknowledged that the shadow credit and debit records and the transactions and adjustments between them must be implemented electronically.” But Judge Lourie did not ignore this fact; instead, looking through the Normativist lens, he sees nothing of value in programming a computer to perform a function: it is “generic computer automation” that “evinces little human contribution.” 
In contrast, the Positivists on the court, Judges O’Malley, Linn, Rader, Moore and Newman, do not disfavor the use of a computer as a basis of invention. As Judge Moore notes, “When you walk up to the § 101 gate holding a computer in your arms (or software for that matter), you should not be rejected because your computer is an abstract idea.” Judge Rader argues “were it not for software, programmable computers would be useless. A computer without software collects dust, not data.” Acknowledging that hardware and software are equivalents, Judge Rader recalls the holding of In re Alappat that “a computer programmed to perform a specific function is a new machine with individualized circuitry created and used by the operation of the software.” For this reason, the computer hardware limitations have real world significance, and thus, “It would be improper for the court to ignore these [computer system] limitations and instead attempt to identify some “gist” or “heart” of the invention.”
The Positivist approach is consistent with both the logic of the patent statute and practice of patents. Section 101 sets forth the categories of inventions “subject to the conditions and requirements of this title,” one of the requirements of which is §112. Section 112 states that specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Thus, § 101 inherently relies upon § 112 to require “claims” to an “invention.” In other words, there are no inventions in the patent law except claimed inventions—there are no inventions “in the air.” That is why it is improper to gloss the claim or ignore the claim limitations, and then decide whether the gloss—as opposed to the claim—is a patent-eligible invention. The Positivist respect for claim language is also consistent with my earlier analysis of § 101, that it excludes abstract intellectual concepts—fundamental truths or disembodied concepts—not simply all abstractions.
Second, the Supreme Court looks to claim language, and not merely a gist of the invention, in deciding patent eligibility. In Diamond v. Diehr, the Court focused on claim language—which required numerous conventional steps combined with a series of computerized calculation steps—and not merely a gist of the claim that boiled off the conventional operations: “Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.”
Even Justice Stevens, who was the harshest critic of computer-based inventions, looked to the claim language, not some “plain English” distillation. In Parker v. Flook, Justice Stevens consistently focused on the claim language:
The patent claims cover any use of respondent’s formula for updating the value of an alarm limit on any process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons…. Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole….Here it is absolutely clear that respondent's application contains no claim of patentable invention.
Indeed, had Justice Stevens been concerned with a more general invention rather than the claimed invention, he would have said “Here it is absolutely clear that respondent’s application contains no patentable invention,” leaving out the subordinate clause “no claim of.” Similarly, in his dissent in Diehr, Justice Stevens states “As I read the claims, their discovery is an improved method of calculating the time that the mold should remain closed during the curing process.”
For sure, the Supreme Court is not moved by “clever drafting,” but rather it considers what the claim recites, not some distilled notion of the invention. Even in Bilski v. Kappos, Justice Stevens made clear that the focus is on the claim language, not a gist of the invention: “a claim that merely describes a method of doing business does not qualify as a “process” under § 101.” Again, Justice Stevens could have, but did not, say “A method of doing business does not qualify as a “process” under § 101.”
Finally, it would be utterly anomalous for Congress to have intended a regime in which the following occurred:
- the statute mandates patent claims
- the USPTO examines these mandated patent claims with respect to the statutory requirements, including § 101
- patent attorneys and patent examiners negotiate specific claim language to ensure compliance with § 101
- the issued patent claims are specifically presumed value by statute
Yet, despite all of this, the courts are free to gist, distill and gloss the claims into some more general description, and then decide whether that description—as opposed to the claimed invention—is patent-eligible.
 CLS Bank Int’l v. Alice Corp., __ F.3d __, No. 2011-1301, 2013 U.S. App. LEXIS 9493 (Fed. Cir. May 10, 2013), at 45.
 Id. at 56-57, and 60.
 Id. at 165.
 Id. at 45.
 Id. at 141.
 Id. at 102.
 In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc).
 CLS Bank, at 112.
 Diamond v. Diehr, 450 U.S. 175, 184 (1981).
 Parker v. Flook, 437 U.S. 584, 586, 594 (1978) (emphasis added).
 Diehr, 450 U.S. at 206-207 (1981) (emphasis added).
 Stevens, concurrence, Bilski, 561 U.S. at (2010).
*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.