The Normative Stance of Patent Eligibility

By: Robert R. Sachs

Judge Mayer, along with Judges Dyk, Prost, Lourie, are "Normativists," who see § 101 as defining what inventions and claims "ought" to be. The Normative approach imposes an extrinsic value judgment—from a source unspecified—as to what kinds of innovations count as "inventive" and what kinds do not. This approach is of a piece with the Supreme Court, which holds in Prometheus 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."

In particular, the Normativists believe that the use of computers to deliver useful "human" functionality has no inherent inventive value per se, that there is no "human ingenuity" in designing computerized solutions. This view is based in part on the view that computers are so common, so woven in the modern life, using them to do something useful is not inventive.

Thus, in MySpace v. GraphOn, Mayer states:

In essence, the use of conventional technology to implement an otherwise abstract idea is insufficient to bring a process within the ambit of section 101 because it constitutes nothing more than "insignificant postsolution activity." Mayer at 7.

Given the ubiquity of computers in contemporary life, allowing a process to become patentable simply because it is computer-implemented or invokes the use of the Internet would render the subject-matter eligibility criteria contained in section 101 virtually meaningless. Id. at 8.

Here, the concept of allowing users to control the content of their online communications is "abstract" because free and unrestricted Internet communication has become a staple of contemporary life. Id. at 5.

Because of this view, Mayer and other Normativists approach the patent eligibility question by stripping computer implemented claims of the "jargon" to create "plain English" renderings. Thus, in MySpace, Mayer rendered GraphOn's invention as: "allowing users to control the content of their online communications." Once the plain English "abstract idea" has been identified, it is easily judged as insufficient to be "inventive concept." Thus, the actual claim limitations are not important because "GraphOn cannot avoid the strictures of section 101 simply because its claimed method discloses very specific steps for allowing users to create and modify database entries." "While running a particular process on a computer undeniably improves efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a computer-implemented claim is insufficient to bring it within section 101." This approach of stripping the claims and identifying "abstract ideas" has been criticized by others on the Federal Circuit. Radar calls this "hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims."

Mayer also argues that patent eligibility must be decided before the claims can be considered for whether they are novel and non-obvious, or enabled. In MySpace, Mayer states "This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable "abstract idea" before proceeding to consider subordinate issues related to obviousness and anticipation." In Alexsam, Mayer repeats the admonition: "Whether claims are directed to statutory subject matter is a "threshold" question, Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), which must be addressed before this court can consider subordinate issues related to obviousness and infringement." This view has not been adopted by the majority of the Federal Circuit, which agreed with Lourie that § 101 need not be decided first, but instead that district courts may "begin elsewhere" and consider any other provision of the Patent Act to reach a prompt resolution of a case.

Mayer's Normativist values may derived from—or simply be reflected in—the concern of the potential impact of overly broad patent claims. In MySpace, Mayer notes that "The potential scope of the GraphOn patents is staggering…. The claims thus cut across vast swaths of the Internet and potentially extend to most online advertising and social networking sites." (How Mayer knows this without actual evidence is not clear.) Mayer is concerned that "Permitting GraphOn to exert monopoly power over any online system that allows users to control the content of their own communications would preempt use of one of the "basic tools" of modern social and commercial interaction." Similarly, in Alexsam, Mayer argues that "Alexsam's broad claims—which cover not only gift cards and prepaid telephone cards, but also customer "loyalty" cards and "medical information" cards—threaten to preempt some of the "basic tools" of modern commerce." What's interesting here is that Mayer has taken the Supreme Court's original statement in Benson—that claims should not preempt the "basic tools of scientific and technological work"—and extended that to the tools of "social and commercial interaction" and "commerce," extensions that are clearly well beyond the original intent of the Supreme Court.

The Normativist view may also reflect an "industrial" view of innovation and invention. In the Industrial Age, innovation was primarily achieved through structural transformation of raw materials in order to achieve the desired function. Hence, the statement in Cochrane v. Deener, 94 U.S. 780, 788 (1877) that "A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing." In this framework, invention is the essentially the creation of new "things" rather than new "functions."

However, in the Information Age, there is value in the creation of new "functions," ways of doing things, as well as in the creation of information itself. The use of existing technologies to create or manipulate information or materials is itself an innovation and can be an invention. And perhaps no better example of the ability to use an existing mechanism to new uses is the general purpose programmable computer. More specifically, the ability to create functional transformation apart from structural transformation by the configuring (programming) of computers results from both ever more powerful and general programming languages and the development of commoditized computer processors and memory. As topical examples, we care more about what functions our smartphones perform, than what materials they are made out of, and we were only mildly surprised when Facebook purchased Instagram—an application company that simply makes it easy to apply digital filters to photos taken on a smartphone—for $1 billion, because we knew that Instagram provided tremendous functional value to end users. Judge Plager was perhaps the first to note that the broad rule of functional transformation applies to the use of computers as well: "[t]hus, it is apparent that changes to intangible subject matter representative of or constituting physical activity or objects are included in the definition [of patentable subject matter]." In re Schrader, 22 F.3d 290, fn. 12 (Fed. Cir. 1994).

Finally, the Normative stance—with its underlying opposition to innovation through use of computers—is at odds with the patent statute. First, the 1952 Patent Act included a Section 100(b), which clarified Section 101 that the term "process" includes "a new use of a known process, machine, manufacture, composition of matter, or material." The principle author of the 1952 Patent Act, P.J. Federico (a chief patent examiner) stated that the "primary significance of adding Section 100(b) was to make clear that a method was not "vulnerable to attack, on the ground of not being within the field of patentable subject matter, merely because it may recite steps conventional from a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process." Commentary on the New Patent Act, reprinted in 75 J. Pat. & Trademark Off. Soc'y 161, 177 (1993) (internal quotations omitted). Thus the fact that computers are ubiquitous in everyday life and that they are commonly programmed to perform all manner of tasks is irrelevant to the consideration of whether a particular claim for a particular invention is patent eligible.

*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.