Since last year’s decision in Alice v. CLS Bank by the Supreme Court, the number of patents for computer-based inventions that have been struck down by challenges of their eligibility for patent protection has skyrocketed. While “business method” patents (patents describing methods of doing business using computers) have borne the brunt of these challenges, patents utilizing computers in more technical fields have been invalidated as well. As a result of the high rate of decisions of patent ineligibility, it’s understandable if an owner of a patent on a computer-based invention facing such a challenge looks like a “deer in the headlights.” However, as discussed below, the Supreme Court cases prior to Alice, particularly Diamond v. Diehr (1981), can provide helpful guidance in navigating the realm of patent-eligibility for computer-based inventions in technological fields such as photonics.
Alice is the latest in a series of Supreme Court cases spanning more than 40 years regarding the patent eligibility of computer-based inventions. The Court in Alice considered the eligibility for patenting for a computer-based business method for mitigating risk of non-performance of financial obligations, and laid out a two-part test to determine whether a computer-based invention is patent-eligible. First, is the claimed invention directed to an abstract idea? If so, does the claimed invention include “something more” that transforms the abstract idea into something that is patent-eligible? Without this “something more,” a claimed invention is directed to an abstract idea and is not eligible for patenting.
The Alice ruling has been criticized by some in the patent community as not providing sufficient guidance for its application to other situations, particularly with regard to inventions that, while not business methods, are made possible by the use of computers. For example, while it laid out the two-pronged test described above, the Alice Court explicitly declined to define an “abstract idea” and only gave limited guidance on what would constitute “something more” that would make the claimed invention eligible for patenting, resulting in uncertainty as to the line between patent eligibility and ineligibility.
Beyond the lack of rigorous guidelines in Alice, there is significant consternation in the patent community regarding the application of the Alice framework by the lower courts. To date, since the Alice decision, the overwhelming majority of patents challenged in district courts have been deemed to be patent-ineligible (36 out of 47). Some of these cases dealt with computer-based inventions that were not “business methods,” instead directed to computer-based technologies such as information management or computer-aided system design. With patent eligibility being a threshold issue, district courts are disposing of many patent infringement cases by granting summary judgment motions for patent ineligibility early in the case and by granting motions to dismiss on the pleadings. Also, since the America Invents Act (AIA) was enacted, existing patents can now be invalidated using relatively new avenues for post-grant challenges at the Patent Trial and Appeal Board that did not exist previously. These challenges based on patent eligibility are proving to be highly efficacious in invalidating the patents at issue, in a manner that is more cost-efficient than litigation.
This bias towards ineligibility is not new. For example, in all but one of the pre-Alice computer-based invention cases at the Supreme Court since the 1970s, the Court found the computer-based inventions at issue to be ineligible for patenting. The basis for each of these ineligibility rulings was that the computer-based invention was directed to an abstract idea (for example, a mathematical formula or algorithm), which is not eligible for patenting as a judicial exception to the broad statutory definition of patent-eligible subject matter of “any new and useful process, machine, manufacture, or composition of matter.” These rulings set out various rules and tests for determining whether a computer-based invention was patent-eligible, each of which had the effect of constraining the ambit of patent eligibility.
The one pre-Alice Supreme Court case that found the computer-based invention at issue to be patent-eligible was Diamond v. Diehr (1981). The Court in Alice cited the ruling in Diehr favorably as an example of an improvement in an existing technological process that constitutes “something more” sufficient to make a claimed invention patent-eligible. In addition, the guidelines being used at the USPTO to evaluate the patent eligibility of the applications being examined since Alice also use Diehr as a primary example of a computer-based invention that is patent-eligible. For those seeking guidance on how to pursue patents for computer-based inventions in this post-Alice world, a revisit to Diehr can be instructive.
The invention in Diehr was a computer-based method for controlling a rubber-molding press using a well-known formula for calculating chemical reaction rates based on temperature (the Arrhenius equation). Claim 1 recited the invention as:
1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
constantly providing the computer with the temperature (Z),
repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is ln(v)=CZ+x where v is the total required cure time,
repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
opening the press automatically when a said comparison indicates completion of curing.
The claimed invention therefore included continually receiving readings of the mold cavity temperature and the elapsed time since closing the molding press, using the computer to repetitively calculate the total required cure time of the rubber based on the continually-received temperature readings using the Arrhenius equation and to repetitively compare the calculated and elapsed times, and opening the molding press automatically when the elapsed time matches the calculated required cure time.
Considering the claimed invention as a whole, the Court in Diehr held that while the claimed method utilized a mathematical formula, it included a transformation and reduction of an article (raw, uncured rubber) to a different state or thing (cured rubber). Also, the Court noted that the claimed invention did not pre-empt the use of the equation in all practical applications, being only directed to the particular application of curing synthetic rubber including the steps of installing rubber in the press, closing the mold, constantly determining the internal temperature of the mold, constantly recalculating the cure time, and automatically opening the mold at the proper time.
In its discussion of the “something more” prong, the Court in Alice explained that while the claimed invention in Diehr employed a well-known mathematical equation, “it used that equation in a process designed to solve a technological problem in ‘conventional industry practice.’” The Alice Court cited the steps of “constantly determining the temperature,” “constantly providing the computer with the temperature,” and repeatedly recalculating the remaining cure time (using the equation) as transforming the process into an inventive application of the equation. In contrast, the Alice Court further explained, the claims at issue in Alice amounted to “nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer,” so they did not meet the standard of Diehr.
However, not all technical uses of a mathematical algorithm will be sufficient for patent eligibility. Another Supreme Court case, Parker v. Flook (1978) can help to understand what is sufficient to be “something more” as in Diehr. In Flook, the claimed invention was a method of setting alarm limits using a particular formula to control a catalytic chemical process (which at first blush seems to be in a similar technical field as is Diehr’s method of controlling chemical reactions within a rubber-molding press). Flook’s Claim 1 recited the invention as:
1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of B0 + K wherein B0 is the current alarm base and K is a predetermined alarm offset which comprises:
(1) Determining the present value of said process variable, said present value being defined as PVL;
(2) Determining a new alarm base, B1, using the following equation:
B1 = B0 (1.0 –F) + PVL(F)
where F is a predetermined number greater than zero and less than 1.0;
(3) Determining an updated alarm limit which is defined as B1+K; and thereafter
(4) Adjusting said alarm limit to said updated alarm limit value.
The method of Flook was deemed to not be patent-eligible subject matter. As the majority in Diehr explained, the method of Flook merely laid out a procedure for using a formula for adjusting a number (i.e., an alarm limit) without reciting the chemical processes at work, the monitoring of process variables, or the means for setting off an alarm. As such, the Court saw Flook as seeking to patent a mathematical formula, while Diehr was seeking to patent a process for curing synthetic rubber. The fact that the claimed invention in Flook was specific to a particular technical environment or that it performed the insignificant post-solution activity of adjusting the alarm was not enough to transform the unpatentable principle into a patentable process.
Using the analysis of Alice, while both Flook and Diehr were both directed to an abstract idea used in a technological field, Diehr’s inclusion of acts of continually measuring internal temperature and continually recalculating the cure time in the claim, as well as the transformation of raw rubber into cured rubber, provided the “something more” that made the claim patent-eligible. If Diehr had not recited these acts in the claim, for example, only reciting providing data, calculating a value based on this data using the Arrhenius equation, and opening the press automatically, Diehr would have fallen for the same reasons as Flook.
One way perhaps to articulate the difference between Diehr and Flook is that the patentable method of Diehr achieves a result that would not have been possible without the computer. For example, the cured rubber produced using Diehr’s process was presumably of higher quality by virtue of the claimed invention as compared to cured rubber produced without the constant temperature readings and the constant recalculations that the computer made possible. In contrast, the unpatentable method of Flook set an alarm limit for a chemical process, but the computer was merely the means for calculating the new alarm limit and did not achieve a result that would not have been possible without the computer. For example, the new alarm limit calculated using Flook’s process was not any better than an alarm limit calculated using other means. The new alarm limit may have been achieved faster or more reliably using a computer, but these are attributes of a generic computer as a calculating machine and do not amount to “something more” under the Alice framework.
Revisiting these earlier Supreme Court cases, particularly Diehr, in the context of the patent eligibility framework of Alice, makes it clear that even in technological fields, patent eligibility will not rely on the use of the computer alone. Besides being directed to an improvement in a technological field, to provide the “something more,” the computer-based invention should recite a use of the computer in a manner that results in an improvement in a technical field beyond mere automation, for example by achieving a result that would not have been achievable without the computer. The closer to Diehr that a patent applicant can recite the computer-based invention, the higher likelihood of success in obtaining the patent and having the patent withstand post-grant patent eligibility challenges.