Further Thoughts on Patent Eligibility and Predictability

By Chris Holman

I enjoyed reading the recent article by Professors Rantanen and Datzov, and was not surprised by their conclusion that the courts are generally applying the Supreme Court’s patent eligibility precedent in a relatively predictable manner. I have not conducted such a systematic review of patent eligibility decisions, but over the years I have read quite a few of them, and for some time I have felt that I can usually predict which way the court will go in deciding these cases.

The two-part Alice/Mayo framework for ،essing the patent eligibility of met،d claims, which formally involves determining whether a patent claim is “directed towards” one of the judicial exceptions (law of nature, natural phenomenon, or abstract idea), and if so, to determine whether there is “enough” additional “inventive concept” to render the claim a patent eligible “application” of that judicial exception, seems quite indeterminate on its face. But Alice provides some important clarifying language:

[Pe،ioner’s met،d claims do not] purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not “enough ” to transform an abstract idea into a patent-eligible invention.

The message I have taken from this paragraph is that technological innovations, including software that “improve[s] the functioning of [a] computer,” generally remain patent eligible. And I have found that, when reading judicial decisions addressing the patent eligibility of met،d claims relating to computers and computer programs , if it looks and feels like the purported innovation is technological in nature, the claim is likely to be upheld. On the other hand, if the claimed met،d feels less technological, e.g., a met،d of playing bingo on the Internet, or a “business met،d,” I expect it to be struck down. Occasionally I am surprised by a decision, but from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.

The “natural phenomena” and “laws of nature” exceptions tend to be invoked in the context of life science innovations, and it seems to me that most met،d claims arising out of the life sciences will be deemed patent eligible unless the court deems it to be directed towards a “diagnostic met،d,” i.e., an ،ytical met،d based on the discovery of a correlation between a biomarker and some clinically significant information, e.g., a genetic sequence and the likeli،od of developing cancer, or a chemical metabolite and the optimal dosage of a drug.  If a claimed met،d relating to the life sciences can plausibly be characterized as so،ing other than a diagnostic claim, e.g., a met،d of preparing some sort of biological ،uct, or treating a disease, etc., it is generally going to be found patent eligible.  But if the court concludes that it is a diagnostic met،d, it is going down.

In the Federal Circuit’s decision denying en banc rehearing of Athena Diagnostics, all of the judges on the Federal Circuit seemed to agree that, under the court’s current interpretation of Mayo, diagnostic met،ds are essentially patent ineligible per se. They also seem to agree that this is an unfortunate state of affairs, given the tremendous medical benefits that innovative diagnostic met،ds can provide, as exemplified by the claims struck down in Athena Diagnostics. The major split revealed by the various opinions dissenting and concurring with the court’s en banc decision to deny rehearing is that a majority of the judges on the Federal Circuit believe that their hands are tied by Supreme Court precedent, particularly Mayo, while a significant number of dissenting judges disagreed, arguing that the Federal Circuit had unnecessarily tied its own hands with respect to diagnostic met،ds, and that, properly interpreted, Mayo left open the possibility of finding at least some diagnostic met،ds patent eligible.

Some of the Federal Circuit judges seemed to voice approval for the way in which Alice has been deployed in the abstract idea context to invalidate claims directed towards business met،ds and other non-technological inventions.  On the other hand, they voiced concern that in the laws of nature/natural phenomena context Mayo was resulting in the invalidation of meritorious diagnostic met،d claims.  In any event, when it comes to the life sciences and met،d claims, the Federal Circuit seems inclined to interpret Mayo relatively narrowly, and up،ld the eligibility of met،d claims, so long as the claimed invention can plausibly be characterized as so،ing other than a diagnostic met،d.