CLS Bank v. Alice Corp.: a New Hermeneutic of Suspicion
CLS Bank Int’l v. Alice Corp.PTY, (2013 WL 1020941 (C.A.Fed.)(Dist.Col))), a per curiam opinion of the Federal Circuit, conflates method, system, and media claims in rejecting all of them under 35 USC § 101. The Court’s reasoning depends upon the proscription against “abstract ideas” in Supreme Court judicial precedent interpreting the statute. This article suggests that this is an incorrect approach.
Every patent claim contains an abstract idea. It has to, because we are using words to describe the claimed invention. If we could put the invention itself into a claim, then the idea might not be abstract. Even a claim to a simple mechanical invention such as a wrench is abstract, e.g.,
1. A wrench for removing a bolt from a workpiece.
“Wrench,” “bolt,” and “workpiece” are all abstract at some level: we do not include the actual physical objects in the claim. Of course we don’t because a) the PTO would have to store the actual physical objects and b) any competitor would have to get access to the actual physical objects to design around the claim.
Then, of course, the conscientious patent draftsman, realizing that he or she does not know of all possible prior art, and desiring to get the broadest claim coverage, will proceed to a higher level of abstraction:
2. A tool for removing a fastener from an object.
But “tool” and “fastener” may be too broad, considering the known prior art. Nevertheless, this “abstract” claim will never be rejected under 35 USC § 101. Why? Because it does not claim a computer process. Correctly, the Examiner will look at the other provisions of patentability: 35 USC §§ 112, 102, and 103.
Why should the examination process be different for claims drawn to computer inventions? If we claim the binary code that carries out the programmed function, a claim might not be “abstract,” e.g:
1. A computer, having a processor, a memory, and an input/output device, the memory having binary data, the binary data being executed by the processor, each group of binary digits comprising an instruction directing the processor, the instructions further comprising:
But of course, no patent draftsman would write such a claim. The binary representation of the program would be exceedingly long, infringement could only be proved by getting a copy of the actual binary data of the alleged infringer, etc. Instead, the draftsman would begin by writing an “abstract” claim, e.g.,
2. A method of addition on a computer having a processor, a memory, and an input/output device, the memory having a program executed by the processor, the program comprising the following steps:
a) store a first number in a first portion of the memory;
b) store a second number in a second portion of the memory; and
c) add the first number and second number, storing the result in a third portion of the memory.
The claim now covers the implementation of the program in many possible computers, no matter what the actual binary coding of the instructions is for that computer. This is good. But the claim is abstract: it is not limited to the actual concrete instructions in a particular computer. Note also that the claim claims a mathematical algorithm (addition). It is also a method claim. It is also not limited to a particular machine. For all of the above reasons, the claim would undoubtedly be rejected under § 101, Bilski v. Kappos, and the USPTO Memorandum “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos.”
A different method claim that might be eligible under the “Interim Guidance” memorandum would have the following characteristics:
(1) incorporation of a particular machine or apparatus;
(2) the machine or apparatus implements the steps of the method, as opposed to where the machine or apparatus is merely an object on which the method operates;
(3) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps;
(4) performance of the claimed method results in or otherwise involves a transformation of a particular article;
(5) performance of the claimed method does not involve an application of a law of nature;
(6) a general concept (principle, theory, plan or scheme) is not involved in executing the steps of the method.
Is there any doubt in the reader’s mind that most of the words in the above guidance are abstract? What is the difference between an apparatus “implementing the steps of the method” and the apparatus is “merely an object on which the method operates?” What are “meaningful limits?” What is “transformation” and what is “a particular article?” What is a “law of nature?” What is a “general concept?”
How can a patent draftsman avoid claiming an abstract idea when the USPTO’s guidance is so highly abstract? He or she has a very difficult task, indeed.
So what is the patent draftsman to do? In addition to method claims, the draftsman writes system claims. Presumably, these claims are no longer subject to the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos” Memorandum. This was a generally accepted best practice until CLS Bank. The draftsman wrote a claim to a computer, a memory, a processor, and an input/output unit. Execution of the claim resulted in the transformation of a particular article (a real-world physical object ideally). The claim did not involve an application of a law of nature (whatever that may be!) And the claim did not involve the execution of the steps of a general concept on the machine (whatever a “general concept” might be!)
A system claim that a draftsperson might write would be the following:
3. A system for adding two numbers, the system comprising a processor, a memory, and an input/output device, the memory having a program executed by the processor, the program comprising the following steps:
a) store a first number in a first portion of the memory;
b) store a second number in a second portion of the memory;
c) add the first number and second number, storing the result in a third portion of the memory; and
d) output the results through the input/output device.
Note that in the above claim: the claim is drawn to physical objects (processor, memory, input/output device); the machine implements the steps of the method; the machine imposes meaningful limits on the execution of the claimed method steps; performance of the claimed method results in the transformation of a particular article (the computer’s memory); performance of the claimed method does not involve an application of a law of nature; and a general concept is not involved in executing the steps of the method.
This claim very likely would not be patentable under 35 USC § 102, but is there any reason to treat it differently under 35 USC § 101 than the claim to a wrench above?
Since CLS Bank, however, the claim must not only pass the USPTO’s “Interim Guidance” memorandum for method claims. CLS Bank now sets up a hermeneutic of suspicion in examining system claims, as well as method claims. Apparently believing that all patent draftspersons employ “clever claim drafting” to merely recast an ineligible method claim into a system claim, the Court in its per curia opinion decides that, although the claims are “formally drawn to physical objects” it is “often a straightforward exercise to translate a method claim into system form, and vice versa.” The “asserted method and system claims require performance of the same basic process.”
Well, of course the system and method claims require “performance of the same basic process”: the invention! As we have seen, any claim to an invention involves the use of words, and therefore involves “abstraction.” We have also seen that the USPTO “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos” memorandum uses highly abstract words to guide the Examiner (and claim draftsperson) in deciding what is an abstract claim. To provide maximum claim coverage for the inventor, the patent draftsperson drafts system claims as well as method claims. Now, after CLS Bank, because the system claims are in the same patent application as the method claims, the ineligible subject matter in the method claims has infected the system claims with ineligibility.
So, continuing with our example, transforming the above method claim into a system claim would not result in patentability.
As Judges Moore, Rader, Linn, and O’Malley write in their dissenting-in-part opinion, the per curia opinion “lump[s] together the asserted method, media, and system claims…holding that they are all patent-ineligible…giv[ing] staggering breadth to what is meant to be a narrow judicial exception.” These judges predict that this holding may be the death-knell for “hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications systems.”
The consequences of Bilski and other recent cases on 35 USC § 101 have now reached a nadir. The snake has swallowed its own tail. In attempting to establish a Procrustean bed on which to make all computer software claims fit, the Federal Circuit is cutting the legs off software patents. The per curia opinion’s statement in CLS Bank that the approach “might also inform patent-eligibility in other contexts” (i.e. medical treatments, gene patents, etc.) can only make one shudder.