Will the Supreme Court Unravel the Patent-Eligibility Tangle?

by Jo Dale Carothers, Ph.D.
The IP Law Blog

Since the Alice v. CLS Bank and Mayo v. Prometheus decisions, district courts and the Court of Appeals for the Federal Circuit has struggled to determine and navigate the boundary between what is and what is not patent-eligible subject matter. The result has been a tangle of intertwined decisions that create an extremely wide and fuzzy boundary. Attorneys are often left to throw up their hands when asked whether a new invention is patentable or whether an existing patent will likely withstand a patent eligibility challenge under 35 U.S.C. § 101.  Some would argue that Federal Circuit decisions are currently dependent on which panel of judges hear the case because the present law is so ambiguous and subject to different interpretations.   Therefore, the legal community, inventors, investors, corporations, and the public would greatly benefit from the U.S. Supreme Court’s guidance on this issue.

Section 101 of Title 35 defines patent-eligible subject matter, stating “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

In Alice, the Supreme Court recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under § 101. To determine whether claims are patent eligible the Supreme Court set forth a two-part test in Mayo consisting of the following steps:

Step 1:  The court determines whether the claims are directed to an abstract idea.

Step 2:  If the claims are directed to an abstract idea, then the court determines whether the claims include elements showing an inventive concept that transforms the idea into a patent-eligible invention. Step 2 is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”

However, this two-step test is being applied in different ways by different courts and Federal Circuit panels, which leads to inconsistent or unpredictable results.  For example, most would be surprised to learn that various physical devices are being deemed abstract ideas and not patent eligible.  For example, consider Claim 1 of U.S. Patent No. 6,611,289 (the “’289 patent”), entitled “Digital Cameras Using Multiple Sensors With Multiple Lenses,” which recites:

  1. An improved digital camera comprising:
  • a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
  • two lenses, each being mounted in front of one of said two image sensors;
  • said first image sensor producing a first image and said second image sensor producing a second image;
  • an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
  • an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image;
  • and a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

A district court invalidated the ’289 claim as going to the abstract idea of taking two pictures and using one picture to enhance the other.  The Federal Circuit majority agreed, finding that the digital camera components “‘are recited to effectuate the resulting ‘enhanced’ image,’ ‘were well-known and conventional,’ ‘perform only their basic functions,’ and ‘are set forth at a high degree generally,’ and therefore merely provide ‘a generic environment in which to carry out the abstract idea.’”

Yu and Zhang, the ‘289 inventors, filed a cert petition to the U.S. Supreme Court.  They argue that if their patent, which claims an improved digital camera for enhancing images, is abstract and not patent eligible, then the patentability of a wide variety of technical inventions is threatened.

In their petition, Yu and Zhang pose the question should a patent claim be considered “as a whole” in accordance with the Supreme Court’s decision in Diamond v. Diehr (1981) or instead, should all conventional elements of the claim be disregarded prior to determining its “point of novelty” as set forth in the older precedent Parker v. Flook (1978)?

Yu and Zhang explain that the Diehr approach, which they support, considers a claim “as a whole” to determine whether the claim recites a patent ineligible concept or a patentable concept.  In contrast, they explain that the Flook approach deems a claim “ineligible if its ‘point of novelty’ is an ineligible concept and the remaining limitations are all well known.”  Yu and Zhang argue that application of the two-step Mayo test leads to different results depending on whether the Diehr or Flook approach is used for evaluating claims.

They argue that under Diehr, “step one involves determining whether the focus of the claim “as a whole” performs a function that the patent laws were designed to protect, and step two involves determining whether any additional limitations by themselves or in combination with an ineligible concept provide an advance over the prior art.”

Under Flook, they assert that in step one, “the determination as to whether the ‘point of novelty’ of a claim is an ineligible concept is made only after disregarding any additional elements that individually are deemed ‘generic’ or ‘conventional.’”  In step two, “[a] claim deemed to include an ineligible concept in step one only survives if the additional elements provide a significant advance.”  However, Yu and Zhang argue that in most cases, step two is a self-fulfilling prophecy because the additional elements are those that were already deemed “conventional” or “generic” rather than a significant advance.

Yu and Zhang suggest that a court’s choice as to whether to apply the two-step Mayo test under the Diehr approach or the Flook approach “is often dispositive of the eligibility determination,” and unfortunately different judges are taking different approaches.  Therefore, they assert the ability of businesses to invest with predictability is being destroyed.

It has long been understood that a novel combination of known elements or steps can be patentable, which would support Yu and Zhang’s argument for considering a claim as a whole.  Further, Yu and Zhang point to Judge Newman’s dissent, which states “[a] device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting.”  Judge Newman goes on to say that “[t]he ‘abstract idea’ concept with respect to patent-eligibility is founded in the distinction between general principle and specific application.”

Yu and Zhang also raise a broader concern that the decision in their case “could be applied to call into question the patent-eligibility of virtually every machine that uses a processor to perform any part of its functionality, regardless of the specificity with which the structural components are defined in the claim.

Time will tell whether the Supreme Court clarifies patent-eligibility law by granting cert to consider Yu and Zhang’s case or through another case.  Regardless, guidance is needed either from the Supreme Court or Congress to untangle the current situation.