By: Robert R. Sachs
By design and practice patent claims necessarily make use of abstractions. This has been long recognized:
The difficulty which American courts…have had…goes back to the primitive thought that an “invention” upon which the patent gives protection is something tangible. The physical embodiment or disclosure, which, in itself is something tangible is confused with the definition or claim to the inventive novelty, and this definition or claim or monopoly, also sometimes called “invention” in one of that word’s meanings is not something tangible, but is an abstraction. Definitions are always abstractions. This primitive confusion of “invention” in the sense of physical embodiment with “invention” in the sense of definition of the patentable amount of novelty, survives to the present day, not only in the courts, but among some of the examiners in the Patent Office. E. Stringham, Double Patenting, Washington D.C., Pacot Publications(1933) (emphasis added).
The black letter law statement that claims are not limited to the disclosed embodiments, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), only makes sense because claims necessarily make use of abstractions to cover a wide range of embodiments. As the Phillips court states, “persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.” Id. at 1323 (emphasis added). The only way one does not confine their definition to an exact representation is by the use of abstractions.
That patent claims use abstractions—as opposed to abstract ideas—is easily demonstrated. Consider the following claim:
A method of preparing a dessert, comprising:
freezing a volume of water into ice;
granulating the ice;
compacting the granulated ice; and
applying a sweet liquid to the granulated ice.
No one would argue that this claim for making the familiar sno-cone is not patent-eligible subject matter. The claim can be broadened by applying the process of abstraction as follows:
A method of preparing a dessert, comprising:
freezing a volume of liquid into a frozen portion;
granulating the frozen portion;
compacting the frozen portion; and
applying a sweetener to the frozen portion.
Here, the specific concrete nouns, “water,” “ice” and “sweet liquid” have been replaced with broader abstractions, “volume of liquid,” “frozen portion” and “sweetener.” The result here is not a claim on the “abstract idea” of making dessert, but simply a broader claim covering different types of treats, including ice cream. Of course, the verbs here could have been abstracted as well: freezing could be replaced by cooling, granulating by fragmenting, etc., again altering the scope of coverage, but always resulting in a clearly patent-eligible claim on a real physical process.
The process of claim drafting by abstracting from specific nouns and verbs to more general ones is not some artifice or exercise in “clever drafting.” Rather it is the fundamental way in which claims are written. Contract attorneys use particular clauses for granting a license or making an offer. So too patent attorneys select particular terms, whether narrow or broad ones, as necessary to distinguish the claim over the prior art. “The choice of which word (gerund) to use for introducing a method step is similar to the choice of which word to use for describing elements in apparatus claims. Generally, one chooses the broadest word that the prior art will allow.” Farber, Landis on Mechanics of Claim Drafting, 3rd Edition, Practicing Law Institute (New York 1990), p. 102. Indeed, the parallel between contract drafting and claim drafting is particularly apropos because patent claims form the essential part of the bargain between the grant of the patent right in exchange for public disclosure of the invention.
In view of the foregoing, it is manifest that there is a difference between a broad process claim that uses various abstractions and a claim that itself is for an abstract intellectual idea. One can have the former, without necessarily having the latter. A broad claim is acceptable, and may be patent-eligible and patentable (novel and non-obvious) as long as it is definite and supported by the patent specification. Thus, the proper analysis is whether the subject matter of the claim as a whole is directed to abstract intellectual ideas, not whether the claim makes use of abstractions, since every claim does so.
This conclusion is the actual teaching of the historical patent law cases like Le Roy v. Tatum, O’Reilly v. Morse and Tilghman v. Proctor, which often are cited to invalidate broad claims as unpatentable “abstract” claims. Instead, these cases can be explained not as rejecting claims as nothing more than “abstract” per se, but rather as filtering out claims that were “abstract” in the sense of being so overly broad that they were anticipated, indefinite, or lacking enablement.
Similarly, the Supreme Court’s favorite presumption that patent attorneys seek to claim abstract ideas through skillful manipulation is simply absurd. No patent attorney would knowingly attempt to claim an abstract intellectual idea: either such a claim would be invalid under well-settled law, it would be impossible to establish infringement (how you establish what someone is thinking?), or it would be so broad as to read on the prior art. Nor is claim drafting, as some suggest, the “lawyer’s playground,” any more than is drafting contracts, licenses, wills, deeds, etc. In no other area of the law is that language of a negotiated contract—and that’s essentially what a patent claim is—so readily ignored as it is on the legal basis of patent-eligibility.
This analysis is consistent with broad rubrics that Judges Radar and Linn have proposed. In Research Technologies v. Microsoft, Radar required that the “abstract” “characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context” of patentability under Sections 102, 103, and 112. Similarly, in his majority opinion in CLS v. Alice (which was vacated and essentially reversed en banc), Linn proposed that a claim is patent-eligible when “it is not manifestly evident that a claim is directed to a patent ineligible abstract idea.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 685 F.3d 1341, 1352 (Fed. Cir. 2012).
This statement is not a radical change in the law, or the imposition of a new standard. Rather, this rule is an implementation of the statutory presumption of validity that all patents enjoy: “Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims.” 35 U.S.C. §282. This presumption applies equally to 35 U.S.C. § 101, as it does to §§ 112, 102, and 102. While it has not been definitely settled by the Federal Circuit, a majority of court agrees that the presumption applies. Rader, joined by Linn, Moore and O’Malley states “we believe the presumption of validity applies to all challenges to patentability, including those under Section 101 and the exceptions thereto.” CLS Bank Int’l v. Alice Corp. Pyt. Ltd. (en banc). Radar, at 26. Similarly, Lourie, joined by Dyk, Prost, Reyna and Wallach, states “as with obviousness and enablement, that presumption applies when § 101 is raised as a basis for invalidity in district court proceedings.” Lourie, at 23.
In our next post, we’ll consider the importance of claim language in computer-implemented inventions.
*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.