PATENT ELIGIBILITY'S DOCTRINAL EXCLUSIONS ... LATELY, A SCARY MOVIE TOO DIFFICULT TO WATCH: CONCRETE SOLUTIONS AND SUGGESTIONS.

• Author: Downing, Kristy J.

ABSTRACT INTRODUCTION I. THE PURPOSES OF THE U.S. PATENT SYSTEM AND ITS RELEVANCE TO PATENT ELIGIBILITY A. Background on U.S. Patent Law B. Historical [section]101 C. Modern Patent Law & [section] 101 II. THE HISTORY OF ELIGIBILITY'S DOCTRINAL EXCLUSIONS A. Early [section] 101 precedent B. Recent[section] 101 precedent III. THE EMPEROR IS UNCLOTHED-MODERN HORRORS TO APPLYING THE DOCTRINAL EXCLUSIONS A. There is Judicial Paranoia About Whether Claims are Actually Directed to B. The Slithery Serpent-Like Idea of an "Abstract Concept" is Way To Ambiguous and Flexible to be a Standard for Patentability C. The Shape-Changing Second Prong of the Alice Test Regarding Conventionality is Improperly Applied as an Anticipation Standard Instead of Being Instructive as to What Substantially Forecloses Uses of a Fundamental Concept D. Industry "Mommies " and "Daddies " Keep Fighting! Most Decisionmakers Do Not Even Agree on Eligibility E. The Mysterious Future of Human Innovation Requires Eligibility to be Unforeseeably Adaptable While the Law Needs Predictability IV. PROPOSED SOLUTIONS A. "Beginning With The End in Mind": Focusing on the Policy Reasons Behind the Doctrinal Exclusions B. Removing Abstractness by Pie Charting C. Legislative Remedies 1. Narrowing Definitions D. Patent Office Remedies E. Judicial Remedies Are, No Offense, The Least Likely Candidate Introduction

I have a confession to make: while being an admirer of patent eligibility, pre-Mayo & Alice, I have had to cease "watching the show" lately due to the disquieting way the judicial exclusions of [section] 101 are being applied prejudicially towards invalidity. (1) The notion of an "abstract concept" being so narrowly drawn as to include almost anything or "conventional" claim language disqualifying an invention from eligibility has produced an erratic wreckage too gruesome to fixate upon. (2) Innocent, reasonably harmless innovations in hard-core sciences like data processing, digital imaging, medical diagnostics and power-grid management have gotten sucked into the vortex of what I would like to call judicial paranoia on eligibility; these deprived inventions are never to return to the intellectual-property scene again, commercially relevant ones nonetheless. (3)

Historically, courts have carved out doctrinal exclusions to patent eligibility for concerns of a "patent monopoly" on fundamental building blocks interfering with the "progress of science and useful arts" more so than promoting them. (4) Yet, lately that policy has gotten lost; (5) instead eligibility has been used as grounds for invalidating issued patents where the invention is arguably sufficiently limited in practical applications of a fundamental concept. (6) Given reasons for ineligibility appear, in many ways, phantom like, depending upon arguments rather than evidence. (7) At least with [section][section]102 and 103, one has the objective teachings of the prior art to justify why an invention is unpatentable; (8) with [section] 101, however, all reasons seem to essentially summate to a "because [an authority] said so" reply. (9)

As patent stakeholders try to piece together an understanding of what technology cannot be protected by U.S. patent laws we are constantly thrown off guard by eligibility. (10) Many types of sophisticated technologies or consumer products have been negatively affected by the modem anxieties of [section] 101 including computing, banking, and medical diagnostics and products. (11) Patents are salient to those industries, impacted stakeholders include Global 1000 companies, (12) non-practicing entities, (13) attorneys (14) and solo inventors. (15)

This horrific scene is due to a number of factors within our control and some others that are not. On the one hand, it is hard to tailor fit a standard to technology unforeseen. (16) On the other hand, today, the way the judicial exclusions are applied is too fungible for reliability. (17) One would likely have more reliable odds at a Las Vegas game than in winning eligibility. (18) These are technological areas where we want to "promote the progress of science and useful arts" as patents are intended to do. (19) Additionally, there is no consensus about eligibility, one man's trash is another's treasure. (20) Experts are constantly bickering about eligibility. (21) Courts are also pausing on defining "abstract idea" in clear and concrete terms for the patent community, while invalidating patents on that very basis. (22) The "conventional" elements prong of Alice is being applied more like an abbreviated [section] 102/103 analysis. (23)

This article kicks the can-of-solution around with respect to all three branches of the federal government. Legislative proposals being discussed at the U.S. Patent Office and bar organizations are reviewed. Also considered are the recent, frequently published guidelines by the U.S. Patent Office. Moreover, the article critically hones in on contemporary U.S. Court of Appeals decisions. Perhaps more significantly, this article focuses on the original purposes of the doctrinal exclusions: to ensure that fundamental building blocks to innovation are not significantly foreclosed by the grant of a U.S. patent. (24) It is time that we return to those basics. Next, because eligibility deals with abstractness a pictorial suggestion of pie-charting any potential foreclosure of a fundamental concept is also made. By removing the inherent intangibility of abstract concepts perhaps practitioners can migrate towards a universal application and more reliability.

1. The Purposes of the U.S. Patent System and Its Relevance to Patent Eligibility

   1. Background on U.S. Patent Law

      The U.S. patent system has a specific purpose in mind and its origins are constitutional. Article I, Section 8, Clause 8 of the U.S. Constitution grants Congress the authority to make laws to "promote the Progress of Science and useful Arts...." (25) Therefore, the U.S. patent system is designed simply to reward and incentivize scientific and useful progression. The Drafters reasoned upon a specific means by which the U.S. Congress could incentivize innovation in this country. Proper motivation was fashioned "by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (26) This is commonly referred to as a "monopoly" on the patented invention because the issued patent grants the inventor authority to exclude others from making, using, offering to sell, selling or importing their invention anywhere in the United States. (27) In essence, the Framers believed that if inventors (and/or their investors) could be given exclusivity to their inventions for a limited time doing so would provide them with an ability to fiscally profit from their ingenuity.

      Patent owners are not the only ones to benefit from patent laws; the fact that Congress architected a system of property rights for inventions signals that the Republic had (and has) an interest in the U.S. patent system as well. Many companies and investors are more likely to invest where intellectual property can be respected. (28) Investing makes inventions more readily available to the masses. Some examples of patent inventors whose inventions were made more publicly accessible by investor interests include Edison for his electric grid distribution system, (29) Tesla for his brushless electric motor and utility of alternating current, (30) McCoy for his locomotive lubricating system, (31) and Magie for her Monopoly board game. (32) It is difficult to argue that the U.S. patent system has not met its purpose because the U.S. remains one of the most innovative, and developed countries in the world. (33) Science and our society have certainly progressed under the 228 year tenure of the U.S. patent system. (34)

   2. Historical [section] 101

      As integral as U.S. patent rights have been to our country's development, patent rights are not without limitations. As expressed in 35 U.S.C. [section] 101, one limitation pertains to what types of inventions or discoveries can be protected by a U.S. patent or what inventions are eligible for U.S. patent.35 Inventions eligible for patent are limited to "processes], machine[s], [articles of] manufacture, or composition (35) of matter" and their improvements under the statute. (36) So, an RF wave signal would be excluded from patent protection under the Code while a method for generating the same might be eligible for patent. (37)

      In addition to those codified categories of patent eligible subject matter, U.S. courts have taken it upon themselves to enumerate other limits on patent eligibility. (38) Their doctrinal exclusions include "laws of nature, physical phenomena, and abstract ideas." (39) These doctrinal exclusions, though more than (130) years old, for some reason have not been incorporated into the United States Code. (40) However, the exclusions are just as etched in stone as any section of the U.S. Code because the patent industry universally recognizes them as exclusions to patentability. (41)

      The policy behind the doctrinal exclusions is logical: courts have reasoned that if "monopolies" are granted on fundamental building blocks of scientific ingenuity then such monopolies might hinder the "Progress of Science and Useful Arts" more than they would promote it. (42) It might be too cumbersome, in so many words, for a person of ordinary skill in the art to "design around" a law of nature, such as e.g., Newton's theory on gravity, photosynthesis or pricing according to natural demand and supply. Such a broad property right would restrict all innovations for systems that depend upon, for example, the Earth's natural gravitational pull like flight or ground vehicle propulsion and even building static structures. A "patent monopoly" on photosynthesis, as another example, would limit humanity from growing crops or using the sun's energy for the same, leading potentially to...