A pair of Federal Circuit opinions last week rejected patents involving patent-ineligible subject matter.
What does that include, you ask?
As Blawgletter noted last year in "You Still Can't Patent Ideas":
Section 101 of the Patent Act allows patents on "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof". 35 U.S.C. 101. But, the Supreme Court has held, it does not make laws of nature, natural phenomena, or abstract ideas patentable. Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013). Those things "are the basic tools of scientific and technological work". Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
We went on to discuss the then-new ruling by the Supreme Court on "business method" patents that fail the section 101 test because they involve "abstract ideas" in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).
Alice applied the analytical framework that the Court announced in a "laws of nature" case it decided two years earlier – Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (U.S. Mar. 20, 2012). The framework calls for a two-step process:
First, we determine whether the claims at issue are directed to a patent ineligible concept. Id. at 1297. If the answer is yes, then we next consider the elements of each claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Id. at 1298. The Supreme Court has described the second step of this analysis as a search for an “inventive concept”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. at 1294;
Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 14-1139 (Fed. Cir. June 12, 2015).
The two cases concerned paternal DNA — "cffDNA" — floating in the bloodstream of pregnant women and a method for helping merchants charge the highest gettable price in light of changing market conditions. The Federal Circuit in both instances affirmed the district courts' rejection of the patents as relating to unpatentable subject matter.
In the "laws of nature" case, the court ruled that patent failed the "inventive concept" requirement of Mayo:
The method at issue here amounts to a general instruction to doctors to apply routine, conventional techniques when seeking to detect cffDNA. Because the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful. The only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum.
Ariosa Diagnostics, slip op. at 11.
The "abstract ideas" case made a similar thudding sound:
At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions. Both the prosecution history and the specification emphasize that the key distinguishing feature of the claims is the ability to automate or otherwise make more efficient traditional price-optimization methods. . . . But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.
OIP Technologies, Inc. v. Amazon.com, Inc., No. 112-1696, slip op. at 7-8 (Fed. Cir. June 11, 2015) (citing Alice, 134 S. Ct. at 2359).
Ariosa and OIP underscore the high stakes and uncertain outcome of challenges to patentability in cases involving biological material or business methods. The Federal Circuit's latest decisions make clear that the "inventive concept" requirement of the Mayo framework requires more than using concepts by means of "conventional" techniques. Uses like that simply do not "transform" the idea into patentable subject matter.
So long Blawgletter, hello The Contingency
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