Let’s face it—the Supreme Court will never save us from Alice.
Zachary Silbersher
The Supreme Court has denied the recent bid to fix Alice and Section 101 jurisprudence. In two cases that each petitioned for certiorari, Tropp v. Travel Sentry, Inc. and Interactive Wearables, LLC v. Polar Electric Oy, the Federal Circuit affirmed district court decisions holding the asserted patents directed to ineligible subject matter. The Supreme Court’s denial is particularly acute since the Solicitor General recommended that cert be granted. And it is more painful given that this denial follows another recent instance where the Solicitor General also recommended that the Supreme Court take up Alice. Once again, the patent community mourns another lost chance to clear up the mess that has become Alice. But let’s face it—will the Supreme Court ever save us from Alice? . . . The answer is, probably not.
As with the Solicitor General’s prior bid for the Supreme Court to take up Alice, the Solicitor General’s recent bid explained that the Alice framework has confounded courts. The Solicitor General claimed that “[r]ecent Federal Circuit precedent reflects significant confusion over the application of this Court’s Section 101 decisions” and “[i]n recent years, Section 101 cases have repeatedly fractured the Federal Circuit.” (Br. at 19-20, citations omitted). As a result, Alice has failed to provide a reliable formula for businesses and patent owners to reasonably predict the outcome of Section 101 challenges.
Though not explicit in the brief, the Solicitor General nevertheless sets out the broad outlines for what could be a proposed “solution” to the Alice quagmire. This is important because, were the Court to one day revisit Alice, it may take the Solicitor General’s proposed solution as a starting point.
An easy solution to step one – most “things” are not abstract ideas.
In Interactive, the patents were directed to a wearable content player that can be connected to your smartphone in a manner that allows the smartphone to act as a remote control for the wearable content player. The representative claims were directed to devices. In Tropp, the patent was directed to solving a problem for checked luggage. In particular, TSA will break locks on checked luggage so that they can be inspected. The patent is directed to a method of providing a master key to the TSA so that when the TSA sees a special tag on the luggage, it knows it can use the master key rather than break the lock. The representative claim was directed to a method.
In arguing that the Supreme Court should grant certiorari in both cases, the Solicitor General’s brief comes very close to suggesting that under Alice step one, physical devices should rarely, if ever, be construed as “abstract ideas.” The Solicitor General starts with the familiar premise a mathematical algorithm or a law of nature (e.g., E = mc2) is an abstract idea. From there, the Solicitor General faults too many courts for finding “abstract ideas” in things that are very much concrete, physical and industrial things. The Solicitor General states, “[a]n automobile is not an abstract idea. A remote control is not an abstract idea. A camera is not an abstract idea. Generally speaking, technologies and industrial processes are not abstract ideas.” (Br. at 14). Based on this, the Solicitor General argued that the patent in Interactive, which was directed to a wearable device, is not an abstract idea.
By contrast, the Solicitor General argues that the method claimed in Tropp is an abstract idea. In particular, the claimed method is purportedly abstract because it is directed to a “method of organizing human activity.” It helps coordinate activities between passengers and the TSA, and it claims the process of marketing this activity.
An easy solution to step two – it’s NOT about novelty, enablement or written description.
Moving to step two, the Solicitor General’s propose solution started with the premise that a Section 101 challenge should not hinge on patentability criteria already provided for elsewhere in the statute.
I have previously argued that, as far as laws go, the Alice two-step framework is not a “good” law because it doesn’t do its job. It does not provide patent owners and prospective infringers with sufficient certainty over how courts are likely to apply the framework in the context of a given patent. Laws don’t need to provide 100% certainty. (Afterall, then what would lawyers do all day?) But if their application is not sufficiently predictable, then their utility diminishes. And by that metric, Alice is not useful.
But one could also argue that, the crisis with Alice is not in its formulation, but rather in its mission creep. In another high-profile Alice case, the Honorable Kimberly A. Moore of the Federal Circuit dissented on the ground that “the majority’s opinion expands § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.” In particular, Judge Moore criticized the majority for deeming the patent directed to ineligible subject matter for reasons that were better addressed under the enablement requirement or the novelty requirements.
In the Interactive and Tropp brief, the Solicitor General mirrored Judge Moore’s critique. The Solicitor General faulted the Federal Circuit for finding the Interactive patent failed Alice step two because the patent purportedly did not specify how it “provides a technical improvement over the prior art.” This emphasis on prior art arguably transforms Alice step two into a novelty inquiry, which is already sufficiently addressed in separate provisions of the Patent Statute. The Solicitor General equally faulted the Federal Circuit for its finding that the patents failed to explain “how” they provided “a technology-based solution to a problem unique to the field of the claimed invention.” Again, this critique goes to the question of enablement, not necessarily to eligibility.
Will the Supreme Court adopt a solution like that proposed by the Solicitor General?
Taking a step back, it is easy to see that the Solicitor General is providing the broad brush outlines of a solution that would simplify and clarify the application of Alice’s two-step framework. Under step one, most patents directed to an actual device would not be characterized as an “abstract idea.” That’s not so counter-intuitive—i.e., a physical thing is not an abstract idea. By contrast, method patents that do little more than organize information, without doing anything with that information, would likely be deemed an abstract idea. Drawing that line could be sufficiently bright enough to predictably distinguish the wheat from the chaff. (And it is arguably already embodied in some recent Federal Circuit precedent, i.e., see Weisner v. Google.).
Under step two, the Solicitor General is effectively saying that it’s not an inquiry into novelty, enablement, written description, best mode, or any other criteria for patentability addressed elsewhere within the statute. Because of that, the step two bar may become a relatively low bar that most patents should easily overcome it.
But again, that’s likely because the meaty barriers to patentability already stand in the statute’s novelty and written description criteria—i.e., the invention has to be something new, and the inventor has to adequately disclose it to the public. The focus of Section 101 is not supposed to be the type of barrier where lots of patents pass at the examination stage, but subsequently fail during litigation. Rather, as the Supreme Court previously articulated, the primary focus of Section 101 is weed out patents that preempt use of natural laws. In Alice, the Supreme Court stated that, “We have described the concern that drives [Section 101’s] exclusionary principle as one of pre-emption.”
Overall, there would exceptions at the fringes, but it’s a workable solution. If adopted, it would take much of the teeth out of Alice motions. On step one, Alice would effectively be reduced to method claims that do nothing more than move around information. Asserting device claims would likely create a presumption against a Section 101 challenge. That would diminish their utility considerably to the extent Alice motions could rarely be dispositive for patents asserting both system and method claims.
This solution would also effectively dramatically lower the bar for step two. Once courts were admonished not to import a novelty analysis into step two, that would effectively water down much of the current discussion of whether the claim recites conventional or well-known technology to implement the purported “abstract idea.” If all this happens, then the utility of Alice’s framework could be restored to patent practice.
The Supreme Court won’t save us.
Yet, even if given the chance, will the Supreme Court ever adopt such a solution? Would it take a knife to the past decade of Alice jurisprudence that is riddled with mission creep, over expansion and improper motives? At least one judge on the Federal Circuit previously suggested that the purpose of Alice is to make patent litigations shorter, even though there is no support for that in the Statute.
Rather, the Supreme Court may believe that the mission creep mess created by Alice is not its job to fix. That’s what lower courts are for. They made the mess; they should clean it up. The Supreme Court is not needed to sweep in and admonish courts how to properly interpret the decision that it issued years ago.
Moreover, Alice has confounded courts and frustrated litigants. But the problem is not necessarily a Circuit split or sharp disagreement over two principled applications of existing precedent. Rather, the problem is borne out of lower courts attempting to make Alice’s framework something that the Supreme Court never suggested it should be. Given this, the appetite for the Supreme Court to step in as babysitter or counselor is likely very low.
In fact, Judges on the Federal Circuit have echoed as much. The Honorable S. Jay Plager has stated, “there is no particular incentive for the Supreme Court to immerse itself again in this intellectual morass . . . [and] [i]t will take a special effort by the judges and the patent bar to gain the Court’s attention.”
Judge Plager has therefore admonished other courts that, the fix to Alice is not in a futile hope that the Supreme Court will clean up a mess they didn’t make. Rather, the fix starts with the lower courts taking a more judicious approach to the framework, and no longer viewing it as an easy mechanism to short-circuit patent cases from the get go. In light of the Supreme Court’s repeated refusal to take up Alice again, Judge Plager’s prior admonishment resonates loudly.