Fishing for Eligibility in Murky WatersLast week, the Federal Circuit decided that claims related to a method of fishing that involved evaluating the water to be fished were not patent-eligible under 35 U.S.C. § 101. It is a bit of a head scratcher as to why this opinion is deemed precedential — the eligibility analysis employed here under the Alice/Mayo framework certainly did not involve wading into unchartered waters. In any event, In re: Christopher John Rudy is a good reminder as to what the Federal Circuit considers as patent eligible (or not) under the U.S. Supreme Court’s Alice decision. In addition, the opinion makes clear that, when analyzing subject matter eligibility, Federal Circuit caselaw and Supreme Court precedent controls even if USPTO guidance suggests otherwise.

Rudy applied for claims relating to a method for fishing that involved evaluating the water to be fished and selecting the color of fishhook based on a table in the claim.  The Examiner rejected the claims of his patent application as patent ineligible under § 101.  After the Patent Trial and Appeal Board (PTAB) agreed with the Examiner, Rudy appealed the PTAB’s decision.  Among other complaints, Rudy accused the PTAB of improperly relying on the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Office Guidance) “as if it were prevailing law” even though, according to Rudy, the Office Guidance is “a shortcut to ease Mayo / Alice test application, with no force or effect of law and ignoring the law.”  The court agreed with Rudy that the Office Guidance “is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis.”  The opinion confirmed that the two-step framework set forth by the Supreme Court in Alice is the governing rule of law concerning the judicial exceptions to 35 U.S.C. § 101 and “[t]o the extent the Office Guidance contradicts or does not fully accord with [Federal Circuit] caselaw, it is [Federal Circuit] caselaw, and the Supreme Court precedent it is based upon that must control.”

Unfortunately for Rudy, the court concluded that “[a]lthough a portion of the Board’s analysis is framed as a recitation of the Office Guidance, in this particular case the Board’s reasoning and conclusion are nevertheless fully in accord with the relevant caselaw.” In this vein, the court reasoned that at Step 1 of the Alice/Mayo test, i.e., whether the claim at issue is directed to a patent-ineligible concept, the PTAB correctly found that the illustrative claim 34 is directed to the abstract idea “of selecting a fishing hook based on observed water conditions.” The court seized on Rudy’s concessions that “all that is required of the angler is observation, measuring, and comparison with a predetermined chart” and that “even a fish can distinguish and select colors . . . the fisherman can do this too” to conclude that the claim merely relates to the mental process of hook color selection. In fact, dismissing Rudy’s argument that a person fishing might use some instrument to measure the light transmittance of the water, the court explained that, because the claim itself does not include such a limitation, the claim is still abstract.

The court also could not find an inventive concept sufficient to confer patent eligibility under Step 2 of the Alice/Mayo test. In particular, each of the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the hook color) is abstract. Considered together, they merely repeat the core idea of selecting a fishing hook based on observed water conditions. As to Rudy’s complaint that the PTAB should have evaluated all of the rejected claims rather than only considering one independent claim as illustrative, the court explained that there was nothing distinctive in the other rejected claims that would have required independent analysis. Indeed, the court opined that the different hook color chart in the other independent claim would not have led to a different conclusion with regard to eligibility.

It never seems fair to have the benefit of 20/20 hindsight when evaluating these decisions. But it is difficult not to make some observations here. First, this application was filed decades earlier on October 21, 1989. In fact, the PTAB’s affirmation of the Examiner’s rejection of the claims at issue in the appeal came in just shy of the 30-year anniversary of the application filing (and four years after they were finally rejected by the Examiner).  Setting aside the almost mind-blowing aspect that a patent application filed over 30 years ago is even still pending, it raises the obvious question as to why Rudy decided to dig in and fight about the eligibility of the rejected claims when there was nothing unexpected in the court’s decision here. Second, this appeal reminds me of a few quotes from David Lynch’s book entitled Catching the Big Fish: Meditation, Consciousness, and Creativity:

When you’re fishing, you have to have patience. You bait your hook, and then you wait.

If you want to catch little fish, you can stay in the shallow water. But if you want to catch the big fish, you’ve got to go deeper.

Rudy certainly had patience (decades-worth). He definitely went deeper with four PTAB appeals and, including the current one, two appeals to the Federal Circuit — even when there were allowed claims in the application. But, this might just be one of those situations where it was time to cut bait instead of pursuing the bigger fish.

A Method of Diagnostic Sample Preparation Is Held Valid Under Mayo/Myriad, but the Diagnostic Test Was Held InvalidNearly five years ago the U.S. Court of Appeals for the Federal Circuit (CAFC) decided the controversial case of Ariosa v. Sequenom. In Sequenom the invention was a radically new method of fetal genetic testing by amplifying free paternal DNA from the mother’s blood. This test has today largely replaced the previous method of amniocentesis, which was an invasive test with a very high risk of complications. There was no evidence that anyone had ever conceived of testing a pregnant woman’s blood for fetal DNA (paternal or otherwise) for any purpose. The claims were only to selectively amplifying paternal DNA; no abstract diagnostic step was claimed. The CAFC considered the act of amplifying paternal DNA to be a mere recognition of a natural phenomenon: that fetal DNA is present in the mother’s bloodstream. The CAFC decided that remaining claim limitations, such as the use of the polymerase chain reaction (PCR), were too well known and conventional to add any inventive concept to the recognition of the natural phenomenon. Although the CAFC recognized that the invention in question was quite brilliant and highly useful, replacing the risky procedure of amniocentesis with a simple blood test, they famously repeated the Supreme Court’s commandment that “groundbreaking, innovative, or even brilliant” inventions do not necessarily involve an “inventive concept” under the law.

In an unusual turn, the CAFC has held two closely related patents to be valid in a dispute between the same parties. The patent in dispute in the more recent case (Illumina, Inc. v. Ariosa Diagnostics, Inc.) did not claim the fetal DNA test itself, but a method of preparing the sample for testing for fetal DNA. The inventors developed a method to isolate acellular DNA of maternal origin from acellular DNA of fetal origin in the blood of pregnant woman; the isolated fetal DNA can then be genetically analyzed. It was discovered that the maternal DNA is mostly above 500 bp in size, whereas the fetal DNA is mostly below 500 bp in size. Accordingly, the inventors tested and patented a method of separating acellular DNA from blood based on size.  Claim 1 of U.S. Pat. 9,580,751 was one claim analyzed in the decision, which reads:

  1. A method for preparing a deoxyribonucleic acid (DNA) fraction from a pregnant human female useful for analyzing a genetic locus involved in a fetal chromosomal aberration, comprising: (a) extracting DNA from a substantially cell-free sample of blood plasma or blood serum of a pregnant human female to obtain extracellular circulatory fetal and maternal DNA fragments; (b) producing a fraction of the DNA extracted in (a) by: (i) size discrimination of extracellular circulatory DNA fragments, and (ii) selectively removing the DNA fragments greater than approximately 500 base pairs, wherein the DNA fraction after (b) comprises a plurality of genetic loci of the extracellular circulatory fetal and maternal DNA; and (c) analyzing a genetic locus in the fraction of DNA produced in (b).

The court categorically stated that methods of medical diagnosis cannot be patented, but methods of medical treatment can be patented; however, the court also said that the claims in this case were neither methods of medical treatment nor methods of medical diagnosis.

The court applied “step 1” of the Alice/Mayo test for patent eligibility to determine whether the claims were “directed to” one of the judge-made exceptions to patent eligibility, those being “natural phenomena,” “laws of nature,” and “abstract ideas.”  The court found that the invention utilized a “law of nature,” specifically that maternal DNA in the blood tends to be larger than fetal DNA in the blood. However, in the court’s opinion “… the claims are not directed to that natural phenomenon but rather to a patent-eligible method that utilizes it.”

The court justified upholding the validity of this patent while invalidating the patent for the underlying test based on its understanding that the instant patent claimed method “change[s] the composition of the mixture, resulting in a DNA fraction that is different from the naturally-occurring fraction in the mother’s blood. Thus, the process achieves more than simply observing that fetal DNA is shorter than maternal DNA or detecting the presence of that phenomenon.” The court contrasted the current claims with those that were previously invalidated by saying that the previously invalidated claims were directed only to “detecting a natural phenomenon.”

This opinion creates the possibility, that although detecting a biomarker cannot be patented, a process of isolating an analyte can be patented. This provides a potentially advantageous approach to patenting new methods of diagnosis based on newly recognized biomarkers – patent the method of isolating the biomarker or otherwise preparing the sample for analysis. The viability of that approach of course depends on whether the method of isolating the biomarker is otherwise patentable, i.e., it must be novel and non-obvious. This decision further refines the CAFC’s position on the patentability of method of medical diagnosis, methods of medical treatment, and related inventions.

KPN is a Dutch telecom company that owns a U.S. patent for detecting errors in data transmission. Last year, the U.S. District Court for the District of Delaware invalidated the patent as ineligible subject matter, but on Friday, a panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed. So, let’s look at what the CAFC said about this data-processing patent.

Check data methods

Error-Checking Patent Held Patent EligibleAnytime you send data, there is a possibility that some of the data gets garbled. One way to check for transmission errors uses “check data.” Check data methods are good at detecting random errors in data, but traditional check data methods can fail to detect some non-random, systematic errors. KPN’s patent discloses the improvement of a check data method that succeeds in detecting systematic errors.

So, what is check data? Computers represent a block of data as a binary number, a long string of 1’s and 0’s that stands for the texts, photos, and payments we send electronically. Check data is a smaller number — i.e., a shorter string of 1’s and 0’s — that is computed from the block of data.

When a device sends a block of data, it also sends the check data for that block. Then, when another device receives the data, the receiving device recomputes the check data. If the receiving device gets a different answer than the sending device told it to expect, there was an error in the data transmission.

Check data methods are good at detecting most random errors. But some errors slip through because sometimes a particular change to the data does not change the check data computed on it. In that case, when the receiving device computes the check data, it gets the answer it was told to expect, and the error goes unnoticed.

If the errors are random, that will not happen too often. But if the undetected error is a non-random, repeating, systematic error, then the check data methods will miss it every time. Enter KPN’s patent.

The ’662 Patent

In U.S. Patent No. 6,212,662, KPN improves check data methods by varying the function that generates the check data. Though a systematic error might escape one check data function, it won’t escape every check data function. So, by changing the check data function, the receiver will eventually notice the systematic error.

The ’662 patent makes four claims, though only claims 2-4 were preserved for appeal.

  1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
    a generating device configured to generate check data; and
    a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
    wherein said varying device includes a permutating device configured to perform a permutation bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
  2. The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
  3. The device according to claim 2, wherein the varying is further configured to modify the permutation based on original data.
  4. The device according to claim 3, wherein the permuting device includes a table in which subsequent permutations are stored.

The ’662 Patent is a device patent. The device of claim 1 comprises a generating device and a varying device. The varying device permutes the data block — alters the order of the 1’s and 0’s — before computing the check data. Claim 2 explains that the varying device permutes data blocks differently at different times. Claim 3 describes modifying the permutation based on the original data. And Claim 4 further explains storing permutations in a table.

District Court: ’662 Patent is abstract and fails Alice

The District Court held that the ’662 Patent attempts to claim an “abstract idea” with no inventive concept, but under the Supreme Court’s guidance in Alice, claims that are directed to abstract ideas are not patent-eligible, unless the claims contain a saving inventive concept. So, the District Court invalidated all claims of the ’662 Patent.

Specifically, the District Court found that the claims were directed to “the abstract idea of reordering data and generating additional data.” The claims were abstract because they do not tell “how data is reordered, how to use the reordered data, how to generate additional data, that any data is transmitted [or] how the permutations are modified in time or modified based on the data.”

Having decided that the claims were abstract, the District Court then looked for an inventive concept. Interestingly, the District Court thought that the specification might have disclosed such an inventive concept. But, it concluded that even if so, the inventive concept was “not captured in the claims.”

Federal Circuit: ’662 Patent is not even abstract

The CAFC, on the other hand, never reached the question of inventive concept. The court decided claims 2-4 were not directed to an abstract idea in the first place. Instead, the ’662 patent is a “non-abstract improvement in an existing technological process.”

Specifically, the court read the claims as a non-abstract improvement in error checking with data transmissions. The court drew parallels with last year’s decision in Finjan Inc. v. Blue Coat Systems.

The Finjan patent had claimed a method of providing computer security by identifying potentially dangerous operations. It improved on earlier methods that only identified known dangerous operations. The court affirmed the validity of the patent. Its claims were not abstract, because they were a concrete improvement of a computer security system.

In Finjan’s wake, the court reversed the District Court’s holding of invalidity. It reasoned that the claims were also directed to a non-abstract improvement over the prior art because they “employ a new way of generating check data that enables the detection of persistent systematic errors in data transmissions that prior art systems were previously not equipped to detect.”

In reaching its decision, the court leaned heavily on the specification. One argument against the patents was that “the specification does not mention any technological benefit of using permutations to generate check data.” But the court did find the benefits by tying together passages columns apart. The court did not quite go so far as to require that specifications discuss a technological benefit, but it was helpful to KPN that theirs did.

Practice points

Though the bar for software and related patents remains high, the CAFC’s opinion offers a few pointers.

First, spend the time to flesh out the specification. The claims, not the specification, largely define the scope of the patent. Consequently, we tend to devote effort to get claims into eligible shape, but the court leaned on the specification for two important factors in its decision that the claims were not abstract.

The specification established that the claims were an “improvement in an existing technological process.” The specification gave a good picture of the prior art and the existing error checking processes. The court cited the specification — not the claim itself — for the fact that claim 2 “improves the ability of prior art error detection systems to detect systematic errors.”

The specification also established the technological benefit of the matter claimed. Again, the court did not hold that specifications must discuss a technological benefit, but the appellees argued as much. KPN is probably relieved that the specification did clearly express the benefit of the permutation of claim 1. That saved the court the trouble of a difficult legal decision.

Second, take care that the claims recite a specific implementation. For KPN, this meant specifically reciting the last application step: that the varying device be configured to “vary original data prior to supplying said original data to the generating device”; that the original data is varied by a “permuting device configured to perform a permutation”; and that the generating device “generate check data.”

But keep in mind that a claim of improvements to a tool “that is part of an existing system … does not necessarily need to recite how that tool is applied in the overall system.” Instead, it should be enough to claim a specific means or method. Still, it will be best — if not exactly required — for at least the specification to describe how the improved tool is used in the existing system. Doing so goes along with the first point above to flesh out the specification.