You Can't Get Anything You Want at Alice's Restaurant
04/08/14 09:11 Patent Eligibility | Patent Validity
This blawg is called Alice's Restaurant, and it's about Alice, and CLS Bank, but Alice's Restaurant is not the name of the case, that's just the name of the blawg, and that's why I called the blawg Alice's Restaurant.
You can’t get anything you want at Alice's Restaurant You can’t get anything you want at Alice's Restaurant Walk right in it's around the back Just a half a mile from the railroad track You can’t get anything you want at Alice's Restaurant
Now it all started three venues ago when Alice and CLS went up to visit United States District Court for the District of Columbia. As Alice Explained:
When obligations arise from a trade made between two parties, e.g., a trade of stock or a trade of foreign currency, typically, there is a gap in time between when the obligation arises and when the trade is ‘settled.’ In a number of financial contexts, the process of exchanging obligations, or settlement, is separate from the process of entering into a contract to perform a trade. For example, if two banks wish to exchange large sums of currency, they would enter into a binding agreement to make a particular exchange but would postpone the actual exchange until after the price is set and the agreement confirmed, typically two days. After those two days, both banks would “settle” the trade by paying their predetermined amounts to each other. But there is a risk that, at settlement time, one bank will no longer have enough money to satisfy its obligation to the other. The asserted patent claims seek to minimize this risk.
Da da da da da da da da At Alice's Restaurant
Seein' as how Alice’s claims contained abstract ideas, the District Court said they were patent ineligible under 35 USC §101. Alice decided this was an unfriendly gesture so they decided to take the decision, put it in the back of a red VW Microbus, took shovels and rakes and implements of destruction, and headed on toward the Federal Circuit.
Well, they got there and there was a big sign and a chain across the court saying, "Closed to Abstract ideas." With tears in their eyes we went in anyway looking for a definition of an “abstract idea.” Well, we didn't find one. Until we came to Judge Lin who said that when taking all of the claim recitations into consideration, it is not manifestly evident that Alice’s claims are directed to a patent ineligible abstract idea under §101 and thus valid.
Da da da da da da da da At Alice's Restaurant
As they went down the Federal Circuit Road, off the side of the road there was another fifteen foot cliff and at the bottom of the cliff there was a pile of decisions. And they didn’t all say the same thing. The Federal Circuit decided that one big pile was better than two smaller piles. Rather than bring that one up, they decided to throw Alice’s down. That's what they did. The next morning, they got a phone call from Clerk Horbaly. He said, "Kid, you’ll find your claims before an en banc panel of the Federal Circuit. They just wanted to know if you had any information about them." So they got in the red VW microbus with the Shovels and rakes and implements of destruction and headed on toward the courthouse.
I want tell you about the Federal Circuit Court in Washington D.C., where this happened. Here, panels got three judges, a bailiff, a reporter, and a few observers in the chamber. But when we got to the chamber there was 10 judges, 24 amicus briefs and a full chamber. It was the biggest case of the last fifty years, and everybody wanted to get in the newspaper story about it.
A Man came in and said "all rise." We all stood up, and the 10 judges walked in and sat down. We sat down. They started talking and asking questions. They was using up all kinds of judge equipment that they had hanging around the judges’ chambers. They was using Bilski, Chakrabarty, Flook, Diehr, Gottschalk, Mayo, and of course the “machine or transformation” test. In the end, they couldn’t agree, rendering seven decisions.
Now friends, there was only one or two things that the Federal Circuit coulda done at courthouse. The first was they could have given Alice a medal for being so brave and clever with their patent claims, which wasn't very likely, and they didn't expect it. And the other thing was they could have bawled them out for trying to monopolize abstract ideas with some of their claims, upheld others, and told them never to be seen claiming mere abstract ideas again, which is what they expected. But when they got to the courthouse, there was a third possibility that they hadn't even counted upon, and they was immediately arrested, handcuffed, and sent off to patent jail. Well, maybe not. But they did find the claims invalid for being drawn to patent-ineligible subject matter. Alice came to the realization that it was a typical case of American blind justice.
But that's not what I’m here to tell you about. I’m here to talk about obviousness.
Da da da da da da da da At Alice's Restaurant
They got a building down in Washington D.C., it's called the Supreme Court, where you walk in, you get inspected, detected, neglected and selected. Alice took the case to the Supreme Court. There, Alice proceeded to tell the story of the invalidated claims, with full orchestration and five part harmony and stuff like that and all. They used all the judge equipment including Bilski, Chakrabarty, Flook, Diehr, Gottschalk, Mayo, and, in particular, Myriad Genetics.
They said that an invention is not rendered patent-ineligible simply because it involves an abstract concept. Application of such concepts “to a new and useful end remain eligible for patent protection. Accordingly, in applying the §101 exception, we must distinguish between patents that claim the building blocks of human ingenuity and those that integrate them into something more, thereby “transforming them into a patent-eligible invention. They gave a two-part analysis:
First, determine whether the claims at issue are directed to a patent-ineligible concept (laws of nature, abstract ideas, and natural phenomena).
Second, ask what else is in the claims by considering the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.
They described step two of this analysis as a search for an “inventive concept,” i.e., an element or combination of elements that ensures that the patent claims significantly more than an ineligible concept. If the additional claim elements are well-known, routine, or conventional, the claims are patent-ineligible.
Now this sounds an awful lot like the Supreme Court’s obviousness analysis in KSR v. Teleflex:
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
While the combination of old elements performed a useful function, it added nothing to the nature and quality of the [invention] already patented.
Friends, it makes you wonder if this whole patent-eligibility story could have, or should have, or would have been avoided by simply finding the claims invalid for obviousness in the first place. Now, some claims that encompass real innovation may not be patent-eligible because they are implemented using known devices or materials…like generic computers and some recombinant DNA technologies.
And friends, somewhere in Washington, enshrined in some little folder, is a study in black and white of Alice’s claims. And the only reason I'm singing you this song now is cause you may know somebody in a similar situation, or you may be in a similar situation, and if your in a situation like that there's only one thing you can do and that's walk into an Examiner’s office wherever you are, just walk in say "Examiner, you can’t get anything you want, at Alice's Restaurant” and walk out. You know, if one person – just one person – does it they may think he's really sick and reject the claims. And if two people, two people do it, in harmony, they may think they're both crazy and issue a Final Rejection. And three people do it – three – can you imagine, three people walking in, singin’ a bar of Alice's Restaurant and walking out? They may think it's an organization. And can you, can you imagine fifty people a day – I said fifty people a day – walking in singin’ a bar of Alice's Restaurant and walking out? And friends, they may thinks it's a movement. And that's what it is, the Alice's Restaurant Anti-Patent Ineligibility Movement, and all you got to do to join is sing it the next time it come's around on the Guitar. With feeling:
You can’t get anything you want at Alice's Restaurant You can’t get anything you want at Alice's Restaurant Walk right in it's around the back Just a half a mile from the railroad track You can’t get anything you want at Alice's Restaurant
You can’t get anything you want at Alice's Restaurant You can’t get anything you want at Alice's Restaurant Walk right in it's around the back Just a half a mile from the railroad track You can’t get anything you want at Alice's Restaurant
Now it all started three venues ago when Alice and CLS went up to visit United States District Court for the District of Columbia. As Alice Explained:
When obligations arise from a trade made between two parties, e.g., a trade of stock or a trade of foreign currency, typically, there is a gap in time between when the obligation arises and when the trade is ‘settled.’ In a number of financial contexts, the process of exchanging obligations, or settlement, is separate from the process of entering into a contract to perform a trade. For example, if two banks wish to exchange large sums of currency, they would enter into a binding agreement to make a particular exchange but would postpone the actual exchange until after the price is set and the agreement confirmed, typically two days. After those two days, both banks would “settle” the trade by paying their predetermined amounts to each other. But there is a risk that, at settlement time, one bank will no longer have enough money to satisfy its obligation to the other. The asserted patent claims seek to minimize this risk.
Da da da da da da da da At Alice's Restaurant
Seein' as how Alice’s claims contained abstract ideas, the District Court said they were patent ineligible under 35 USC §101. Alice decided this was an unfriendly gesture so they decided to take the decision, put it in the back of a red VW Microbus, took shovels and rakes and implements of destruction, and headed on toward the Federal Circuit.
Well, they got there and there was a big sign and a chain across the court saying, "Closed to Abstract ideas." With tears in their eyes we went in anyway looking for a definition of an “abstract idea.” Well, we didn't find one. Until we came to Judge Lin who said that when taking all of the claim recitations into consideration, it is not manifestly evident that Alice’s claims are directed to a patent ineligible abstract idea under §101 and thus valid.
Da da da da da da da da At Alice's Restaurant
As they went down the Federal Circuit Road, off the side of the road there was another fifteen foot cliff and at the bottom of the cliff there was a pile of decisions. And they didn’t all say the same thing. The Federal Circuit decided that one big pile was better than two smaller piles. Rather than bring that one up, they decided to throw Alice’s down. That's what they did. The next morning, they got a phone call from Clerk Horbaly. He said, "Kid, you’ll find your claims before an en banc panel of the Federal Circuit. They just wanted to know if you had any information about them." So they got in the red VW microbus with the Shovels and rakes and implements of destruction and headed on toward the courthouse.
I want tell you about the Federal Circuit Court in Washington D.C., where this happened. Here, panels got three judges, a bailiff, a reporter, and a few observers in the chamber. But when we got to the chamber there was 10 judges, 24 amicus briefs and a full chamber. It was the biggest case of the last fifty years, and everybody wanted to get in the newspaper story about it.
A Man came in and said "all rise." We all stood up, and the 10 judges walked in and sat down. We sat down. They started talking and asking questions. They was using up all kinds of judge equipment that they had hanging around the judges’ chambers. They was using Bilski, Chakrabarty, Flook, Diehr, Gottschalk, Mayo, and of course the “machine or transformation” test. In the end, they couldn’t agree, rendering seven decisions.
Now friends, there was only one or two things that the Federal Circuit coulda done at courthouse. The first was they could have given Alice a medal for being so brave and clever with their patent claims, which wasn't very likely, and they didn't expect it. And the other thing was they could have bawled them out for trying to monopolize abstract ideas with some of their claims, upheld others, and told them never to be seen claiming mere abstract ideas again, which is what they expected. But when they got to the courthouse, there was a third possibility that they hadn't even counted upon, and they was immediately arrested, handcuffed, and sent off to patent jail. Well, maybe not. But they did find the claims invalid for being drawn to patent-ineligible subject matter. Alice came to the realization that it was a typical case of American blind justice.
But that's not what I’m here to tell you about. I’m here to talk about obviousness.
Da da da da da da da da At Alice's Restaurant
They got a building down in Washington D.C., it's called the Supreme Court, where you walk in, you get inspected, detected, neglected and selected. Alice took the case to the Supreme Court. There, Alice proceeded to tell the story of the invalidated claims, with full orchestration and five part harmony and stuff like that and all. They used all the judge equipment including Bilski, Chakrabarty, Flook, Diehr, Gottschalk, Mayo, and, in particular, Myriad Genetics.
They said that an invention is not rendered patent-ineligible simply because it involves an abstract concept. Application of such concepts “to a new and useful end remain eligible for patent protection. Accordingly, in applying the §101 exception, we must distinguish between patents that claim the building blocks of human ingenuity and those that integrate them into something more, thereby “transforming them into a patent-eligible invention. They gave a two-part analysis:
First, determine whether the claims at issue are directed to a patent-ineligible concept (laws of nature, abstract ideas, and natural phenomena).
Second, ask what else is in the claims by considering the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.
They described step two of this analysis as a search for an “inventive concept,” i.e., an element or combination of elements that ensures that the patent claims significantly more than an ineligible concept. If the additional claim elements are well-known, routine, or conventional, the claims are patent-ineligible.
Now this sounds an awful lot like the Supreme Court’s obviousness analysis in KSR v. Teleflex:
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
While the combination of old elements performed a useful function, it added nothing to the nature and quality of the [invention] already patented.
Friends, it makes you wonder if this whole patent-eligibility story could have, or should have, or would have been avoided by simply finding the claims invalid for obviousness in the first place. Now, some claims that encompass real innovation may not be patent-eligible because they are implemented using known devices or materials…like generic computers and some recombinant DNA technologies.
And friends, somewhere in Washington, enshrined in some little folder, is a study in black and white of Alice’s claims. And the only reason I'm singing you this song now is cause you may know somebody in a similar situation, or you may be in a similar situation, and if your in a situation like that there's only one thing you can do and that's walk into an Examiner’s office wherever you are, just walk in say "Examiner, you can’t get anything you want, at Alice's Restaurant” and walk out. You know, if one person – just one person – does it they may think he's really sick and reject the claims. And if two people, two people do it, in harmony, they may think they're both crazy and issue a Final Rejection. And three people do it – three – can you imagine, three people walking in, singin’ a bar of Alice's Restaurant and walking out? They may think it's an organization. And can you, can you imagine fifty people a day – I said fifty people a day – walking in singin’ a bar of Alice's Restaurant and walking out? And friends, they may thinks it's a movement. And that's what it is, the Alice's Restaurant Anti-Patent Ineligibility Movement, and all you got to do to join is sing it the next time it come's around on the Guitar. With feeling:
You can’t get anything you want at Alice's Restaurant You can’t get anything you want at Alice's Restaurant Walk right in it's around the back Just a half a mile from the railroad track You can’t get anything you want at Alice's Restaurant
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