Further Thoughts on Patent Eligibility and Predictability

By Chris Holman
I enjoyed reading the recent article by Professors Rantanen and Datzov , and was not surprised by their conclusion that the courts are generally applying the Supreme Court’s patent eligibility precedent in a relatively predictable manner. I have not conducted such a systematic review of patent eligibility decisions, but over the years I have read quite a few of them, and for some time I have felt that I can usually predict which way the court will go in deciding these cases.
The two-part Alice / Mayo framework for assessing the patent eligibility of method claims, which formally involves determining whether a patent claim is “directed towards” one of the judicial exceptions (law of nature, natural phenomenon, or abstract idea), and if so, to determine whether there is “enough” additional “inventive concept” to render the claim a patent eligible “application” of that judicial exception, seems quite indeterminate on its face. But Alice provides some important clarifying language:
[Petitioner’s method claims do not] purport to improve the functioning of the computer itself . Nor do they effect an improvement in any other technology or technical field . Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not “enough ” to transform an abstract idea into a patent-eligible invention.
The message I have taken from this paragraph is that technological innovations, including software that “improve[s] the functioning of [a] computer,” generally remain patent eligible. And I have found that, when reading judicial decisions addressing the patent eligibility of method claims relating to computers and computer programs , if it looks and feels like the purported innovation is technological in nature, the claim is likely to be upheld. On the other hand, if the claimed method feels less technological, e.g., a method of playing bingo on the Internet, or a “business method,” I expect it to be struck down. Occasionally I am surprised by a decision, but from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.
The “natural phenomena” and “laws of nature” exceptions tend to be invoked in the context of life science innovations, and it seems to me that most method claims arising out of the life sciences will be deemed patent eligible unless the court deems it to be directed towards a “diagnostic method,” i.e., an analytical method based on the discovery of a correlation between a biomarker and some clinically significant information, e.g., a genetic sequence and the likelihood of developing cancer, or a chemical metabolite and the optimal dosage of a drug.  If a claimed method relating to the life sciences can plausibly be characterized as something other than a diagnostic claim, e.g., a method of preparing some sort of biological product, or treating a disease, etc., it is generally going to be found patent eligible.  But if the court concludes that it is a diagnostic method, it is going down.
In the Federal Circuit’s decision denying en banc rehearing of Athena Diagnostics , all of the judges on the Federal Circuit seemed to agree that, under the court’s current interpretation of Mayo , diagnostic methods are essentially patent ineligible per se. They also seem to agree that this is an unfortunate state of affairs, given the tremendous medical benefits that innovative diagnostic methods can provide, as exemplified by the claims struck down in Athena Diagnostics . The major split revealed by the various opinions dissenting and concurring with the court’s en banc decision to deny rehearing is that a majority of the judges on the Federal Circuit believe that their hands are tied by Supreme Court precedent, particularly Mayo , while a significant number of dissenting judges disagreed, arguing that the Federal Circuit had unnecessarily tied its own hands with respect to diagnostic methods, and that, properly interpreted, Mayo left open the possibility of finding at least some diagnostic methods patent eligible.
Some of the Federal Circuit judges seemed to voice approval for the way in which Alice has been deployed in the abstract idea context to invalidate claims directed towards business methods and other non-technological inventions.  On the other hand, they voiced concern that in the laws of nature/natural phenomena context Mayo was resulting in the invalidation of meritorious diagnostic method claims.  In any event, when it comes to the life sciences and method claims, the Federal Circuit seems inclined to interpret Mayo relatively narrowly, and uphold the eligibility of method claims, so long as the claimed invention can plausibly be characterized as something other than a diagnostic method.