CAFC Judge Richard Linn On the Indeterminate and Arbitrary Nature of Abstract Idea Analysis

Judge Richard Linn

“…he lights up the CAFC’s application of Alice, exposing the flaws that advocates of IP owners have known for months.” – Judge Richard Linn



Patrick Anderson Image  by: Patrick Anderson | October 26, 2017

In a departure from his colleagues, Judge Linn harshly criticized the jurisprudence that has grown out of the Supreme Court’s decision in Alice v CLS Bank in a recent dissent filed in Smart Systems Innovations, LLC v. Chicago Transit Authority.

Disagreeing with his colleagues, Judges Evan Wallach and Jimmie Reyna, Linn argues against revoking Smart Systems’ intellectual property under § 101. In the process, he lights up the CAFC’s application of Alice, exposing the flaws that advocates of IP owners have known for months. First, Linn reiterates the historical underpinnings of the three “judicially recognized exceptions” to patent eligibility, including laws of nature, natural phenomena, and “abstract ideas.” Linn reminds us that these statutory exceptions “are intended to foreclose only those claims that preempt and thereby preclude or inhibit human ingenuity with regard to basic building blocks of scientific or technological activity.” Further, he stresses that these exclusions “are intended to be read narrowly.”

Next, he turns his criticism to the two-part Mayo test, calling it “indeterminate” and explaining that it “often leads to arbitrary results.” Linn’s argues that the CAFC’s tendency to reduce the invention down and ignore the actual claim language inevitably results in arbitrariness.  “Re-characterizing claims in a way that is ‘untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.’” His reasoning is simple: “underlying virtually every claim is an abstract idea.”

Certainly, one need only examine a few famous inventions to see the truth of this statement. After all, what did Edison do besides discover the abstract idea of running current through a tightly-wound coil in a vacuum? What did the Wright Brothers do besides discover that birds warp their wings to change direction in flight? Linn appropriately asks “Where do you draw the line between properly determining what the claim is directed to and improperly engaging in an overly reductionist exercise to find the abstract idea that underlies virtually every claim?”

The consequences of being “overly reductionist” can be severe. Adam Mossoff and Kevin Madigan, from George Mason University Antonin Scalia Law School, conducted research on over seventeen thousand patent applications and identified nearly 1,700 inventions that have been awarded patents in Europe and China, but denied here in the US. Their working paper cautions, as a result, that the current application of Alice & Mayo undermine the US’s role as a leader in innovation.

The inventions denied US patent protection include life-saving technologies for treatment of cancer and diabetes. As availability for patent protection moves elsewhere, so will the investment funding and research efforts.

The solution, or at least a partial one suggested by Judge Linn, is to examine the actual language of the claims in light of the specification. Linn writes:

By virtue of their inclusion in the claims, every limitation warrants some consideration as to the role it plays in reciting the invention. … A determination of what the claims are directed to is often aided by a consideration of the specification and its description of the problem to be solved and the discovered solution to that problem.

Ultimately, the fundamental question in “abstract idea” cases is whether the claim is directed to such a basic building block of scientific or technological activity as to foreclose or inhibit future innovation …. Claims directed not merely to basic building blocks of scientific or technological activity but instead to innovative solutions to real problems that result from human activity and are not capable of performance solely in the human mind should be fully eligible for patent protection and not lightly discarded.

Thus, Linn proceeds to examine the claims at issue, some of which relate to methods for controlling access to mass transit systems through use of a card reader and a white-list of approved bank cards. This improvement overcomes problems of latency and connectivity associated with trying to authenticate every individual bank card transaction in, for example, an underground subway system. Instead, by validating the chip in the card against a previously approved whitelist, transactions can be processed at a later time, but the passenger may proceed to enter the transit area. In a departure from his colleague, Linn concludes that  “[t]he allowance or refusal of access is no more abstract when performed using a computer and a card reader than when performed using a physical token to regulate access to a transit system by mechanically comparing a token to a slug.”

Both Linn’s dissenting opinion and Mossoff/Madigan’s paper should be required reading for all judges grappling with patent eligibility questions.

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