F.3d 1269, 1276-77 (Fed. Cir. 2013) citing Diehr at 181. Tension exists between the If Flook and Diehr are Guidepost, broadness of § 101 and the judicially cre- ated exceptions; courts to date, have been where are we going? unable to decide whether the exceptions are to be read narrowly or as they were broadly written in §101. “If carried to its extreme, When is a process patentable? [the judicial exceptions] make all inven- tions unpatentable because all inventions BY R. LEE VAIL OF KEAN MILLER LLP Laboratories, Inc., 130 S.Ct. 3543 can be reduced to underlying principles (2010). The subsequent decision by the of nature which, once known, make their Lee Vail is an associate in the New Orleans United States Court of Appeal – Federal implementation obvious.” 450 U.S at 189, office of Kean Miller LLP. He joined the Circuit was appealed and upon return to FN12. The opinions in Diehr and Flook are firm in 2010 and practices in the intellectual the Supreme Court, Mayo Collaborative supposed to provide guidance in resolving property, patent, and corporate litigation Services v. Prometheus Laboratories, Inc., this tension; unfortunately they don’t. groups. He is a Registered Professional 132 S.Ct. 1289 (2012), the Court declared Diehr and Flook both applied the knowl- Engineer in Louisiana and Wisconsin. Lee that Flook and Diehr were “cases most edge gained through a calculation to new is also a registered Patent Attorney and directly on point, both addressed processes and useful ends; the calculation directed a is licensed to practice before the United using mathematical formulas that, like laws subsequent helpful activity. Flook referred States Patent and Trademark Office. His of nature, are not themselves patentable.” to this action as a post-solution activity.3 patent practice includes the prosecution 132 S.Ct. at 1292. A major finding of Flook was that “[t]he of patent applications, and patentability Flook stood for patent ineligible incor- notion that post-solution activity, no matter research and requirements. Prior to joining poration of mathematical algorithms, Diehr how conventional or obvious in itself, can Kean Miller, Lee served as Manager of stood for the converse. Both of the last two transform an unpatentable principle into Environmental Affairs for a worldwide oil Supreme Court decisions concerning pro- a patentable process exalts form over sub- and gas company. He can be reached at lee. cess patents held that process patent eligi- stance.” 437 U.S. at 590 (emphasis added). [email protected] bility was to be guided by Flook and Diehr. The Flook majority did not reject patent- Thus, via simple compare and contrast of ability of process relying on these judicially Flook and Diehr, it should be possible to excluded concerns per se. Inventive appli- hoever invents or discovers any establish criteria for patent eligibility. cation of a law of nature or a mathematical “ new and useful process, machine, algorithm may be patent eligible. See 437 manufacture, or composition of W PATENTABLE PROCESSES – U.S. at 594. The Flook Court recognized matter, or any new and useful improve- FLOOK AND DIEHR the patent eligibility of various machines ment thereof, may obtain a patent therefor, that rely on formulas and laws of natures: subject to the conditions of this title.” 35 Flook and Diehr were decided less than patents for adjustments to paper machines U.S.C. § 101. Although a simple state- three years apart; both applied mathemati- to better take advantage of gravity4; a new ment, the courts have failed to develop a cal algorithms to chemical processes. The chemical process based on a known prin- consistent criteria or guidepost to interpret patent issued to Mr. Flook was for a method ciple5; and an improved antenna that used this language. In 2008, the Federal Circuit to reset a process alarm in a chemical known equations to improve the design.6 attempted to develop a patent eligibility manufacturing process based on measured These prior inventions used equations and criterion by establishing the “machine-or- conditions. Mr. Diehr’s patent was for a laws of nature to create better machines transformation test.”1 While rejecting this method of manufacturing rubber and con- (not processes); thus Flook does not guide test as a rule, the Supreme Court agreed tained a calculation to reset the reaction us as to patentability of processes, except in Bilski v. Kappos, 130 S.Ct. 3218 (2010), time based on measured conditions. The that the post-solution activity may not be “that the machine-or-transformation test Court decided that the method of resetting . [was] a useful and important clue.”2 The the process alarm was not patent eligible, conventional or obvious Court said that a process or method patent while the method relating to the manu- The patent at issue in Flook was titled that did not involve a machine or trans- facture of rubber was patent eligible. The “Method for Updating Alarm Limits.” As formation might nonetheless be patent- majority in Flook did not see eye to eye with described by the Court, able, but failed to say when or how. While the majority in Diehr; the Flook authors An “alarm limit” is a number. During declining to further define eligible process wrote the dissent in Diehr and vice versa. catalytic conversion processes, oper- patents, the Court referred back to the Written from opposite points of view, the ating conditions such as tempera- “guideposts” of Parker v. Flook, 437 U.S. two cases together lack continuity. ture, pressure, and flow rates are 584 (1978) and Diamond v. Diehr, 450 U.S. “While the categories of patent-eligible constantly monitored. When any of 175 (1981). 130 S.Ct. at 3231. Since Flook subject matter recited in § 101 are broad, these “process variables” exceeds and Diehr are guidepost, they must be tell- their scope is limited by three important a predetermined “alarm limit,” an ing us which way to go. judicially created exceptions. ‘[L]aws of alarm may signal the presence of an Concurrent with the decision in Bilski, nature, natural phenomena, and abstract abnormal condition indicating either the Court vacated and remanded Mayo ideas’ are excluded from patent eligibility.” inefficiency or perhaps danger. Fixed Collaborative Services v. Prometheus CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 alarm limits may be appropriate for a INTELLECTUAL PROPERTY TODAY OCTOBER, 2013 27 steady operation, but during transient involved in this case. 450 U.S. at than abstract ideas based on use of escrow operating situations, such as start-up, 215. accounts and record keeping associated it may be necessary to “update” the Jumping forward to Mayo, the Court with the settling of transactions. However, alarm limits periodically.7 stated that the inventor’s claim for patent- the Court failed to agree on the reasoning as In practice, at the time of Flook, after ability “is weaker than Diehr’s patent- to why such claims were ineligible subject an alarm limit was reached, a unit operator eligible claim and no stronger than Flook’s matter with the judges evenly split regard- responded to the alarm, at the very least by unpatentable one.” 132 S.Ct. at 1292. ing the eligibility of comparable computer acknowledging the alarm. If the operator Since Diehr, the Court has maintained the systems claims. assigned to monitor the alarm decides that distinction over and over; Diehr’s post- The panel of ten Federal Circuit Justices action is necessary, they will respond to solution activity was significant, whereas was so fractured in their reasoning that the the alarm by changing some process vari- Flook’s was not.8 In Mayo, the Court invali- “decision” constitutes six separate opin- able to mitigate undesirable consequences. dated the patent through the use of a ions. In the most basic sense, the Judges The information (that an alarm level had judicially created exclusion by ruling that agreed that prior Supreme Court prec- been reached), is visually or audible com- the process was based on a law of nature. edent require that patent claims contain- municated to an individual whose job it is Although it was proposed that the Mayo ing abstract ideas must have meaningful to make control decisions. That individual claims contained other non-law of nature limitations. However, a group of five Judges may decide to make a number of different elements such as administering drugs and (Lourie, Dyk, Prost, Reyna, and Wallach) process adjustments or to do nothing. measuring the results, the court was unper- rejected patent eligibility of the computer The Supreme Court rejected Flook’s suaded, holding: system claims, concluding that incorpora- tion of the method into a computer program method claim; “respondent’s application [these] step[s] tells doctors to engage was an insufficient limitation. This opinion simply provides a new and presumably in well-understood, routine, conven- begins with a statement consistent with better method for calculating alarm limit tional activity previously engaged in Flook and Mayo; “Limitations that repre- values.” 437 U.S. at 594. Inventive appli- by scientists who work in the field. sent a human contribution but are merely cation of a law of nature or a mathematical Purely “conventional or obvious” tangential, routine, well-understood, or con- formula may support a patent, but there “[pre]-solution activity” is normally ventional, or in practice fail to narrow the must be “some other inventive concept in not sufficient to transform an unpat- claim relative to the fundamental principle its application.” Id. Less than three years entable law of nature into a patent- therein, cannot confer patent eligibility.” later, a different majority would distinguish eligible application of such a law.