Out from the murky morass
In the third of a three-part series, we explore how emerging clarity in other provisions of US patent law are proving a timely antidote to the oversaturation of Section 101 jurisprudence
Section 101 decisions since Alice often omit serious analysis of patent claims, but the problem of post-Alice jurisprudence is not simply a problem of sweeping opinions. There are well-written, detailed opinions relying on Section 101 that nonetheless would be better off using other provisions of the Patent Act.
The Central District of California’s ruling in McRO v Sony is an example of just this. The opinion explicitly notes similarities between Alice’s ‘abstractness’ test and Justice Stewart’s infamous ‘I know it when I see it’ decree. It also notes the potential for Section 112’s written description and enablement doctrines to combat obstructions to follow-on innovation. Ultimately, the court – resignedly – succumbs to patentable subject matter analysis, stating: “In any event, the Supreme Court has spoken, and Section 101 now plays an important limiting role.” It acknowledges that the claims are directed to a specific technological process (automated three-dimensional computer animation) and thus, on the face of it, are not directed to an abstract idea. Yet it asserts that the sole novel aspect of the invention does point to an abstract idea – namely, “the idea of automated rules-based use of morph targets and delay sets for lip-synchronized three-dimensional animation”. This seems a long way from the abstractness typified by Bilski’s ‘risk hedging’ or Alice’s ‘mitigation of settlement risk’.
In its finding of abstractness, the opinion makes repeated reference to the prior art – suggesting that invalidity could have been found under Sections 102 and 103. The court further faults the use of functional claiming at the point of novelty, declaring that “an abstract idea is the extreme case of functional language” and noting that the case “illustrates the danger that exists when the novel portions of an invention are claimed too broadly” – both assertions that cry out for analysis under Section 112. In light of the alternatives, clearly appreciated by the court, the sole resort to Section 101 is unfortunate.
McRO may or may not have invented a solution to the long-felt need for authentic mouth and lip synchronisation – referred to in the trade as the ‘holy grail’ of automated facial animation. Perhaps it merely recycled prior art or made some obvious increment, or maybe it overreached in its claims or failed to teach any invention; the point is that we do not know and cannot know, based on the court’s patentability analysis. Decisions such as McRO, which rely on Section 101 to the point of disregarding the applicability of Sections 102, 103 and 112, convey to investors and innovators that seeking to solve formidable problems with software technology will likely relegate the solutions – no matter how inventive – to unpatentability.
Fears about technological pre-emption resulting from overbroad patents, which undergird Section 101, are not groundless. The concern is legitimate and longstanding. The US Patent and Trademark Office’s (USPTO) commitment to combating this problem while simultaneously achieving greater clarity in Section 101 analysis is demonstrated by its drafting of agency examination guidelines for Alice, Myriad and Mayo. Thus, the danger of overbroad patents is increasingly countered by USPTO efforts and should not mute the greater threat: that discriminatory jurisprudence will lead to a lack of faith in the patent system’s ability to protect certain categories of innovation. This would only sap investment in the very fields that hold the most promise of propelling us towards the exciting discoveries of tomorrow.
To underscore the threat to our future, it may help to examine the past. In O’Reilly v Morse the Supreme Court (otherwise upholding Samuel Morse’s claim to the telegraph) famously invalidated Morse’s overbroad claim to all use of electro-magnetism for printing intelligible characters, signs or letters. Critically, the court was careful to dismiss any notion that it was suggesting categorical restrictions on patenting, proclaiming: “Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes.”
Electricity and its potential applications to future technologies could hardly have been fully comprehended by the courts in 1853. The same could be said for today’s software, biotech and other fields. So in weighing the risks of over-protection against the costs of under-incentivisation, we must ask: what if the Supreme Court had relied purely on a patentable subject matter analysis to decide O’Reilly? And what if the lower courts then read into that decision the need for a particularly restrictive line of analysis for the then unfamiliar – and thus readily abstracted – field of electrical technology? One shudders to think of where we would be today had incentives in yesterday’s vital technical fields been so suppressed. As we look towards the future, the risk of overprotection – though perceptible – pales in comparison to the perils of curtailing incentives for exploration at the frontiers of technology.
When it comes to incentivisations, the United States has long enjoyed the fruits of being first. If anything has held back the US innovative spirit, it surely is not a willingness to grant patents across a wide array of industries – a practice as old as the country itself and hard-wired into the Constitution. The United States has never engaged in the sort of categorical discrimination which the recent surge in Section 101 jurisprudence so precariously invites – so why start now?