United States Patent and Trademark Office (USPTO) Director Andrei Iancu will testify in front of the Senate Judiciary Committee Subcommittee on Intellectual Property on Wednesday as the sole witness in a USPTO oversight hearing. The chair of the Subcommittee, Sen. Tillis (R-NC), and the ranking member, Sen. Coons (D-DE), have both expressed an active interest in the topic of patentable subject matter eligibility over the past few months.
Given this interest, it’s a safe bet that patentable subject matter eligibility under § 101 will come up at the hearing, especially in light of Director Iancu’s recently issued updated subject matter guidance for USPTO patent examiners. That guidance raises a few questions—questions which Director Iancu should answer at the hearing.
New § 101 Guidance
The new § 101 guidance makes two major changes to examination for subject matter eligibility. First, it requires examiners to classify abstract ideas into one of three categories: mental processes, mathematical formulas, and methods of organizing human activity. Claims directed to an abstract idea not in one of these categories are to be allowed. Second, it bars examiners from considering whether a given claim is directed only to an abstract idea plus routine and conventional technology if the claim is “integrated into a particular application.” If a claim is integrated, but using conventional technology, the guidance would require an examiner to allow the claim. Both changes represent departures from previous examination practice and both appear to present the potential for conflict with case law. CCIA has commented on these disparities, and suggested that the USPTO clarify the guidance to ensure that it helps examiners comply with case law. However, there’s no guarantee the USPTO will make any such changes—for example, the USPTO recently declined to make any changes in response to public comments on the 2018-2022 Strategic Plan.
Given the possibility that the guidance will remain unchanged, it’s important to consider how it might have been applied to patents that we know have been invalidated under § 101 in a district court. A recent set of arguments in Delaware provides a set of three patents of just that type.
A Stark Day For Three NPE Patents
Recently, District of Delaware Chief Judge Leonard Stark held a consolidated argument day for § 101 arguments on three patents, asserted across seven different cases. Judge Stark consolidated the cases because, given the commonalities in § 101 arguments, “there may be some efficiencies to be gained by  hearing multiple motions in multiple cases on the same day.” After argument, Judge Stark determined that each and every asserted claim of the three patents was directed to ineligible subject matter and therefore invalid.
The patents were issued in 2001, 2012, and 2013—before several of the Supreme Court’s recent § 101 decisions, including Alice, were handed down. That means that the examiners who allowed these patents might not have understood that patents on abstract ideas shouldn’t issue merely because they claimed implementation on a computer. But under the USPTO’s new subject matter eligibility guidance, an examiner might have felt obligated to issue these patents—patents which were just determined to be ineligible by a district court judge.
The ’539 Patent
U.S. Patent No. 6,232,539 claims a music organizing interface. Judge Stark found that it was directed to the abstract idea of accessing music by category. Claim 1, pictured here, describes the particular way in which that abstract idea was claimed. An examiner, looking at this claim, might identify the claim as directed to the abstract idea of accessing music by category. It’s unclear whether that would fall into one of the three categories of the guidance, but it could be a method of organizing human activity—when I worked at a radio station, we had our collection sorted by genre and by medium (vinyl vs. tape vs. CD), so this at least arguably falls into the human activity category.
Judge Stark also determined that “the technical components recited are conventional, well known, and generic” and thus the claim was invalid. But, as discussed above, an examiner faced with this claim would still have to determine that it isn’t integrated into a practical application in order to even consider whether the components were conventional. An examiner—especially an examiner who can never permanently reject a claim—faced with an applicant arguing that the claims are integrated into a particular application—a music device with a GUI for selecting songs by category, retrieving the song from storage or the network based on the ownership category, and playing the song—might very well allow it, even though the technical elements are all purely conventional. The guidance suggests that examiners might allow the ’539 patent, even though we know it isn’t patentable.
The ’733 Patent
U.S. Patent No. 8,311,733 claims, as shown here, a computer system that correlates mapped images to points on a timeline. Judge Stark found it was directed to “the abstract idea of collection, organization, manipulation, and display of data.” But—even though the Federal Circuit has called this type of abstract idea a “familiar class of claims”—the guidance doesn’t appear to include it within the three categories of abstract ideas examiners are permitted to recognize as invalidating.
This claim wouldn’t even make it to the question of conventionality—an examiner, following the guidance, would simply have to find it eligible to start with.
The remaining patent, the ’828 patent, resembles the ’539 patent in that it was invalidated because it was directed to the abstract idea of providing news items to a subscriber—a long-standing method of human activity. It also resembles the ’539 patent in being at least arguably integrated into a particular application of providing a social media ticker, but where the technical components are all purely conventional. The guidance would direct the examiner to ignore the conventional components and allow the claim, even though we know it has been found invalid in a federal court.
Issuing invalid patents isn’t a costless exercise, even if the patent is ultimately successfully challenged. Down the road, that invalid patent would have to be invalidated in a courtroom like Judge Stark’s, taking up the court’s time, forcing defendants to pay to invalidate a patent that never should have issued, and chilling innovative activity by those who might have innovated if not for the threat of the patent.
Director Iancu wants to clarify the law of § 101, a laudable goal. But that goal can’t come at the expense of ignoring case law such that patents of questionable validity are issued. That kind of error will only harm innovation.