{"id":1795,"date":"2017-10-18T22:10:48","date_gmt":"2017-10-19T02:10:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1795"},"modified":"2017-10-23T12:55:43","modified_gmt":"2017-10-23T16:55:43","slug":"judge-linn-in-dissent-reveals-that-alice-has-no-clothes","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1795","title":{"rendered":"Judge Linn in Dissent Reveals that Alice has No Clothes"},"content":{"rendered":"

In Smart Systems Innovations, LLC v. Chicago Transit Authority<\/a>, [2016-1233] (October 18, 2017), the Federal Circuit affirmed the district court’s judgment on the pleadings that the asserted claims of U.S. Patent Nos. 7,566,003,\u00a07,568,617, 8,505,816, and\u00a08,662,390, relating to\u00a0regulating entry in a transit\u00a0system using information from a bankcard, were patent ineligible.<\/p>\n

The claims of the patent were directed to “a\u00a0method for validating entry into a first transit\u00a0system using a bankcard terminal,” “a\u00a0method of funding transit rides associated with\u00a0at least one public transit network, from a plurality\u00a0of funding sources,” and “a method of using a bank card as an identifying\u00a0token for time-based mass transit fare products,
\nwithout using writeable memory on the bank\u00a0card.”<\/p>\n

The district court held that \u201c[s]tripped of the technical\u00a0jargon that broadly describes non-inventive elements\u00a0(e.g., the \u2018interfaces\u2019 and \u2018processing systems\u2019), and\u00a0further shorn of the typically obtuse syntax of patents, the\u00a0patents here really only cover an abstract concept: paying\u00a0for a subway or bus ride with a credit card.\u201d\u00a0 The district court further found that\u00a0\u201cthe recent case law has\u00a0reiterated that whatever bells and whistles may be added,\u00a0when reduced to their core, claims directed to the performance\u00a0of certain financial transactions\u2014and paying a\u00a0fare is a financial transaction\u2014must be categorized as
\ninvolving abstract ideas.\u201d<\/p>\n

The Federal Circuit agreed with the district court, finding that taken together, the Asserted Claims are directed\u00a0to the formation of financial transactions in a\u00a0particular field (i.e., mass transit) and data collection
\nrelated to such transactions. The Asserted Claims were not\u00a0directed to a new type of bankcard, turnstile, or database,\u00a0nor do the claims provide a method for processing data\u00a0that improves existing technological processes.<\/p>\n

The Federal Circuit rejected the argument that the Asserted Claims are patent\u00a0eligible because they improve prior systems of fare collection
\nby speeding up the process at the turnstile.\u00a0 The Federal Circuit found that this was not an improvement in computer technology (as in DDR Holdings), but merely the use of computers as a tool. The Federal Circuit further found that the claims\u00a0were not directed\u00a0to a combined order of specific rules that improve any\u00a0technological process (as in McRo), but rather invoke computers in the\u00a0collection and arrangement of data. Finally the Federal Circuit rejected the arguments that the claims applied to a particular concrete field, saying that\u00a0merely limiting the field of use of\u00a0the abstract idea to a particular environment does not
\nrender the claims any less abstract.<\/p>\n

Agreeing with the district court that the claims are directed to an abstract idea at step 1, the Federal Circuit turned to step 2.\u00a0 The district court held that invoking various computer hardware elements,
\nwhich save time by carrying out a validation function on\u00a0site rather than remotely, does not change the fact that in\u00a0substance, the claims are still directed to nothing more\u00a0than running a bankcard sale\u2014that is, the performance of\u00a0an abstract business practice, and the Federal Circuit agreed.\u00a0 The Federal Circuit distinguished Diehr because the claims\u00a0at issue merely use generic computer\u00a0components in which to carry out the abstract idea.\u00a0 The Federal Circuit distinguished DDR Holdings because\u00a0the asserted claims do not attempt to solve a challenge
\nparticular to the Internet.<\/p>\n

In dissent Judge Linn,\u00a0 arguing that the majority engaged a reductionist exercise of ignoring the limitations of the claims in question, would have found the claims in two of the patents patent-eligible, but finding that the analysis with respect to the remaining two patents “consistent with past decisions finding\u00a0ineligibility” reluctantly concurred\u00a0because he was bound by\u00a0precedent to reach that conclusion.<\/p>\n

Judge Linn explained that the three nonstatutory exceptions to patentability are intended to foreclose only those\u00a0claims that preempt and thereby preclude or inhibit\u00a0human ingenuity with regard to basic building blocks of\u00a0scientific or technological activity. He said they are intended to\u00a0be read narrowly.\u00a0 He observed that\u00a0the\u00a0contours of the abstract idea exception are not easily\u00a0defined, and for that reason, the abstract idea exception is “almost impossible to apply consistently and coherently.”<\/p>\n

Of the Alice test, Judge Linn said:<\/p>\n

The\u00a0problem with this test, however, is that it is indeterminate\u00a0and often leads to arbitrary results. Moreover, if\u00a0applied in a legal vacuum divorced from its genesis and\u00a0 treated differently from the other two exceptions, it can\u00a0strike down claims covering meritorious inventions not\u00a0 because they attempt to appropriate a basic building\u00a0block of scientific or technological work, but simply because\u00a0they seemingly fail the Supreme Court\u2019s test.<\/p><\/blockquote>\n

In particular, Judge Linn took exception to Step 1 of the Alice Test:<\/p>\n

Step one cannot be a hunt for the abstract idea underlying\u00a0the claim, because underlying virtually every claim\u00a0is an abstract idea. And if the task under step one is to\u00a0assess whether the claim is directed to no more than an\u00a0abstract idea, what is left for determination under step\u00a0two? Where do you draw the line between properly determining\u00a0what the claim is directed to and improperly\u00a0engaging in an overly reductionist exercise to find the\u00a0abstract idea that underlies virtually every claim?<\/p><\/blockquote>\n

In particular Judge Linn says that\u00a0individual claim limitations
\ncannot be ignored. By virtue of their inclusion in the\u00a0claims, every limitation warrants some consideration as\u00a0to the role it plays in reciting the invention.\u00a0 He said that\u00a0it is also important to read the claims \u201cin light of\u00a0the specification.\u00a0\u00a0Ultimately, the fundamental question in \u201cabstract\u00a0idea\u201d cases is whether the claim is directed to such a basic
\nbuilding block of scientific or technological activity as to\u00a0foreclose or inhibit future innovation or whether the claim\u00a0instead is directed to a tangible application that serves a\u00a0new and useful end.<\/p>\n

Judge Linn concluded that claims directed not merely to\u00a0basic building blocks of scientific or technological activity\u00a0but instead to innovative solutions to real problems that\u00a0result from human activity and are not capable of performance\u00a0solely in the human mind should be fully eligible\u00a0for patent protection and not lightly discarded.<\/p>\n

Judge’s Linn’s dissent correctly reveals that Alice’s Step 1, or at least the way that it is applied, does not correctly reveal whether a claim is directed to unpatentable subject matter.\u00a0 \u00a0Rather “it is indeterminate
\nand often leads to arbitrary results.”\u00a0 He points out that claims to meritorious inventions are struck down “not\u00a0because they attempt to appropriate a basic building\u00a0block of scientific or technological work, but simply because\u00a0they seemingly fail the Supreme Court\u2019s test.”<\/p>\n

Judge Linn is not the first to make these points, but his articulate and well reasoned dissent is like a shout — Alice isn’t wearing any clothes.\u00a0 The question remains: will the rest of us stand around and gasp, or actually do something about it?<\/p>\n","protected":false},"excerpt":{"rendered":"

In Smart Systems Innovations, LLC v. Chicago Transit Authority, [2016-1233] (October 18, 2017), the Federal Circuit affirmed the district court’s judgment on the pleadings that the asserted claims of U.S. Patent Nos. 7,566,003,\u00a07,568,617, 8,505,816, and\u00a08,662,390, relating to\u00a0regulating entry in a … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15],"tags":[],"class_list":["post-1795","post","type-post","status-publish","format-standard","hentry","category-15"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1795","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1795"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1795\/revisions"}],"predecessor-version":[{"id":1796,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1795\/revisions\/1796"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1795"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1795"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1795"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}