Judge Plager’s Dissent Calls for Abandonment of Unworkable Abstract Idea Test

The U.S. Court of Appeals for the Federal Circuit affirmed that software claims to using the unused capacity of a display device by displaying content in that unused capacity were not patent-eligible on July 20, 2018. The claims at issue in Interval Licensing LLC v. AOL, Inc., No. 2016-2502, 2018 U.S. App. LEXIS 20277 (Fed. Cir. July 20, 2017) were generally directed to what they called an “attention manager.” The Court had previously vacated a judgment that the relevant claims were not infringed by the accused instrumentalities based on a revised claim construction. There, it held that the claims should be interpreted broadly to mean any system for producing the claimed result.

The Court criticized the claims for their lack of specificity, pointing out that they did not reveal how the attention manager manages display in a manner that avoids overlapping with already-displayed content, such that the claims only required presenting two non-overlapping sets of data. It analogized the claims to those invalidated in Wyeth and Morse because they encompassed all solutions for achieving a desired result, rather than reciting a particular technical solution. The Court reasoned that the focus of the claims was on providing information without interfering with the person’s primary activity, which was abstract because it was a basic, longstanding practice akin to a breaking news ticker at the bottom of a screen. Finally, it concluded that the claimed instructions did not amount to significantly more because they were recited at a high level of abstraction, did not solve a technology-based problem, and did not require an unconventional combination of elements. This result will likely be unremarkable to anyone who is familiar with the treatment and analysis of software patent claims in recent years.

One interesting portion of the decision is the concurrence-in-part and dissent-in-part penned by Judge Plager. Essentially, the Judge agreed that the claims were not valid, but lamented the state of the law on subject matter eligibility. He criticized the two-step abstract idea test for lacking principled guidance on what is abstract and what is not abstract. Resorting to analogies to the facts of previous cases is helpful, but ultimately falls short of drawing a clear line between what is unpatentably abstract and what is patentably concrete. He identified the clear problem with this kind of test: it fails to provide the kind of specificity and clarity that makes it useful for future prediction of outcome.

The Judge also pointed out that the two steps essentially collapse into one, particularly when the same decision-maker is tasked with deciding whether the claims are “directed to” an abstract idea in the first place and then whether there is “something more” in them on a second pass. He bemoaned that the current test injects the kind of subjective bias into the test that was supposed to have been eliminated by the 1952 Patent Act’s elimination of the so-called “inventiveness” requirement. He called for the abandonment of the unworkable test for abstractness, seeking a practical alternative that will better serve the innovation community. Will the legislature or the Supreme Court respond?

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