In an opinion Wednesday, Judge Forrest denied a summary judgment motion seeking to declare the plaintiff’s claimed patents ineligible for patent protection. The opinion begins with skepticism of the current “fad” of patent defendants seeking to declare patents ineligible with “reductionist” arguments that overly simplify the invention:
Virtually every invention could be described at a high level in a few words: “A method to provide answers to questions” for a search engine; “a tool to assist a user to draft documents” for a document-processing program; “a tool to remove a cork from a container” for a battery-operated wine-bottle opener; “a beverage container that does not leak when tipped” for a thermos with a particularly nifty lid. One need only look around a room to think of many more.
Similarly, virtually any invention could be described as simply addressing that which others long ago addressed: the Socratic method to acquire information; quills, pens, typewriters, to create written text; corkscrews to open wine bottles; and clay jugs with covers to prevent spills. This reductionist simplicity may obscure underlying complexity, and it may jeopardize the innovative improvements upon longstanding accomplishments that patents are intended to incent. Patent law described as, simply, a mousetrap—or as a “method to catch a mouse.”
Many recent motions seeking determinations of patent ineligibility suffer from such reductionist simplicity—from characterizing as simply a mousetrap that which is in fact a better mousetrap. Courts faced with such motions must scrutinize reductive descriptions with great care. It has also become increasingly common for litigants to pursue such judicial rulings, which can be as complex as Markman rulings but without a similar record. Courts must therefore be alert to motions seeking factual determinations of what a claimed invention “is” when unaccompanied by the necessary submissions from those skilled in the art.
In short, the current fad of ineligibility motions in patent cases has, in certain respects, gotten ahead of itself. There are instances in which a patent—or a single claim—may truly be ineligible under 35 U.S.C. § 101. But courts should make such determinations on a proper record and should not confuse such determinations with the inquiries properly made under §§ 102 or 103—the sections of the patent law governing novelty and obviousness.