By Stuart Meyer
My last post focused on definitions for the terms “well-understood,” “routine,” and “conventional”—or W-URC—from the subject matter eligibility test set forth in Mayo and further described in Alice. Those terms relate to one part of the current test only. It seems fair to consider another important term in the test, one that’s considered before even reaching the W-URC issue: Whether the claim is “directed to” patent-ineligible subject matter, e.g., a law of nature.
I was particularly reminded of the need to address this when reading last week’s Federal Circuit opinions in Vanda Pharmaceuticals v. West-Ward Pharmaceuticals. Not only did Judge Prost pen a stark dissent from Judge Lourie’s opinion for the court, but both the majority and dissenting opinions focused on this phrase over and over. The opinion of the court referenced “directed to” 17 times and the dissent used it 10 times. Further, the phrase was used either in italics or quotes five times, emphasizing the importance of the term. So it’s worthwhile to give a look to what “directed to” means.
The term is not one that dictionary definitions help with very much. In the relevant uses, we find dictionaries suggesting synonymous phrases such as “aim,” “target,” “point at,” and “focus on.” What is interesting is the observation that “directed at” suggests a single target (and nothing else) while “directed towards” is thought of as being aimed in the direction of some particular thing and perhaps other things as well. This is potentially a huge difference in our context, as the discussion of the cases below will show.
Mayo and Alice
It bears noting that although the overall test is often referred to as the Mayo/Alice test, Mayo did not actually use this term at all. That said, Mayo certainly addressed the concept. Justice Breyer, delivering the opinion for a unanimous Court, said “Prometheus’ patents set forth laws of nature….” Similarly, “And so a patent that simply describes that relation sets forth a natural law.” The opinion discussed Einstein and Archimedes to establish that, “A patent, for example, could not simply recite a law of nature and then add the instruction ‘apply the law.’” (emphasis in all three mine)
Though Mayo did not use the “directed to” language, it nonetheless helps inform our understanding of what “directed to” does not mean. Mayo famously reminded us that, “The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo is thought of as the genesis of the two-step test because it stated, “If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.” So for the part we’re looking at presently, Mayo uses the term “reciting” rather than “directed to.”
It was in Alice that the phrase “directed to” was really applied in this context. The en banc Federal Circuit opinions in that case used this phrase in various ways, recalling that the Supreme Court in Parker v. Flook held, “[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” The Supreme Court then followed up saying that Mayo provided the “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Unfortunately, the Supreme Court in Alice did not go on to detail what it meant by “directed to” in this context. In applying the test, the Court explained that the claims are “drawn to” a long prevalent fundamental economic concept, i.e., intermediated settlement. Justice Thomas, delivering the opinion for a unanimous Court, went to the trouble of expressly admitting that the Court would “not labor to delimit the precise contours of the ‘abstract ideas’ category in this case,” but the term “directed to” did not even warrant such a disclaimer.
Just as subsequent courts have had great difficulty delimiting the precise contours of “abstract ideas,” the term “directed to” ends up being quite uncertain yet extremely important.
Internet Patents
Only a year after the Alice opinion, the Federal Circuit observed in Internet Patents v. Active Network that, “Recently, the courts have focused on the patent eligibility of ‘abstract ideas,’ for precision has been elusive in defining an all-purpose boundary between the abstract and the concrete, leaving innovators and competitors uncertain as to their legal rights.” The Federal Circuit understood that, “Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” So it’s the “character as a whole” of the “claims … considered in their entirety” that matters, but are we given guidance as to what a claim’s “character as a whole” might be? The Federal Circuit said that in Alice the Supreme Court “distilled [the] ineligible concept from the claims as a whole….” Again, what are the distillation instructions? The Federal Circuit didn’t provide much help: “We start by ascertaining the basic character of the subject matter….” In Internet Patents, the patent itself described its “most important aspect” and that’s what the court went with, finding the character to be the abstract idea of “retaining information in the navigation of online forms.” Unfortunately, there was no further explication of any of the terms used: “directed to,” “character as a whole,” or “distilled.”
Enfish
The following year, the Federal Circuit again considered this phrase, but this time made an effort to more specifically bound it. In Enfish, the court emphasized that this first step of the Mayo/Alice inquiry was important, “i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world.” The Enfish court held that the inquiry before it involved “whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” So the Enfish court used the “focus” of the claims—again a rather squishy concept. The court helped provide some clarity by chastising Microsoft for its proposed application of step one of the test, saying that “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” While emphasizing the importance of the claim language in this regard, the Federal Circuit said that its conclusion was “bolstered by the specification’s teachings,” so it seems that even this panel thought it acceptable to look at least a bit beyond the claims.
Interestingly, the Enfish opinion provides several different statements of what the claims in the patent at issue are directed to:
- “Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.” (italics original)
- Enfish is perhaps most famous in rejecting the notion that “the invention’s ability to run on a general-purpose computer dooms the claims” because unlike various other cited cases the court discussed, “the claims here are directed to an improvement in the functioning of a computer.”
- “[T]he claims are directed to a specific implementation of a solution to a problem in the software arts.”
Those are three very different statements of what the claims are directed to, which should underscore the fact that there is very likely not one single answer here (think “directed towards” rather than “directed at”). Indeed, the Enfish panel itself observed that, “We recognize that, in other cases involving computer-related claims, there may be close calls about how to characterize what the claims are directed to.”
Vanda and Rapid Litigation Management
Last week’s Vanda case was not in fact the first in which the Federal Circuit opinions elevated the term “directed to” by repeatedly flanking it with quotation marks or embellishing it with italics. Shortly after Enfish, the Federal Circuit decided Rapid Litigation Management, and the court’s opinion there surrounded the term with quotation marks 10 separate times, apparently to underscore the term’s importance (the court held the claims to be directed to a new, useful and accordingly patent-eligible laboratory technique). The court emphasized that the claims recited a “method of producing” and explained, “That one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim ‘directed to’ that natural ability.” (emphasis original) Summing up, the court held, “At step one, therefore, it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is ‘directed to.’” Again, while this helps in the determination of some cases, the extensive use of quotation marks falls far short of helping us understand what “directed to” actually means.
Clarification Please
Let’s circle back now to our discussion of what the dictionaries said and whether “directed to” is non-exclusive (i.e., the aim can be toward multiple targets) as opposed to the suggestion that “directed at” means only one target. The most current Supreme Court authority (Alice) says the test is whether the claim is directed to patent-ineligible material. So if “directed to” allows multiple targets, it seems that only one such target needs to be non-statutory to potentially doom the patent. But if that’s the case, then it seems insufficient for the court in cases such as Vanda and Enfish to identify a statutory target, since that still leaves open the possibility of other, non-statutory targets. In reality, it seems clear that neither the Supreme Court, nor the Federal Circuit, has really thought about this distinction. The fact remains that very subtle differences in how one thinks about the phrase “directed to” can be outcome-determinative, and we’ve not been provided with sufficient guidance as to how that phrase should be interpreted. The conclusion is the same as in my last post: such uncertainty allows result-oriented opinions that cannot readily lead to any meaningful settling of this fundamental issue. We should demand clarification from either the courts or Congress, since the viability of so many patents depends on what this phrase is understood to mean.
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