In re Killian: Defining “Abstract Idea” and “Inventive Concept”

In re Killian is interesting because the Federal Circuit used that case to respond to the frustration many patent applicants feel regarding the amorphous and unpredictable nature of analysis under 35 U.S.C. § 101. Killian made that frustration quite plain, leading off his appeal with the argument that

the standard promulgated in Alice and Mayo is indefinite—so poorly defined that it renders all court and Board decisions finding a claim patent ineligible under the Alice/Mayo standard arbitrary and capricious under the Administrative Procedure Act (APA), 5 U.S.C. § 706(2)(A), and the Due Process Clause of the Fifth Amendment.

While there was basically no chance that the Federal Circuit would agree to an argument premised on the proposition that the standard laid out by its reviewing court (and applied by it) was incomprehensible, I think the Federal Circuit choosing to address that argument with a precedential opinion rather than affirming the board under rule 36 is interesting in and of itself. Even more is that the Federal Circuit acknowledged and responded to “Mr. Killian’s desire for ‘a single noncapricious definition or limiting principle’ for ‘abstract idea’ and ‘inventive concept.’” Thus, In re Killian not only shows that the Federal Circuit feels the need to respond to criticisms of the Alice/Mayo framework, it also shows what the Federal Circuit feels is the closest it can come to concrete definitions of the phrases “abstract idea” and “inventive concept” which are at the heart of the eligibility determination.


                Turning first to “abstract idea,” the Federal Circuit began by acknowledging that there is no single rule which could distinguish what was and was not an abstract idea.  It explained that such a rule did not exist because there were at least three different types of abstract ideas: (1) methods of organizing human activity, (2) claims to mental processes, and (3) claims to results rather than means of achieving them. It also said that it had provided guidance as to what constitutes an abstract idea in the form of cases which said that the abstract idea determination was made based on the claimed advance over the prior art, and cases which said that the intangibility of information meant that advance in the specified content of information were abstract. It finally turned specifically to software inventions, stating that, for that kind of invention eligibility “often” turns on whether the claims focus on “the specific asserted improvement in computer capabilities” or “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”


                The treatment of “inventive concept” was similar, with the Federal Circuit indicating that it had provided guidance, but stopping short of elaborating a clear definition. With respect to guidance, there was actually very little on offer, with the examples of guidance laid out by the Federal Circuit largely restating principles already laid out as “guidance” for what was an abstract idea. For instance, the first example of guidance in the discussion of “inventive concept” was that “methods that ‘improve[] an existing technological process’ include an inventive concept at step two.” However, the discussion of abstract ideas had already stated that the lack of “any particular assertedly inventive technology” would doom a claim to an invention where the improvement was information of specified content, and so it isn’t clear what would be added by treating an improvement to “an existing technological process” as an inventive concept.


                Ultimately, I don’t think the Federal Circuit’s explication of its “guidance” would be particularly satisfying to someone who, like the appellant in Killian, is frustrated by the current state of 101 caselaw. Indeed, the fact that the Federal Circuit could do no better than provide a non-exhaustive list of types of abstract ideas, then point to various past cases as “guidance” seems to confirm the ad-hoc and nature of contemporary subject matter eligibility analysis. I suspect that the Federal Circuit realized this, since it ended its discussion of “abstract idea” and “inventive concept” by explaining that, even if it was “persuaded by Mr. Killian’s argument that the Alice/Mayo framework is insolubly unclear, both this court and the Board would still be bound to follow the Supreme Court’s § 101 jurisprudence as best we can as we must follow the Supreme Court’s precedent unless and until it is overruled by the Supreme Court.” Hopefully, the Supreme Court will view this as an invitation to come up with a standard that a court couldn’t even hypothetically be persuaded is “insolubly unclear,” as otherwise I think the frustration felt by Mr. Killian (and many others) is likely only to get worse.


Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Cert denied in American Axle

Surprisingly, despite a solicitor recommendation, the Supreme Court denied cert in
American Axle. I can’t say I’m particularly disappointed. I recorded a
video last year (best viewed at 2x speed) where I talked about the potential outcomes of
the Supreme Court taking it up. I think my conclusion then – i.e., that
the Supreme Court was more likely to make things worse than better –
was basically right. Some clarity in the 101 analysis would have been
great, but I don’t think we would have gotten that, and the Supreme
Court passing up an opportunity to make things worse (again) is probably
all for the best.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

American Axle v. Neapco: Some thoughts (2021)

I want to talk about American Axle v. Neapco.  This is a reasonably interesting case in its own right, since it applied section 101 to driveline propeller shaft manufacturing technology, which is obviously a bit different from the software and biotech inventions where section 101 is generally applied.  However, rather than talking about the case itself, I want to talk about what could happen if the Supreme Court grants cert, since they have asked for the solicitor’s views on the matter and that’s usually a sign that the case has a good chance of being heard.  I have seen articles out there saying that the Supreme Court should grant cert so they can fix the mess that is section 101.  What I want to do is explain why I think the Supreme Court granting cert would most likely make section 101 jurisprudence even more of a disaster than it already is.

Taking it doesn’t mean clarifying Alice/Mayo

I think part of the reasoning behind wanting the Supreme Court to take up American Axle is that the Supreme Court doesn’t take cases just to affirm, and so if they do take it they’re like to reverse the Federal Circuit which, by definition, would mean they would have to put some limits on the currently amorphous 101 analysis.  I think this is wrong.  Maybe the Supreme Court doesn’t take cases just to affirm them, but it did just that in Alice and Bilski.  You can say that those were special cases, since the PTO had basically teed up Bilski for Supreme Court review, and the Federal Circuit was so fractured on Alice that it basically amounted to a circuit split requiring review.  However, while the Federal Circuit might not be as fractured as it was for Alice, there are still significant differences between panels on how to apply section 101, and the fact that those differences persist even seven years after Alice may make the Court feel it needs to step in.  Additionally, while the patent bar, or at least the part of it that pays attention to these issues, is keenly aware of the drawbacks of section 101, the outside world is still focused on “patent quality” and the dangers of “Bad patents”.  Indeed, there was a hearing last month before the senate judiciary committee’s intellectual property subcommittee just last month that focused on exactly those issues, and I think the Supreme Court is much closer in outlook to the Senate’s intellectual property subcommittee than it is to the portion of the patent bar that is concerned about section 101.  Accordingly, my feeling is that if the Supreme Court does take up American Axle, it is likely to do so in order to emphasize that the Alice/Mayo analysis that has heretofore been mostly confined to software and biotech should be applied to other types of inventions as well, not to fundamentally clarify or make any changes to its application.

This isn’t a great case for clarifying anything

However, let’s say I’m wrong, and the Supreme Court does take up American Axle with the goal of significantly clarifying the analysis under section 101.  I think American Axle is a lousy case for the Supreme Court to take up if it wants to make things clearer.  First, the claims in American Axle were found ineligible because they were directed to a law of nature, so right off the bat this is a suboptimal vehicle for clarification because it doesn’t present the opportunity to define “abstract idea”, and I think the lack of a definition for an “abstract idea” is one of the biggest problems with 101 jurisprudence as it currently stands.  Also, because American Axle came through the courts rather than the PTO, it wasn’t analyzed using the patent office’s framework, which I think is the clearest framework anyone has come up with so far for applying section 101.  As a result, any significant change in the section 101 analysis is likely to be orthogonal to the patent office’s analysis, and so require major revisions to current PTO practice.  Does that necessarily mean it would be a step backward in terms of clarity?  Not necessarily, but after seeing what the Supreme Court has done in the past, I think the best we can reasonably hope for is that it leaves things largely intact so that we don’t all have to go back to the drawing board.

The only potential silver lining is that if the Supreme Court endorses broad application of section 101, we’ll finally see some meaningful limits 

So, is there any potential for a good outcome if the Supreme Court takes up American Axle?  There’s always the possibility that they’ll replace our current 101 mess with a meaningful, logical, predictable framework.  However, that’s so unlikely I think I can safely ignore it.  Are they likely to make things worse in the one context where section 101 is working at least relatively well?  Yes.  However, there is another possibility, which I alluded to earlier.  They could leave things essentially unchanged in terms of the substance of the 101 analysis, and instead take up the case to endorse applying 101 across the board, not just to software and biotech.  What happens then?  Well, obviously chaos for everyone, but maybe that chaos will lead to section 101 being applied a little more rationally in the long term.  In support of this optimistic outlook, I would like to draw an analogy to the broadest reasonable interpretation rule.  When it was only used during prosecution, the broadest reasonable interpretation rule could reasonably be criticized as essentially defaulting to the broadest possible interpretation, with reasonableness being an afterthought at best.  However, once it started being applied in inter partes review proceedings, the Federal Circuit started issuing opinions that found the broadest reasonable interpretation was a good deal narrower than I would have expected from the way it had traditionally been applied to patent prosecution.  That is, when an extremely broad broadest reasonable interpretation didn’t advance the policy goal of facilitating patent examination, it started narrowing in scope.  Similarly, if section 101 started being applied in areas where its aggressive use didn’t advance anti-software or anti-biotech policy preferences, it might happen that the Federal Circuit would find ways to make it easier to establish eligibility.  Just a thought, and something of a long shot.  However, given the Supreme Court’s track record I think it’s probably the best that could come from them hearing American Axle.

Anyway, I’d love to be proven wrong, and, right or wrong, I don’t think we’ll actually see any impact for at least another year.  In the meantime, I wish you good luck in dealing with section 101, and in your patent endeavors more generally.

Thanks a lot…bye bye.   

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

5 Tips to Having a Good Patent Examiner Interview

Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground in a 30-minute interview than you can in months of prosecution.

Moreover, during a patent examiner interview, you get immediate feedback from the examiner. Listening to this feedback will help you hone your arguments on the fly. You can throw out arguments that have no traction with examiners while focusing on those that appeal to them.

You can also get a better feel for the examiner’s concerns. The MPEP gives examiners form paragraphs to use in office actions. These often do not illuminate the examiner’s specific problems with the invention or the claim language. Through careful questioning and active listening, you and the examiner can focus on the exact problems at issue in the office action.

Your conversation with the examiner might also yield information you might not otherwise obtain. For example, you might discover that the examiner misunderstood your claims or misinterpreted the prior art, which you could then work to clarify. Alternatively , the interview might reveal that the examiner had  a clear understanding of your claims and the prior art, but is unwilling to budge from his or her position no matter what arguments you present. You would go on to address these different outcomes through two very different courses of action. You can determine whether further prosecution before the examiner is worthwhile or appeal is necessary simply by talking to the examiner.

Every patent attorney uses a different strategy for conducting examiner interviews. Here is a countdown of five tips to consider as you develop your interview strategy.

Tip #5: Figure Out What You’re Going to Say

When you draft an office action response, you spend time sharpening your amendments and arguments. You should take the same approach when you prepare for a patent examiner interview.

Examiners will usually only grant one interview, so you should not waste your opportunity. More importantly, under the MPEP, interviews for “sounding out” the examiner are prohibited. When you and your client discuss the possibility of interviewing the case, you should have specific issues you want to discuss with the examiner and a clear goal.

You may have heard or read anecdotes about patent lawyers who get good outcomes while improvising during interviews. This strategy is probably not the best use of your time, the examiner’s time, and your client’s resources. Instead, have a game plan for what you will say and how you will say it.

Tip #4: Get the Right People in the Interview

There is nothing more frustrating than preparing your amendments, arguing your case to the patent examiner during an interview and reaching an agreement with the patent examiner about the amendments, only to have the examiner pull the rug from under you with another office action. Or, worse yet, to come out of an interview agreeing with the examiner, only to have your client overrule it.

Such misunderstandings happen because the interview lacked the people critical to the decision-making process.

On the patent office side, the necessity of on-the-job training for new examiners results in layers of checks. At a minimum, you should politely inquire if a primary examiner should attend the interview when you schedule it. Just beware that some examiners might take offense, so approach delicately.

On your side, you must make a prudent and deliberate decision whether to include the inventor and a representative for your client (if the inventor is not your client). Some advantages of having the inventor and client include:

  • Someone on your side can immediately approve the examiner’s amendments
  • Your client hears what happened rather than receiving a summary from you
  • The inventor can explain the invention and the prior art
  • Your client feels involved

Conversely, having your client in the interview poses some risks, including:

  • Your client can inadvertently make admissions adverse to your case
  • The inventor might take the examiner’s rejections personally, and tensions may rise
  • The client might waste your interview time talking about irrelevant issues

Having the right people in the interview on both sides can facilitate an agreement, but only if they can work collaboratively and not start a confrontation. Remember that a patent examiner interview is not an adversarial process. If the inventor and client attend, make sure they understand that persuasion, not confrontation, during the interview will likely be the easiest path to allowance.

Tip #3: Make an Agenda

The interview request form and patent examiner interview best practices suggest that you identify the issues you want to discuss during the interview. You should consider going beyond this by creating an agenda to will lay out each topic you wish to discuss with the examiner.

Many examiners ask for an agenda when you schedule the interview. You could share your complete agenda with the examiner, or keep your detailed agenda for yourself and instead provide an outline.

In either case, providing the patent examiner with an agenda will help you in a few ways:

  • The examiner has a roadmap, so you can move from issue to issue efficiently
  • You make sure you cover all the points you want to raise without leaving anything out
  • The examiner has a preview of your interview topics, allowing them to  prepare to respond to, or even concede specific points, so that the interview proceeds more smoothly

When you create your agenda, you should also consider including proposed amendments, as this will give the examiner something concrete to consider. Rather than talking in abstractions about the claims, you can point to specific proposed language for discussion. Providing the examiner with your proposed revisions further demonstrates your willingness to work with him or her to reach allowance, and invites the examiner to propose language as well.

The last two points on your agenda can then consist of:

  1. A discussion about whether the proposed amendments will result in an allowance of the case. This is also an opportunity to record proposed amendments that could lead to allowance.
  2. A discussion of whether there are any additional issues, arguments, or amendments to be addressed 

Remember, examiners work with hundreds of cases and thousands of claims every year. Diligent examiners often have suggestions that not only help you secure allowance, but improve your patent application.

You should approach the interview as a two-way communication rather than simply your opportunity to present your case to the examiner. In at least some cases, the examiner will help you on your path to allowance. Most importantly, when an examiner makes a suggestion, and you incorporate it into the claims, the examiner is much more likely to agree that your amendment moves the case forward.

Tip #2: Begin Conceptually

At the beginning of your patent examiner interview, try to identify the broad issues in the office action. One way to do this is to have a conceptual discussion about the prior art and the invention.

Summarize your understanding of the prior art and see if the examiner’s understanding matches. If the examiner has a different interpretation of the prior art, you may be able to address at least some grounds for rejection by persuading the examiner of your interpretation.

Keep in mind that because examiners have an enormous workload, they may not always have your client’s invention clear in their heads when you start an interview. Discussing the concept behind the invention can help get the examiner in the right mindset for the rest of the interview.

Tip #1: Close Concretely

Have a goal in mind before you start the interview. Try to close in a way that makes clear whether you reached your goal. Remember, closing concretely does not necessarily mean that you always win. Rather, it means that when you close, you know whether you reached an agreement and, which direction you and your client should go, if you have not.

For example, imagine  you have a prior art rejection under §102 that you believe your proposed amendments should successfully overcome. Several outcomes are in fact possible at the end of the interview:

  • The examiner agrees that your amendments overcome the rejection.
  • The examiner agrees the invention is distinguishable but disagrees that your amended claims distinguish over the reference.
  • The examiner agrees your amendments overcome a §102 rejection but switches to a §103 rejection.
  • The examiner believes the invention is not novel given the prior art. No claim amendments can overcome the rejection.

Each of these outcomes is acceptable. You know where you stand with the examiner, and you can advise your client about what to do next.

What you want to avoid is ending the interview without a clear understanding of where the case stands. It may take some cajoling to pin the examiner down, but try to reach a concrete conclusion.

A “Good” Patent Examiner Interview

A good interview moves your case forward. That movement could be an agreement or just a better understanding of where your case stands. You can use interviews to benefit your clients and keep their cases progressing by:

  • having a plan 
  • getting the right people in the interview 
  • following an agenda
  • opening conceptually
  • closing concretely 

Keep leveling up your patent prosecution practice! Take a look at 3 Obvious Mistakes to Avoid when Responding to Office Actions!

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”