Inventiveness+? Divergent theories of the "inventive concept" in patent-eligible subject matter

The law of patent eligibility is a mess. Fractured opinions and bitterly divided en banc decisions leave practitioners and innovators with little certainty about the scope of patent protection. One of the core disputes in eligibility law concerns the nature of an “inventive concept”: otherwise-ineligible patent claims may be deemed eligible if they embody “an inventive concept” that saves them from invalidation. But what qualifies as an inventive concept? Even the Federal Circuit doesn’t know for sure.

Today, the Federal Circuit’s case law reflects a clash between two competing visions of an “inventive concept” – one which firmly favors patentees, and another which firmly favors patent challengers. The patentee-favoring conception treats inventiveness like obviousness and anticipation: it is fundamentally a question of fact, and it is determined by reference to the scope and content of the prior art. The challenger-favoring conception, by contrast, asks for something more – in addition to beating the prior art, patent claims must show a certain “plus factor” indicating inventiveness: inventiveness+, if you will. By requiring patentees to show some plus factor – and, as importantly, by treating the plus factor as a legal quality rather than a factual quality – this conception enables the invalidation of patents in the early stages of litigation, thus favoring cost-conscious patent challengers.

In this article, we look at these competing conceptions of the “inventive concept” at the Federal Circuit and note the implications of each, for patentees and for patent challengers.

The reinvention of eligibility

The trilogy of Alice/Mayo/Myriad announced a now-familiar two-step test for patent eligible subject matter: Alice Step 1 asks whether the claims are directed to an ineligible concept and, if so, Alice Step 2 then asks whether the claims embody an “inventive concept” that goes beyond what was merely “well-understood, routine, and conventional at the time of patenting.”

For several years after Alice, courts evaluated both steps of the Alice test and invalidated patents at a prodigious rate. Perhaps most importantly for patent challengers, courts not only invalidated patents, but invalidated them early – courts frequently granted pre-discovery motions under Rule 12(b) or 12(c) in addition to early motions for summary judgment.

Because eligibility is ultimately a question of law, the ordinary procedural barriers that prohibit courts from making findings of fact at a preliminary stage were no obstacle to invalidating patents under § 101. Purely legal questions are generally amenable to early resolution without protracted litigation, and that includes (or included) purely legal questions of eligibility.

Berkheimer changes the landscape

The process of evaluating eligibility radically changed in 2018 when the Federal Circuit recast Alice Step 2 inquiry. In the twin cases Berkheimer v. HP^[1] and Aatrix Software v. Green Shades Software,^[2] the Federal Circuit held that the question of whether a patent claims an “inventive concept” may be a question of fact. These cases recast the question of whether a patent claim was “well-understood, routine, and conventional” as a factual question about the scope and content of the prior art. Previously, that test had posed a fundamentally legal question – as set out by Alice itself – addressing the risk that overbroad claims would claim subject matter so fundamental (think mathematical formulas) that the basic “building blocks of human ingenuity” themselves would be monopolized.

Berkheimer’s practical effect has been to devastate early eligibility rulings. Since Berkheimer was decided, the grant rate for motions seeking early ineligibility determinations has fallen significantly – and the decisions rejecting eligibility challenges have expressly relied on Berkheimer and its progeny as the basis for such rejection. By emphasizing the potential for factual questions, Berkheimer increased the viability of procedural objections to ineligibility determinations, giving weak patents a procedural defense even where no substantive defense exists.

Competing conceptions of the inventive concept post-Berkheimer

The Federal Circuit itself acknowledges a lack of clarity over what qualifies as an inventive concept. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[T]he contours of what constitutes an inventive concept are far from precise.”); cf. PPS Data, LLC v. Jack Henry & Assocs., Inc., 404 F. Supp. 3d 1021, 1039 n.8 (E.D. Tex. 2019) (“The only thing clear about the appropriate test for patent-eligible subject matter is that it is unclear.”). The language that has shaken out in the wake of Alice is that an “inventive concept” is one which adds “significantly more” to the ineligible subject matter, to “transform” it into eligible subject matter. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A]n ‘inventive concept’” is that which “is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible subject-matter] itself.’”). But the “significantly more” test is not much more help than the “inventive concept” test. “Significantly more” merely kicks the analytical can down the road: what does it take to be “significantly more”? 

As a practical matter, two approaches have emerged. On the one hand, some panels of the Federal Circuit lean into the fact-focused approach from Berkheimer. These panels equate the existence of an inventive concept with the degree to which the prior art discloses (or fails to disclose) the patented invention. Under this approach, eligibility will join obviousness and anticipation as a defense to be established primarily at trial, rather than pre-trial motion practice. Indeed, the first jury trial on eligibility just recently occurred before the Honorable Chief Judge Rodney Gilstrap of the Eastern District of Texas, who cited Berkheimer as the reason for sending the eligibility defense to the jury. PPS Data, 404 F. Supp. 3d at 1039.

On the other hand, other panels of the Federal Circuit require more than merely exceeding the prior art: in addition to being novel and non-obvious, these panels also require that the claims “avoid the problem of abstractness.” See, eg, In re Morsa, 809 F. App’x 913, 919 (Fed. Cir. 2020) (“[E]ven if we accept that a claim recites a method different from prior art, ‘a claim for a new abstract idea is still an abstract idea’”), cert. pet. docketed July 16, 2020; Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 2515 (2020) (“[W]e have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (instructing courts to ignore expert testimony about the scope and content of the prior art in § 101 analysis because “the eligibility finding does not turn on the novelty of . . . the claims”). In these cases, it is not enough to exceed the prior art. Instead, to embody an inventive concept, claims must have some limiting features – a plus factor – that guards against monopolizing the “building blocks” of inventiveness. Some cases have tried to give a principled definition to the nature of those features – such as the “human mind” and “pencil-and-paper” tests – but panels apply these tests inconsistently (and sometimes decline to apply them at all). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (invalidating claims if they “are so broad as to read on an individual performing the claimed steps mentally or with pencil and paper”). More frequently, courts simply end up bluntly analogizing the challenged claims to the claims in past cases and finding them eligible (or ineligible) based on such analogy. See Affinity Labs, 838 F.3d at 1258 (acknowledging that the inquiry is “elusive” but “not an unbounded one” because “[t]his court has applied the two-stage Mayo/Alice inquiry in numerous cases”).

Strategic litigation implications

Patent challengers will likely push the Federal Circuit to lean into its inventiveness+ case law. Under inventiveness+ case law, patents are easier to challenge because they must meet two criteria, not one.  Claims may fail because they were factually “well-understood, routine, and conventional” at the time of patenting, but may also fail because they lacked a legal “plus factor” that would render them adequately inventive. Thus, distinction from the prior art becomes a necessary-but-insufficient condition for eligibility, leaving room to invalidate weak claims that lack some additional indicia of inventiveness.

Patentees, in contrast, are likely to advocate for the prior-art-focused test for an “inventive concept.” As a practical matter, adopting that approach is likely to eliminate any unique role for eligibility in the American system of patent laws. If eligibility asks only whether there is widespread disclosure of the claimed invention, then the doctrine of anticipation – which invalidates a claimed invention if it is disclosed even once – would easily invalidate every patent that might be challenged as ineligible.

Conclusion

A comprehensive theory of inventiveness is beyond the scope of this brief article. Inventiveness might have the meaning it bears in ordinary speech, referencing subject matter that is significantly new or novel (that is, an innovation over the prior art). Inventiveness might also be understood as a particularity requirement, allowing claims with sufficiently specific limiting principles, in light of the overbreadth and preemption justifications that animate § 101 jurisprudence. Inventiveness might mean yet something else.  This article tracks the deepening divide on the Federal Circuit about what it takes to qualify as an “inventive concept.” Litigants asserting in/eligibility, particularly before the Federal Circuit, should be mindful of this split in its case law, as well as which side of the split their panel judges favor.

Prior to joining DLA Piper, Christian Chessman clerked for Chief Judge J. Rodney Gilstrap of the United States District for the Eastern District of Texas, where he worked on the first jury trial to address patent-eligible subject matter in the history of the United States.

_{[1] Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).}

_{[2] Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).}