Parker v. Flook

Last updated
Parker v. Flook
Seal of the United States Supreme Court.svg
Supreme Court of the United States
Argued April 25, 1978
Decided June 22, 1978
Full case nameParker, Acting Commissioner of Patents and Trademarks v. Flook
Citations437 U.S. 584 ( more )
98 S. Ct. 2522; 57 L. Ed. 2d 451; 1978 U.S. LEXIS 122; 198 U.S.P.Q. (BNA) 193
Case history
PriorIn re Flook, 559 F.2d 21 (C.C.P.A. 1977); cert. granted, 434 U.S. 1033(1978).
Subsequent Diamond v. Diehr , Diamond v. Chakrabarty
Holding
A mathematical algorithm is not patentable if its application is not novel.
Court membership
Chief Justice
Warren E. Burger
Associate Justices
William J. Brennan Jr.  · Potter Stewart
Byron White  · Thurgood Marshall
Harry Blackmun  · Lewis F. Powell Jr.
William Rehnquist  · John P. Stevens
Case opinions
MajorityStevens, joined by Brennan, White, Marshall, Blackmun, Powell
DissentStewart, joined by Burger, Rehnquist
Laws applied
§ 101 of the Patent Act

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." [1] The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. [1] The exact quotation from the majority opinion is: "Respondent’s process is unpatentable under §101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." "The fact that the algorithm may not have actually been known previously and that, when taken in combination with other claim elements, it might produce an invention that is novel and nonobvious, plays no part in the analysis." [2]

Contents

The case was argued on April 25, 1978 and was decided June 22, 1978. This case is the second member of the Supreme Court's patent-eligibility trilogy. [3]

Prior history

The case revolves around a patent application for a "Method for Updating Alarm Limits". These limits are numbers between which a catalytic converter is operating normally. The numbers are determined by taking a time-weighted average of values of a relevant operating parameter, such as temperature inside the reactor, in accordance with a smoothing algorithm. [4] When the values of these numbers leave this range an alarm may be sounded. The claims, however, were directed to the numbers (the "alarm limits") themselves.

Flook's method was identical to previous systems except for the mathematical algorithm. In fact, although the patent examiner assumed that Flook had originated the mathematical technique, someone else had published it a number of years earlier. [5] In Gottschalk v. Benson , the court had ruled that the discovery of a new formula is not patentable. This case differed from Benson by including a specific application—catalytic conversion of hydrocarbons—for the formula as a claim limitation (a so-called field of use limitation). The patent examiner rejected the patent application as "in practical effect" a claim to the formula or its mathematics. When the decision was appealed, the Board of Appeals of the Patent and Trademark Office sustained the examiner's rejection.

Next, the Court of Customs and Patent Appeals (CCPA) reversed the Board's decision, saying that the patent only claimed the right to the equation in the limited context of the catalytic chemical conversion of hydrocarbons, so that the patent would not wholly pre-empt the use of the algorithm. Finally, the Government, on behalf of the (Acting) Commissioner of Patents and Trademarks, filed a petition for a writ of certiorari to the CCPA in the Supreme Court.

Supreme Court's decision

The law which is applicable to this case is section 101 of the Patent Act. [6] If Flook's patent claim can meet the definition of a "process" under that law then it is patent-eligible (that is, it is the kind of thing that can receive a patent if it is also novel, unobvious, and the like). The Court decided that the patent claim under review was instead a claim to a "principle" or a "law of nature" and thus not patent-eligible. The Court relied on a line of cases following from the Neilson blast furnace case. [7] The principle of that case, as explained in O'Reilly v. Morse , [8] is that that patent-eligibility must be analyzed on the basis of it being as if the principle, algorithm, or mathematical formula were already well known (was in the prior art). Flook's process is thus ineligible for a patent "because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." In a nutshell:

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application. [Emphasis supplied.] [1] [9]

The Court did not agree with Flook's assertion that the existence of a limitation to a specific field of use made the formula patent-eligible. The majority opinion said of this argument:

A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.

The court moderated that assertion by agreeing that not all patent applications involving formulas are patent-ineligible by saying, "Yet it is equally clear that a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." Patents involving formulas, laws of nature, or abstract principles are eligible for patent protection if the implementation of the principle is novel and unobvious—unlike this case, in which it was conceded that the implementation was conventional. [10] Accordingly, in Flook's case, there was no "other inventive concept in its application", and thus no eligibility for a patent.

Criticism and response to Flook

In In re Bergy, [11] a 1979 decision of the United States Court of Customs and Patent Appeals (C.C.P.A.), Judge Giles Rich extensively criticized Justice Stevens's Flook opinion. The Supreme Court had vacated an earlier Bergy opinion, [12] with terse instructions that the CCPA should give the matter "further consideration in light of Parker v. Flook, 437 U.S. 584 (1978)." Judge Rich began by protesting that "[t]he Court gave no intimation of what bearing it thought Flook has on the single issue in these appeals [whether the claimed subject matter was patent-eligible], except as it may be gleaned from the Flook opinion." After an exhaustive analysis of what Flook, the Constitution, and the patent statute provide about the grant of patents--which said little or nothing about the patent-ineligibility of abstract ideas and how section 101 of the patent law relates to that--Judge Rich summarized his view: "To conclude on the light Flook sheds on these cases, very simply, for the reasons we have stated, we find none."

Before reaching his conclusion, however, Judge Rich condemned the Flook opinion as embodying:

an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103.

The reason for this confusion in the Court's opinion he attributed to "subversive nonsense" in the government's briefs for the Patent Office:

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, "turns entirely on the proper construction of § 101," badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of "invention." This they do by basing argument on the opening words of § 101, "Whoever invents or discovers," thereby importing into the discussion of compliance with § 101 a requirement for "invention" in a patentability sense.

To Judge Rich, even though section 101 says "whoever invents or discovers," there is no basis for importing into the analysis any inquiry into the nature of what it is that the patent applicants purports to have invented, and whether it is the kind of thing that can be patented as an invention. Thus, when the Flook Court says that Flook's process is not the kind of process that the patent law permits to be patented, even though it is a process in the ordinary dictionary sense of the word, Judge Rich finds the inquiry impermissible because "§ 101 was never intended to be a 'standard of patentability'; the standards, or conditions as the statute calls them, are in § 102 and § 103." The only legitimate question, he says, is whether the claimed subject matter is "new, useful, and unobvious." [13]

Judge Rich could not agree that the implementation of a natural principle must be "inventive" rather than concededly conventional (as Flook had conceded). To him, that improperly mixed obviousness under section 103 up with statutory subject matter under section 101. But Judge Rich overlooked what Justice Stevens pointed out--that Flook did not purport to have implemented the process in anything but a conventional way and did not purport to have added anything to what was previously known but the use of the smoothing formula. Justice Stevens saw the case as one in which Flook did not even purport to have invented anything capable of being patented. (Justice Stevens responded to the Bergy critique in his dissenting opinion in the Diehr case.)

Actually, the concession by Flook made the Flook case an easy one. But one could hardly expect any applicant in a subsequent case to make a similar concession. It is unclear how to apply the principle of the Flook case to other cases where no such concession exists. In one class of case, where the implementation is utterly trivial on its face, as in Funk v. Kalo Inoculant Co., the applicability of the same principle seems clear. But that appears to be the outer limit of the easy case. Once reasonable persons can differ on whether the implementation is barely removed from the natural principle, it would seem that the Flook principle cannot be employed. If a full-scale Graham v. Deere analysis must be used to evaluate the implementation, it would seem that the case can no longer be disposed of on section 101 grounds. That is what appears to have happened in the next member of the trilogy, Diamond v. Diehr.

For many years commentators thought that Diehr overruled Flook or reduced it to innocuous desuetude. In Mayo v. Prometheus , however, the Supreme Court "rehabilitated" Flook and harmonized it, Diehr, and the other decisions of the Supreme Court as well as the 19th century English decision of Neilson v. Harford . [14] The Mayo Court read the prior cases to establish as a centerpiece of this branch of law that for a claimed invention based on the implementation of a law of nature or a "principle" to gain a patent monopoly, the implementation must not be conventional or trivial but must instead be inventive, which is to say, presumably, novel and not obvious. This has led to further controversy, as discussed in Mayo v. Prometheus and Ariosa v. Sequenom . The subsequent opinion of the Supreme Court in Alice Corp. v. CLS Bank International confirmed the reaffirmation of Flook in the Mayo case, holding that simply implementing an abstract idea on a computer could not confer patent eligibility.

Related Research Articles

The software patent debate is the argument about the extent to which, as a matter of public policy, it should be possible to patent software and computer-implemented inventions. Policy debate on software patents has been active for years. The opponents to software patents have gained more visibility with fewer resources through the years than their pro-patent opponents. Arguments and critiques have been focused mostly on the economic consequences of software patents.

Neither software nor computer programs are explicitly mentioned in statutory United States patent law. Patent law has changed to address new technologies, and decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit (CAFC) beginning in the latter part of the 20th century have sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software. The first computer software case in the Supreme Court was Gottschalk v. Benson in 1972. Since then, the Supreme Court has decided about a half dozen cases touching on the patent eligibility of software-related inventions.

State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, also referred to as State Street or State Street Bank, was a 1998 decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. State Street for a time established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some practical application and, in the words of the State Street opinion, "it produces a useful, concrete and tangible result."

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

Diamond v. Diehr, 450 U.S. 175 (1981), was a United States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not preclude patentability of the invention as a whole. The high court reiterated its earlier holdings that mathematical formulas in the abstract could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions.

Patentable, statutory or patent-eligible subject matter is subject matter of an invention that is considered appropriate for patent protection in a given jurisdiction. The laws and practices of many countries stipulate that certain types of inventions should be denied patent protection. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

<span class="mw-page-title-main">Giles Rich</span> American judge

Giles Sutherland Rich was an associate judge of the United States Court of Customs and Patent Appeals (CCPA) and later on was a United States Circuit Judge of the United States Court of Appeals for the Federal Circuit (CAFC), and had enormous impact on patent law. He was the first patent attorney appointed to any federal court since Benjamin Robbins Curtis was appointed to the Supreme Court in 1851.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.

Freeman-Walter-Abele is a now outdated judicial test in United States patent law. It came from three decisions of the United States Court of Customs and Patent Appeals—In re Freeman, 573 F.2d 1237, In re Walter, 618 F.2d 758 ; and In re Abele, 684 F.2d 902 —which attempted to comply with then-recent decisions of the Supreme Court concerning software-related patent claims.

<i>In re Bilski</i>

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385, was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patenting of method claims, particularly business methods. The court affirmed the rejection of the patent claims involving a method of hedging risks in commodities trading, as non-patentable subject matter. Most importantly, the Court concluded, that machine-or-transformation test "was proper test to apply to determine patent-eligibility of process", and that the “useful, concrete and tangible result” of State Street Bank v. Signature Financial Group and AT&T Corp. v. Excel Communications, Inc. should no longer be relied upon.

The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, was the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp. This doctrine has been considered abrogated by the US Congress in 1952, when it passed the 1952 Patent Act.

In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if (1) the process is implemented by a particular machine in a non-conventional and non-trivial manner or (2) the process transforms an article from one state to another.

Neilson v Harford (1841) 151 ER 1266 is a 19th-century English patent law decision that several United States Supreme Court patent law opinions rely upon as authority. The question, as Baron Alderson posed it, was “[W]here is the difference between claiming a principle, which is to be carried into effect any way you will, and claiming a mere principle?” The answer, as the opinions of the various courts that have considered the matter develop, is nowhere.

Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), is a United States Supreme Court decision in which the Court held that a facially trivial implementation of a natural principle or phenomenon of nature is not eligible for a patent.

AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 was a case in which the United States Court of Appeals for the Federal Circuit reversed the decision of the United States District Court for the District of Delaware, which had granted summary judgment to Excel Communications, Inc. and decided that AT&T Corp. had failed to claim statutory subject matter with U.S. Patent No. 5,333,184 under 35 U.S.C. § 101. The United States Court of Appeals for the Federal Circuit remanded the case for further proceedings.

Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), was a 2014 United States Supreme Court decision about patent eligibility of business method patents. The issue in the case was whether certain patent claims for a computer-implemented, electronic escrow service covered abstract ideas, which would make the claims ineligible for patent protection. The patents were held to be invalid, because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that abstract idea into patentable subject matter.

<i>In re Alappat</i>

In re Alappat, 33 F.3d 1526, along with In re Lowry and the State Street Bank case, form an important mid-to-late-1990s trilogy of Federal Circuit opinions because in these cases, that court changed course by abandoning the Freeman-Walter-Abele Test that it had previously used to determine patent eligibility of software patents and patent applications. The result was to open a floodgate of software and business-method patent applications, many or most of which later became invalid patents as a result of Supreme Court opinions in the early part of the following century in Bilski v. Kappos and Alice v. CLS Bank.

Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874), is an 1874 decision of the United States Supreme Court concerning the patent eligibility of abstract ideas. As explained below in the Subsequent developments section, it is intermediate in the development of that aspect of patent law from Neilson v Harford, through O'Reilly v. Morse, to Funk Bros. Seed Co. v. Kalo Inoculant Co., and then to Parker v. Flook, Mayo Collaborative Servs. v. Prometheus Labs., Inc., and Alice Corp. v. CLS Bank Int'l.

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, is a controversial decision of the Federal Circuit in which the court applied the Mayo v. Prometheus test to invalidate as patent-ineligible a patent said to "solve ... a very practical problem accessing fetal DNA without creating a major health risk for the unborn child." The rationale for denying patent-eligibility in this case allegedly stems from claims being directed toward non-eligible subject matter , "if the APPLICATION [of this discovery] merely relies upon elements already known in the art."

<span class="mw-page-title-main">Patentable subject matter in the United States</span>

Patentable subject matter in the United States is governed by 35 U.S.C. 101. The current patentable subject matter practice in the U.S. is very different from the corresponding practices by WIPO/Patent Cooperation Treaty, and it is considered to be broader in general. Since the enactment of the subject matter requirement ca. 1970, the interpretation of the statute changed multiple times. Although Section 101 of Title 35 U.S.C. reads:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

References

  1. 1 2 3 Parker v. Flook, 437 U.S. 584, 594 (1978).
  2. ↑ MICHAEL SANZO. Genetic Technologies Ltd. v. Merial L.L.C.: Gene-Based Assays in the Wake of Mayo. 35 Biotechnology Law Report 89 Number 3, 2016.
  3. ↑ The other two cases were: Gottschalk v. Benson , 409 U.S. 63 (1972), and Diamond v. Diehr , 450 U.S. 175 (1981).
  4. ↑ For an explanation of the mathematics and a graph illustrating a similar algorithm see Engineering Statistics Handbook, U.S. Dept. of Commerce.
  5. ↑ Robert G. Brown is credited with the "invention" of this "smoothing" technique, which is described. among other places, in Robert G. Brown, Smoothing, Forecasting, and Prediction of Discrete Time Series (1963). Another source states that the technique of exponential smoothing was first suggested by C.C. Holt in 1957. Flook's application, Ser. No. 194,032, was filed October 29, 1971, eight years after Brown and fourteen years after Holt.
  6. ↑ Section 101 says, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title." Section 100(b) gives the definition for process, "The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material." 35 U.S.C.   § 101.
  7. ↑ Neilson v. Harford , 151 Eng. Rep. 1266, 8 M. & W. 806, Web. Pat. Cas. 273 (1844). An excerpted version is available at Geo. Wash. L.S.
  8. ↑ O'Reilly v. Morse , 56 U.S. (15 How. ) 62 (1853).
  9. ↑ The same legal principle was determinative in Funk Brothers Seed Co. v. Kalo Inoculant Co. , where the inventor had discovered that certain species of leguminous bacteria did not inactivate one another, as most did, and he proceeded to exploit this phenomenon of nature by providing a package containing a mixture of the particular bacterial species. Because the Court considered this implementation trivial on its face, it held that the patent was no different from one on the phenomenon itself, which was impermissible. Flook therefore applied to a process the legal principle that Funk applied to an article of manufacture or composition.
  10. ↑ The patent examiner so found and Flook did not contest the ruling.
  11. ↑ In re Bergy, 596F.2d952 (C.C.P.A.1979).
  12. ↑ In re Bergy, 563 F.2d 1031 (C.C.P.A. 1977), vacated sub nom. Parker v. Bergy, 438 U.S. 932(1978).
  13. ↑ This ignores the admonition in Graham that the words of the patent statute must be read and interpreted in the light of the words of the Constitution and the purpose of the patent clause. In 2011 the Federal Circuit remarked in passing: "We note that Bergy is no longer binding law." Ass'n for Molecular Pathology v. United States PTO, 653F.3d1329 , 1352 n.7( Fed. Cir. 2011).
  14. ↑ The harmonization effort and the "rehabilitation" is discussed in Richard H. Stern, Mayo v. Prometheus: No Patents on Conventional Implementations of Natural Principles and Fundamental Truths, [2012] Eur. Intell. Prop. Rev. 502.
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.