Federal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 1

July 24, 2018
Post by Kirk M. Hartung

I will be posting for the next several weeks in a series regarding the infamous "Abstract Idea" Mess. Stay tuned for next week's series follow-up!

In a decision of the United States Court of Appeals for the Federal Circuit (CAFC) dated July 20, 2018, and including AOL, Apple, Google and Yahoo as defendants, Judge Plager issued a 17-page dissent calling the current state of the law on patent eligibility to be unworkable and in need of a fix. Judge Plager, who has served on the CAFC since 1989, lamented that the state of the law gives little confidence that the outcomes are correct, and renders it nearly impossible to know with any certainty whether an invention is or is not patent eligible.

The dissent notes that there are three judicially created exceptions to 35 U.S.C. § 101, which defines patentable inventions as a new and useful process, machine, manufacture, or composition of matter. The three exceptions are laws of nature, natural phenomenal, and abstract ideas, with “abstract ideas” being the most troublesome. In 2014, the U.S. Supreme Court set forth an analytical structure for evaluating whether a claimed invention is a non-patentable abstract idea in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). As Judge Plager notes, the phrase “abstract idea” is a definitional morass, because neither the Supreme Court nor the CAFC (effectively the final Appellate Court for most patent appeals) has provided a single, succinct, usable definition. One problem is that defining “abstract ideas” cannot be done except through the use of equally abstract terms. By analogy, “abstract ideas” is like “obscenity” in that both failed to provide the specificity and clarity that makes it useful for future prediction of outcome in any given case.

Judge Plager also discussed the two-step process of Alice: first determine whether the claims are directed to an abstract idea, and if so, then determine whether the claims involve an “inventive concept,” in which case the claims will be patentable.

Judge Plager notes a first puzzle in that if the Court, after reviewing the claims in light of the specification, determines that the claims are abstract, how does the same court then read the claims again and conclude that they are “un-abstract”. An even bigger puzzle is the history of “inventive concept”. The 1952 Patent Act, written in large part by Judge Giles Rich, who dedicated his life to patent law, repeatedly explained that the new § 103 non-obviousness provision obviated the concept of “inventive concept”. Now, 65 years later, “inventive concept” is alive and well, even though Congress agreed that “inventive concept” was unworkable by their adoption of the 1952 Patent Act.

Judge Plager points out that he is not criticizing the work of the Supreme Court nor of the CAFC, but merely acknowledges the many problems with the current law of “abstract ideas” and “inventive concept”. He joins at least two other judges from the Court of Appeals for the Federal Circuit who have critiqued the “abstract idea” test and the complex issues of the current § 101 patent eligibility jurisprudence which many considered to be highly problematic. This is a real problem with almost universal criticism among commenters and academicians regarding the havoc created in the latent law by the “abstract idea” idea. The Alice test has not produced coherent, readily understandable, replicable, and demonstrably just outcomes. Judge Plager concludes that the current state of the law does not serve either the patent law nor the public well.

See the full decision, Interval Licensing LLC v. AOL, Inc., Apple, Inc., Google LLC, Yahoo!, Inc., case numbers 2016-2502, 2016-2505, 2016-2506, 2016-2507, July 20, 2018. 


Kirk M. Hartung is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at


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