Federal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 3

August 08, 2018
Post by Kirk M. Hartung

This abstract idea case continues to stir up important matters that we all need to keep a close eye on. Below you'll find part 3 of this blog series concerning the "abstract idea". To read the previous posts, please first view Part 1 of the series, and then view Part 2 of the series.

The previous posts regarding the dissent by Judge Plager of the Court of Appeals for the Federal Circuit (CAFC) on June 20, 2018, is not an isolated or first instance that a Federal Circuit judge has lamented about the difficulties and problems existing under the current state of the law for the judicial acceptations to § 101 patentable subject matter. Last year, Judge Linn of the CAFC issued a dissent expressing his frustration with the two-part patent eligibility test set forth by the Supreme Court in Alice.

Initially, Judge Linn acknowledged the well-recognized principle that the language of the patent subject matter statute, § 101, has a wide and permissive scope for patent eligibility, as plainly contemplated by Congress. Judge Linn also noted that the judicial exceptions to patentable subject matter (laws of nature, natural phenomena, and abstract ideas), applies narrowly, as stated by the Supreme Court in Alice and Mayo.

Despite the wide scope of § 101 and the narrow scope of the judicial exceptions, Judge Linn stated, “The abstract idea exception is almost impossible to apply consistently and coherently”. The two-part test (first, is the claim directed towards an abstract idea, and second, whether the claim contains something more in terms of inventive concept) is indeterminate and leads to arbitrary results. Judge Linn has seen the abstract idea exception strike down claims covering meritorious inventions not because they attempt to appropriate a basic building block of scientific or technological work, which was the genesis of the exception, but rather, simply because it fails the two-part test.

The judge noted that the test often results in re-characterization of the claims and leads to his rhetorical questions as to which claim limitations matter, and which do not, and which claim limitations should be considered and which should be ignored? There is still a great amount of uncertainty, despite the numerous cases which have faced these questions and attempted to provide practical guidance. In Judge Linn’s words, “the danger of getting the answers wrong are greatest for some of today’s most important inventions, including those relating to computing, medical diagnostics, artificial intelligence, the Internet of Things, and robotics, among other things”.

Judge Linn concluded that claims which are directed not merely to basic building blocks of scientific or technological activity, but instead to innovative solutions to real problems that result from human activity and are not capable of performance solely in the human mind, should be fully eligible for patent protection. 

See Smart Systems Innovations, LLC v. Chicago Transit Authority et al., Case No. 216-233 (Fed. Cir October 18, 2017).

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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