Flash-of-Genius as Evidence of Eligibility - Patently-O

Steve Morsa v. USPTO (Supreme Court 2020)

Patent holder and occasional Patently-O commentor Steve Morsa has filed his petition for writ of certiorari to the US Supreme Court on his pending Patent App. No. 13/694,192.  [Petition].

Morsa’s approach is interesting — using the Supreme Court’s “flash of genius” decision in a positive light and arguing that his own flash of creative genius is proof of eligibility.

[T]he new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling.

Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).  Morsa explains that the 1952 Patent Act eliminated “invention” and “flash of genius” as requirements of patent eligibility.  At the same time, Congress did not eliminate those elements as one basis for proving patent eligibility.

[M]y invention’s 2004 genesis Demographics! – was an out-of-the-blue light bulb moment; an epiphany; what’s often referred to as a “flash of creative genius” (though I’m no genius). It did not result from thinking up / inventing a way to computerize or move to the Internet or computer networks something currently in existence or from the past. . . .

[I]nventions which are, like here, the result of a flash of creative genius are, under Cuno, patent eligible. This is eligibility dispositive. The eligibility analysis should have ended there.

Petition. Thus, Morsa asks:

• May the Federal Circuit and Patent Office ignore this Court’s seminal Cuno decision?

Morsa’s petition presents two additional questions:

• May the Federal Circuit and Patent Office ignore Patent Office proof of no undue preemption?
• May the Federal Circuit and Patent Office establish their own Section §101 Law?

The preemption argument is interesting and important. The Supreme Court has noted that preemption-of-ideas is a fundamental basis for the restriction on eligibility.  At the same time, the Federal Circuit & USPTO have refused to consider any actual evidence of whether a particular claim would be preemptive.  Instead, the tribunals look to the two-step Alice/Mayo process as the proxy for determining preemption.

= = = =

OK – now lets looks at Morsa’s claim 2 (claim 1 is cancelled) directed to a “technical field improving technological process.”  This is not starting off well.  The claim goes on to detail a process of collecting a user’s demographic information; receiving an advertising bid associated with the demographic; then showing the ad to the user if it is a ‘match.’

A technical field improving technological process comprising:

transmitting by a computer system over a network for display to a user a request for demographic and/or psychographic user information;

receiving at the computer system over the network from the user the user information;

saving by the computer system the user information;

receiving at the computer system over the network from a first advertiser an association between (i) one or more first criteria comprising demographic and/or psychographic criteria and a first ad and (ii) a first bid, the bid being the highest amount the advertiser is willing to, but may not have to, pay, and the first ad;

receiving at the computer system over the network from a second advertiser an association between (i) one or more second criteria comprising demographic and/or psychographic criteria and a second ad and (ii) a second bid, the bid being the highest amount the advertiser is willing, but may not have, to pay, and the second ad;

determining by the computer system that a first match exists between the first criteria and the user information;

determining by the computer system that a second match exists between the second criteria and the user information;

in the event of both a first match and a second match, determining by the computer system placement of at least one of the first and second ads based on one or more ad placement factors comprising the first and second bids;

transmitting by the computer system at least one of the first and second ads over the network to the user.

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Flash-of-Genius as Evidence of Eligibility - Patently-O
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