Patent-Eligible Subject Matter (Sec. 101)

Patent-Eligible Subject Matter (Sec. 101)

  • BASICS: “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.” 35 U.S.C. § 101. Sec. 101 “challenges constitute validity and patentability challenges.” Versata II (Fed. Cir. 07/09/15) (PTAB may cancel claims in CBM under Sec. 101). “The Court has long held that this provision contains an important implicit exception. ‘[L]aws of nature, natural phenomena, and abstract ideas’ are not patentable.” Mayo (U.S. 03/20/2012) (unanimous); Alice Corp. (U.S. 06/19/2014) (Thomas, J.) (unanimous). This exclusion includes mathematical formulas and algorithms, Bilski v. Kappos (U.S. 06/28/2010), and mental processes, Benson (U.S. 11/20/1972) (method “can be done mentally”). The abstract-ideas category is not confined to “preexisting, fundamental truth[s]” that “‘exis[t] in principle apart from any human action.’” Alice Corp. (U.S. 06/19/2014) (claims directed to “the abstract idea of intermediated settlement,” a fundamental economic practice). But see DDR Holdings (Fed. Cir. 12/05/14) (Chen, J.) (Mayer, J., Dissenting Op.) (2-1) (aff’g rejection of Sec. 101 invalidity defense, distinguishing Alice, Ultramercial III, buySAFE, Accenture, Bancorp: claims do not “recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations.”)
  • Alice Changed The Federal Circuit Governing Law: Ultramercial III (Lourie, J.) (Mayer, J., Concurring Op.) (Fed. Cir. 11/14/14) (aff’g motion to dismiss for ineligibility, despite previously finding claims eligible both pre-Mayo and again post-Mayo but pre-Alice); see Inventor Holdings (Fed. Cir. 12/08/17) (aff’g award of $931,903.45 in post-Alice attorney fees: “Alice was a significant change in the law as applied to the facts of this particular case. Prior to Alice, the state of the law for computer-implemented business transaction inventions was less than clear, given this court’s divided en banc opinion.”); Mortgage Grader (Fed. Cir. 01/20/16) (Stark, J.) (citing about-face in Ultramercial III as demonstrating “that a § 101 defense previously lacking in merit may be meritorious after Alice.”) But see Voter Verified (Fed. Cir. 04/20/18) (Alice did not change the law compared to Mayo; it “was merely applying the same test as it set out in Mayo, and did not materially change it.”)
  • Sec. 101 Exclusions Are General Legal Rules Applicable To All Fields: Mayo (U.S. 03/20/2012) (unanimous) (declining to adopt increased protection for discoveries of diagnostic laws of nature). But see DDR Holdings (Fed. Cir. 12/05/14) (2-1) (claims different than earlier cases “because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”)
  • BensonFlookDiehr Are Guideposts For Policing Abstractness Exclusion: Bilski v. Kappos (U.S. 06/28/2010) (decision of court joined by five Justices, two concurring opinions) endorsed the analysis and holdings in its BensonFlookDiehr. Accord Mayo (U.S. 03/20/2012) (unanimous) (relying primarily on these three precedents); CLS Bank (Fed. Cir. 05/10/13) (en banc (two opinions collectively joined by 9 of 10 judges refer to S. Ct. rulings as “guideposts”), aff’d, Alice Corp. (U.S. 06/19/2014); Fort Prop. (Fed. Cir. 02/27/12) (“Four seminal Supreme Court precedents provide guidance regarding when an invention qualifies as a patent-eligible process as opposed to an abstract idea.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (rejecting patent owner argument that claims eligible because claim technique designed for use on computer and different than how human would perform same action, because that was true also in Benson); Bancorp (Fed. Cir. 07/26/12) (“for purposes of § 101 there is no material difference between the claims invalidated in Bilski and those at issue here.”)”
  • “Article Of Manufacture” Includes Components Made By Hand Or Machine, Of Multi-Component Product: In design patent damages provision (35 U.S.C. § 289 (“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, ….”), “article of manufacture” has a “broad meaning” of “simply a thing made by hand or machine” and “broad enough to encompass both a product sold to a con­sumer as well as a component of that product,” and “this reading is also consistent with 35 U.S.C. § 101.” Samsung (U.S. 12/06/2016) (reversing Fed. Cir. restriction of term to article sold separately; quoting: “‘Manufacture,’ … is ‘the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’” Am. Fruit Growers (U.S. 03/02/1931).)
  • Claim Encompassing Both Eligible And Ineligible Subject Matter Is Ineligible: If “a claim covers ‘both statutory and non-statutory embodiments,’ it is not eligible for patenting.” Mentor Graphics (Fed. Cir. 03/16/17) (citing M.P.E.P.).
  • Proper To Consider Only Representative Claims Where Others Are Substantially Similar: Where the claims “‘are substantially similar and linked to the same’ law of nature, analyzing representative claims is proper.” The Cleveland Clinic (Fed. Cir. 06/16/17) (aff’g grant of motion to dismiss for invalidity under Sec. 101). But see Berkheimer (Fed. Cir. 02/08/18) (improper to consider claim 1 representative where patent owner argued that limitations in dependent claims provided an inventive concept, but here district court considered dependent claims also).
  • AIA: “No patent may issue on a claim directed to or encompassing a human organism.” (Sec. 33) {Effective for any patent application filed or after 09/16/11}. Consider using “directed to or encompassing” language rather than just “directed to.” Cf. Mayo (U.S. 03/20/2012) (“The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern.”)
  • TIPS: Abstractness Exclusion In A Nutshell:
  • TIPS: Apt Lingo For Claiming An Abstraction:
  • TIPS: What Claims Including An Abstract Idea Have Best Chance of Surviving An Abstractness Exclusion Challenge?:

a) Alice step one

  • First Step Of Mayo/Alice Analysis: Claim Directed To Or Embody An Abstract Idea, Etc.?: First, is the claim “directed to” a patent-ineligible concept, i.e., laws of nature, natural phenomena, and abstract ideas? Alice Corp. (U.S. 06/19/2014); Mayo (U.S. 03/20/2012) (“The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern”); see SAP Am. (Fed. Cir. 08/02/18) (“The first stage of the Alice inquiry looks at the ‘focus’ of the claims, their ‘character as a whole’; and the second stage of the inquiry (where reached) looks more precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms, they identify an ‘inventive concept’ in the application of the ineligible matter to which (by assumption at stage two) the claim is directed.”); Ariosa Diagnostics (Fed. Cir. 12/02/15) (Lourie, J., Concurring Op. denial of en banc rehearing) (disagreeing with Mayo) (“Abstract steps are, axiomatically, the opposite of tangible steps; that which is not tangible is abstract.” “abstract ideas are essentially mental steps; they are not tangible even if they are written down or programmed into a physical machine.”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g invalidity judgment on pleadings; “there is [no] single, succinct, usable definition or test” of “abstract idea” so decisions take common law approach of comparing claims to those in earlier decisions); but see Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (Reyna, J., dissenting in part) (“inventive concept” need not be tangible: “A software program is a digital machine. Like a physical machine, a digital machine is made of specific parts that interact with one another to achieve a specific result in a specific way.”) “Under step one of Mayo / Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents (Fed. Cir. 06/23/15).
  • Abstract Means Not A Particular (Concrete) Way (How) In Physical Realm: Courts have deemed non-physical limitations as “abstract” and deemed functions performed or results achieved without specification of a particular way (how) it is performed or achieved, as “abstract.” See, e.g.SAP Am. (Fed. Cir. 08/02/18)  (distinguishing claims directed at abstract ideas from McRO claims, describing latter as being directed to advance in something “physical” and as having “concrete” specificity, and Thales claims directed at “improved physical things and actions”.)
  • Claim Directed To Abstract Idea If “Focus” On Idea Or “Begins And Ends” With Idea: In determining whether claim is “directed to” an abstract claim (or law of nature), courts consider if claim’s “focus” is on the abtract idea (Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (evaluate “‘the focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.”); Elec. Power (Fed. Cir. 08/01/16) (“the claims are clearly focused on the combination of those abstract-idea processes …. They are therefore directed to an abstract idea.”); BSG Tech. (Fed. Cir. 08/15/18) (“a claim is not patent eligible merely because it applies an abstract idea in a narrow way. For an application of an abstract idea to satisfy step one, the claim’s focus must be something other than the abstract idea itself.”), or “begins and ends” with the abstract idea, Ariosa (Fed. Cir. 06/12/15) (“The method therefore begins and ends with a natural phenomenon. Thus, the claims are directed to matter that is naturally occurring.”).
    • Directed to Abstract Idea:

      “Abstract Idea” To Which Claims Directed

      Ruling

      Data Engine (Fed. Cir. 10/09/18) (Stoll, J.) “collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes”

      “identifying and storing electronic spreadsheet pages”

      aff’g R. 12(c)

      8 claims

      [but rev’g on most claims]

      In re Villena (Fed. Cir. 08/29/18) (Stoll, J.) (non-precedential) “property valuation” aff’g rejection ex parte appln.

      3 claims

      BSG Tech. (Fed. Cir. 08/15/18) (Hughes, J.) “considering historical usage information while inputting data” aff’g Summ. J.

      7 claims

      Interval Licensing (Fed. Cir. 07/20/18) (Chen, J.) “the presentation of two sets of information, in a nonoverlapping way, on a display screen” aff’g R. 12(c)

      4 claims

      Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precendential) “a mathematical methodology to convert geospatial coordinates into a single string of natural numbers” aff’g R. 12(b)(6)

      2 claims

      SAP Am. (Fed. Cir. 08/02/18) (Tarano, J.) “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” aff’g R. 12(c)

      31 claims

      In Re: Eberra (Fed. Cir. 05/04/18) (per curiam) (non-precedential) “promoting the purchase of a product with the incentive being a spot in a televation program, i.e. product promotion” aff’g PTAB rejection of ex parte appln. claims

      14 claims

      Voter Verified (Fed. Cir. 04/20/18) (Lourie, J.) “voting, verifying the vote, and submitting the vote for tabulation” aff’g R. 12(b)(6)

      92 claims

      Maxon (Fed. Cir. 04/09/18) (Hughes, J.) (non-precedential) “decentralized delivery controlled by the owner of a plurality of devices” aff’g R. 12(b)(6)

      4 claims

      Intellectual Ventures (Symantec) (Fed. Cir. 03/15/18) (O’Malley, J.) (non-precedential) “backing up data” aff’g R. 56

      2 claims

      Automated Tracking (Fed. Cir. 02/16/18) (Stoll, J.) (non-precedential) “collecting data, analyzing it, and determining the results based on the analysis of data.” [per district court; Fed. Cir. held claim directed to abstract idea without identifying it.] aff’g R. 12(c)

      4 claims

      Zuili (Fed. Cir. 02/09/18) (Wallach, J.) (non-precedential) “collecting, transmitting, analyzing, and storing data to detect fraudulent and/or invalid clicks based on the time between two requests by the same device or client” aff’g PTAB CBM FWD claims unpatentable

      24 claims

      Berkheimer (Fed. Cir. 02/08/18) (Moore, J.) “parsing and comparing data;”

      “parsing, comparing, and storing data;”

      “parsing, comparing, storing, and editing data”

      aff’g R. 56

      4 claims (vacating on 3 claims)

      Move, Inc. (Fed. Cir. 02/01/18) (Stoll, J.) (non-precedential) “a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user.” aff’g R. 56

      12 claims

      Inventor Holdings (Fed. Cir. 12/08/17) (Chen, J.) “local processing of payments for remotely purchased goods.” aff’g post-Alice fees award (earlier aff’d R. 12(c))

      23 claims

      Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (Wallach, J.) (non-precedential) “the identification of unwanted files in a particular field (i.e., a computer network) and otherwise concern data collection related to such identification.” aff’g R. 12(b)(6)

      16 claims

      Two-Way Media (Fed. Cir. 11/01/17) (Reyna, J.) “(1) sending information, (2) directing the sent information, (3) monitoring the receipt of the sent information, and (4) accumulating records about receipt of the sent information;”

      “monitoring the delivery of real-time information to a user or users;”

      “measuring the delivery of real-time information for commercial purposes.”

      aff’g R. 12(c)

      223 claims

      Smart Sys. (Fed. Cir. 10/18/17) (Wallach, J.) (2-1, Linn, J., dissenting on two patents) “the formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions.” aff’g R. 12(c)

      87 claims

      Secured Mail (Fed. Cir. 10/16/17) (Reyna, J.) “using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object.” aff’g R. 12(b)(6)

      143 claims

      Return Mail (Fed. Cir. 08/28/17) (Prost, C.J.) “‘relaying mailing address data.’” aff’g PTAB CBM FWD claims unpatentable

      3 claims

      Audatex (Fed. Cir. 07/27/17) (Prost, C.J.) (non-precedential) “‘providing a vehicle valuation through the collection and use of vehicle information’” aff’g PTAB CBM FWD substitute claims unpatentable

      60 claims

      Prism Tech. (Fed. Cir. 06/23/17) (Prost, C.J.) (non-precedential) “‘providing restricted access to resources’” rev’g denial of R. 50(b) invalidity

      18 claims

      Credit Acceptance (Fed. Cir. 06/09/17) (Dyk, J.) “processing an application for financing a purchase” aff’g PTAB CBM FWD unpatentable

      23 claims

      EasyWeb (Fed. Cir. 05/12/17) (Hughes, J.) (non-precedential) “receiving, authenticating, and publishing data” aff’g R. 56 invalidity

      7 claims [at least]

      RecogniCorp (Fed. Cir. 04/28/17) (Reyna, J.) “encoding and decoding image data;” “Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end.” aff’g R. 12(c)

      37 claims

      West View (Fed. Cir. 04/19/17) (Wallach, J.) (non-precedential) “receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query” aff’g R. 12(c)

      81 claims

      Coffelt (Fed. Cir. 03/15/17) (per curiam) (non-precedential) “calculating and comparing regions in space” aff’g R. 12(b)(6)

      6 claims

      Clarilogic (Fed. Cir. 03/15/17) (Reyna, J.) (non-precedential) “gathering financial information of potential borrowers;” “a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction.” aff’g R. 56 invalidity

      18 claims

      In re Salwan (Fed. Cir. 03/13/17) (per curiam) (non-precedential) “billing insurance companies and organizing patient health information” aff’g PTAB rejection of ex parte appln. claims

      42 claims

      Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (Prost, C.J.) [first patent:] “‘creating an index and using that index to search for and retrieve data;’”

      “using XML tags—as opposed to other kinds of tags—to build an index;” [second patent:] “‘remotely accessing user specific information’”

      aff’g R. 12(b)(6)

      77 claims

      Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (Prost, C.J.) “collecting, displaying, and manipulating data of particular documents” aff’g R. 56 invalidity

      29 claims

      Smartflash (Fed. Cir. 03/01/17) (Prost, C.J.) (non-precedential) “‘conditioning and controlling access to data based on payment.’” rev’g denial R. 50(b)(b) invalidity

      4 claims

      Evolutionary Intelligence (Fed. Cir. 02/17/17) (Lourie, J.) (non-precedential) “selecting and sorting information by user interest or subject matter, a longstanding activity of libraries and other human enterprises” aff’g R. 12(b)(6)

      39 claims

      Apple (Ameranth) (Fed. Cir. 11/29/16) (Reyna, J.) “certain functionality—here, the ability to generate menus with certain features;”

      “generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location;”

      “taking orders from restaurant customers on a computer”

      aff’g PTAB CBM unpatentability 27 claims; rev’g patentability 9 claims

      36 claims

      Tranxition (Fed. Cir. 11/16/16) (Prost, C.J.) (non-precedential) “migration, or transitioning, of settings” [claim recited automatic migration of computer settings from one computer to another] aff’g R. 56 invalidity 81 claims
      Synopsys (Mentor) II (Fed. Cir. 10/17/16) (Chen, J.) “translating a functional description of a logic circuit into a hardware component description of the logic circuit”

      [Unlike the challenger’s “articulation of the abstract idea, which largely restates [claim] in different words, we believe our definition more accurately captures the ‘basic thrust’ of the Asserted Claims.”]

      aff’g R. 56 invalidity 16 claims
      FairWarning (Fed. Cir. 10/11/16) (Stoll, J.) “analyzing records of human activity to detect suspicious behavior” aff’g R. 12(b)(6) 17 claims
      Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (Dyk, J.) “receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization—in other words, filtering files/e-mail;”

      “the screening of messages by corporate organizations—in the context of electronic communications;”

      “virus screening”

      aff’g R. 56 and R. 52(c) invalidity 12 claims; rev’g denial R. 52(c) invalidity 1 claim

      13 claims

      Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (Bryson, J.) “providing out-of-region access to regional broadcast content” aff’g R. 12(b)(6) 21 claims
      Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (Bryson, J.) “delivering user-selected media content to portable devices”;

      “customizing a user interface”

      aff’g R. 12(c) 20 claims
      TDE Petroleum (Fed. Cir. 08/15/16) (Hughes, J.) (non-precedential) “storing, gathering, and analyzing data” aff’g R. 12(b)(6) 115 claims
      Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.) “collecting information, analyzing it, and displaying certain results of the collection and analysis” aff’g R. 56 invalidity 16 claims
      LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential) “a loan-application clearinghouse or, more simply, coordinating loans” [Note: one claim had 11 steps and 361 words] rev’g denial R. 56 invalidity 11 claims
      Shortridge (Fed. Cir. 07/13/16) (non-precedential) (per curiam) “‘cataloging labor data’” aff’g R. 12(c)

      24 claims

      TLI Commc’ns (Fed. Cir. 05/17/16) (Hughes, J.) “classifying and storing digital images in an organized manner” aff’g R. 12(b)(6) 5 claims [at least]
      In re Brown (Fed. Cir. 04/22/16) (per curiam) (non-precedential) “assigning hair designs to balance head shape” aff’g PTAB rejection ex parte appln.

      13 claims

      In re Smith (Fed. Cir. 03/10/16) (Stoll, J.) “rules for conducting a wagering game” aff’g PTAB rejection ex parte appln. 18 claims
      Mortgage Grader (Fed. Cir. 01/20/16) (Stark, J.) “‘anonymous loan shopping’” aff’g R. 56 invalidity 4 claims
      Vehicle Intelligence (Fed. Cir. 12/28/15) (per curiam) (non-precedential) “testing operators of any kind of moving equipment for any kind of physical or mental impairment;”

      “using an unspecified ‘expert system’ running on equipment that already exists in various vehicles”

      aff’g R. 12(c) 10 claims
      Versata II (Fed. Cir. 07/09/15) (Plager, J.) “determining a price, using organizational and product group hierarchies”

      [method, system and CRM claims]

      aff’g PTAB CBM FWD unpatentability 4 claims
      Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (Dyk, J.) “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting);”

      “customizing information based on . . . information known about the user”

      aff’g R. 56 invalidity 20 claims
      Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) “retaining information in the navigation of online forms” aff’g R. 12(b)(6) 8 claims
      OIP Tech. (Fed. Cir. 06/11/15) (Hughes, J.) (Mayer, J., Concurring Op.) “offer-based price optimization” aff’g R. 12(b)(6) 4 claims [at least]
      Content Extraction (Fed. Cir. 12/23/14) (Chen, J.) “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” aff’g R. 12(b)(6) 242 claims
      In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (Dyk, J.) “comparing BRCA sequences and determining the existence of alterations” aff’g denial prelim. injunc.

      2 claims

      Ultramercial III (Fed. Cir. 11/14/14) (Lourie, J.) (Mayer, J., Concurring Op.) “receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad;”

      “showing an advertisement before delivering free content”

      aff’g R. 12(b)(6) [having previously held claims eligible pre-Mayo and again post-Mayo but pre-Alice

      16 claims

      buySAFE (Fed. Cir. 09/03/14) (Taranto, J.) “creating a contractual relationship—a ‘transaction performance guaranty.’” aff’g R. 12(c) invalidity 4 claims
      Planet Bingo (Fed. Cir. 08/26/14) (Hughes, J.) (non-precedential) “managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions;”

      “’solv[ing a] tampering problem and also minimiz[ing] other security risks’ during bingo ticket purchases”

      aff’g R. 56 invalidity
      52 claims
      Digitech (Fed. Cir. 07/11/14) (Reyna, J.) “a process of organizing information through mathematical correlations and is not tied to a specific structure or machine” aff’g R. 56 invalidity 19 claims
      Alice Corp. (U.S. 06/19/2014) (Thomas, J.) “intermediated settlement” aff’g R. 56 invalidity

      208 claims

    • Not Directed To Abstract Idea Or Law of Nature: Data Engine (Fed. Cir. 10/09/18) (rev’g R. 12(c) judgment of invalidity on most claims; considering claims as a whole in light of the Spec., claims are directed to implementing “a notebook-tabbed interface, which allows users to easily navigate through three-dimensional electronic spreadsheets,” and recite “specific steps detailing the method of navigating through spreadsheet pages within a three-dimensional spreadsheet environment using notebook tabs.”); Vanda Pharm. (Fed. Cir. 04/13/18) (Lourie, J.) (2-1) (rev’g judgment of patent invalidity; claims “are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from Mayo. They recite more than the natural relationship between CYP2D6 metabolizer genotype and the risk of QTc prolongation. Instead, they recite a method of treating patients based on this relationship that makes iloperidone safer by lowering the risk of QTc prolongation.”); Core Wireless (Fed. Cir. 01/25/18) (Moore, J.) (aff’g Summ. J. of no Sec. 101 invalidity; claims are “directed to an improved user interface for computing devices, not to the abstract idea of an index.”); Finjan (Fed. Cir. 01/10/18) (Dyk, J.) (aff’g post-trial judgment that claims not invalid; claims “directed to a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile,’” which security profile has “information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims are directed to “an improved computer memory system,” i.e., “configuring the memory system based on the type of processor connected to the memory system” and “the use of programmable operational characteristics that are configurable based on the type of processor,” which is a technology improvement, and are not directed to the abstract idea identified by the trial court and dissent, “categorical data storage.”); Thales Visionix (Fed. Cir. 03/08/17) (Moore, J.) (rev’g Sec. 101 invalidity judgment on the pleadings: “claims are not merely directed to the abstract idea of using ‘mathematical equations for determining the relative position of a moving object to a moving reference frame,’ [but rather] to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.”); Trading Techs. (Fed. Cir. 01/18/17) (Newman, J.) (non-precedential) (aff’g denial of JMOL; representative claim directed to “a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art,” and had no “pre-electronic trading analog,” and recites more than “‘setting, displaying, and selecting’ data or information that is visible on the [graphical user interface].”); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims … are directed to a new and useful laboratory technique for preserving hepatocytes. This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting.” We have “found claims ‘directed to’ a patent-ineligible concept when they amounted to nothing more than observing or identifying the ineligible concept itself.”); Enfish (Fed. Cir. 05/12/16) (Hughes, J.) (rev’g Summ. J. of patent-ineligibility: claims not directed to an abstract idea; “directed to an improvement in the functioning of a computer,” a self-referential table for a database) [see Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (“The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities.”)]; McRO (Fed. Cir. 09/13/16) (reframing Step One as: “look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”) See generally Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g invalidity judgment on pleadings; “there is [no] single, succinct, usable definition or test” of “abstract idea” so decisions take common law approach of comparing claims to those in earlier decisions).
  • “Directed To” Requires More Than “Involves”: “The first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept.” Instead consider whether “‘their character as a whole is directed to excluded subject matter’” or consider “‘the focus of the claimed advance over the prior art.’” Enfish (Fed. Cir. 05/12/16); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims directed to technological improvement even though an abstract idea “underlies” the claims); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (evaluate “‘the focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.”); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: claims are directed to “new and improved technique, for producing a tangible and useful result,” “not simply an observation or detection of the ability of hepatocytes to survive multiple freeze-thaw cycles.”)
  • Limitations Inherent To Idea Are Part Of The Idea: Claim limitations “inherent” in the abstract idea are treated as part of the abstract idea. Versata II (Fed. Cir. 07/09/15) (“The limitations are either inherent in the abstract idea of determining a price using organization and product group hierarchies—e.g., arranging the hierarchies—or conventional and well-known limitations involving a computer—e.g., storing pricing information.”); see Ultramercial III (Fed. Cir. 11/14/14) (aff’g R. 12(b)(6) dismissal; “this ordered combination of [eleven] steps recites an abstraction—an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application…. the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.”)
  • A Combination Of Abstract Ideas Is An Abstract Idea: RecogniCorp (Fed. Cir. 04/28/17) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim nonabstract.”); Elec. Power (Fed. Cir. 08/01/16) (“the claims are clearly focused on the combination of those abstract-idea processes …. They are therefore directed to an abstract idea.”)
  • Step One Must Be Tethered To Language Of The Claims: First step must be tethered to the language of the claims and not over-generalize the claims. Enfish (Fed. Cir. 05/12/16) (rejecting challenger’s alleged abstract idea theory: “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.”); McRO (Fed. Cir. 09/13/16) (“the claims are limited to rules with specific characteristics” not just any rules as held by district court). May look to how Spec. describes the “present invention” in identifying what the claims focus on. Id.; Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (in addition to the approved claim constructions, “we examine the claims in light of the written description.”; relying on elements recited in Spec. “necessarily” incorporated by claims.); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; descriptions in Spec. of advantages over prior art “clearly indicates that the claims are directed to an improvement in the functioning of computers.”); Automated Tracking (Fed. Cir. 02/16/18) (non-precedential) (aff’g R. 12(c) Sec. 101 invalidity; the agreed representative claims do not require the elements asserted by patent owner to satisfy Alice).
  • Claims Not Spec. Are Measured For Patent Eligibility: Smart Sys. (Fed. Cir. 10/18/17) (2-1) (“Our mandate from the Supreme Court under Alice step one is to ascertain what the claims are ‘directed to,’ not the ‘thrust,’ ‘heart,’ or ‘focus’ of the invention, as the dissent argues.”)
  • Failure Of Spec. To Describe Element In Detail Suggests Element Not Focus Of Claims: That Spec. “says nothing about how to construct a database structure that is not modified by the addition of new parameters … suggests that this feature of the claimed system is not [the claim’s] focus.” BSG Tech. (Fed. Cir. 08/15/18).
  • Generic Tangible Elements Do Not Defeat Claim Being Directed To An Abstract Idea: The Cleveland Clinic (Fed. Cir. 06/16/17) (step one analysis: Specs. “confirm that known testing methods could be used to detect MPO, and that there were commercially available testing kits for MPO detection.”); TLI Commc’ns (Fed. Cir. 05/17/16) (Spec. “makes clear that the recited physical components [“telephone unit,” “server”] merely provide a generic environment in which to carry out the abstract idea”); LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential) (rev’g denial of SJ of invalidity; claims “merely provide a generic, technological environment (i.e., computers and the Internet) in which to carry out the abstract idea”); Zuili (Fed. Cir. 02/09/18) (aff’g CBM Sec. 101 unpatentaiblity FWD: “generic computer components performing conventional activities”: “web page,” “computing device,” conventional “code” without explaining further, “communication network,” “search engine,” “plurality of links associated with a plurality of websites,” “client side” and “server side” devices); LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential) (rev’g denial of Summ. J. of invalidity; claims “merely provide a generic, technological environment (i.e., computers and the Internet) in which to carry out the abstract idea.”)
  • If Step One Determination Of What Claims Are “Directed To” Is A “Close Call,” Defer Consideration Of Narrowing Limitations To Step Two: Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (Where case “presents a ‘close call[ ] about how to characterize what the claims are directed to,’ and “the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea,” we “defer our consideration of the specific claim limitations’ narrowing effect for step two.”)

b) improvement to computer or machine functionality

  • Relevant To Step One (And Step Two) Whether Claim Directed To Improvement To Computer Functionality: Under Enfish (Fed. Cir. 05/12/16), “a relevant inquiry at step one is ‘to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’ We contrasted claims ‘directed to an improvement in the functioning of a computer” with claims ‘simply adding conventional computer components to well-known business practices,’ or claims reciting ‘use of an abstract mathematical formula on any general purpose computer,’ or ‘a purely conventional computer implementation of a mathematical formula,’ or ‘generalized steps to be performed on a computer using conventional computer activity.’” See Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer), rehearing denied (Fed. Cir. 05/31/18) (2 concurring Op., 1 dissenting); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; “like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.”); Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment that claims not invalid; claims “employ[] a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims “directed to an improved computer memory system” that outperforms and is more efficient than prior memories as described in the Spec.; “we must articulate with specificity what the claims are directed to, and ‘ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’”); McRO (Fed. Cir. 09/13/16) (under Step One holding claims directed to “specific means or method that improves the relevant technology”); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (aff’g denial of JMOL of patent invalidity under Sec. 101: methods and system of displaying information were patent eligible; the claims did not “simply claim displaying information on a graphical user interface” but instead “require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.” “Ineligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology.”); Tranxition (Fed. Cir. 11/16/16) (non-precedential) (aff’g Summ. J. of Sec. 101 invalidity: “For claims solely implemented on a computer, we have previously found it ‘relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’”; claim recited automating the migration of settings and configuration data between two computers; “the claim is not directed to an improvement to computer functionality. There is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient.”); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (rev’g dismissal order, under step two: “claiming a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems. By taking a prior art filter solution (one-size fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’.”) See Thales Visionix (Fed. Cir. 03/08/17) (rev’g Sec. 101 invalidity judgment on the pleadings: “In terms of the modern day Alice test, the Diehr claims were directed to an improvement in the rubber curing process, not a mathematical formula.”)
  • Idea Using Computer Or Other Technology As A Tool Is Not Same As Improving The Computer Or Technology: BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “claims are not saved from abstraction [at step one] merely because they recite components more specific than a generic computer.”); Interval Licensing (Fed. Cir. 07/20/18) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement ‘rooted in computer technology.’”); SAP Am. (Fed. Cir. 08/02/18) (“the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.”);  Secured Mail (Fed. Cir. 10/16/17) (here, “the claims are not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality;” in Enfish, “the claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”); Return Mail (Fed. Cir. 08/28/17) (claimed inventions “do not improve the functioning of the computer or barcode system itself. Instead, they apply those functionalities in the context of processing returned mail.”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (2-1 on this issue) (filtering e-mail abstract; distinguishing Bascom)]; cf. Synopsys (Mentor) II (Fed. Cir. 10/17/16) (claims “cannot be characterized as an improvement in a computer as a tool” because “the claims do not call for the involvement of a computer.”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“unlike the claims at issue in Enfish, which involved a ‘specific type of data structure designed to improve the way a computer stores and retrieves data in memory,’ [the claim here] does not improve or change the way a computer functions”);TLI Commc’ns (Fed. Cir. 05/17/16) (aff’g mtn. to dismiss: “the focus” of the Spec. “and of the claims was not on an improved telephone unit or an improved server,” rather, the telephone unit is “merely a conduit for the abstract idea.”); Elec. Power (Fed. Cir. 08/01/16) (aff’g Summ. J. of invalidity; distinguishing “computer-functionality improvements” from “uses of existing computers as tools in aid of processes focused on ‘abstract ideas’” “In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data.” “the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.”); Smartflash (Fed. Cir. 03/01/17) (non-precedential) (“claims here invoke computers merely as tools to execute fundamental economic practices.”); Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (“there is a distinct difference between software designed to root out malware, a concept the USPTO notes is ‘inextricably tied to computer technology,’ and software designed to automate processes of file categorization and extraction.”); Berkheimer (Fed. Cir. 02/08/18) (“That the parser transforms data from source to object code does not demonstrate non-abstractness without evidence that this transformation improves computer functionality in some way.”)
  • Merely Automating What Before Was Done Manually Is Insufficient: “Mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance (Fed. Cir. 06/09/17) (“merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting”); OIP Tech. (Fed. Cir. 06/11/15) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”)

c) categories of patent-ineligible subject matter

  • Intangible Information Is Abstract: Information in non-tangible form (“data in its ethereal, non-physical form”) does not fall under any of the categories of eligible subject matter is not patent eligible. Digitech (Fed. Cir. 07/11/14) (Reyna, J.) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information); Allvoice (Fed. Cir. 05/22/15) (O’Malley, J.) (non-precedential) (aff’g Summ. J. of invalidity; claims reciting “speech-recognition interface” comprising various “means” elements “do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter” because, as construed by the patent owner, they “merely claim software instructions without any hardware limitations” and court refuses to imply any tangible medium into claims that recite none.).
  • Collecting, Analyzing, Classifying, Organizing, Filtering, Storing, Manipulating And Displaying Information (Data) Are Abstract: “Information as such is an intangible. Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea.” Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.) (aff’g Summ. J. of invalidity); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (“while we do not suggest that every claim involving the collection, organization, manipulation, or display of data is necessarily directed to an abstract idea, claim 1 is not meaningfully distinct from claims we have held were directed to abstract ideas in previous cases.”); Smart Sys. (Fed. Cir. 10/18/17) (“collection, storage, and recognition of data” is abstract); Credit Acceptance (Fed. Cir. 06/09/17) (“data processing to facilitate financing is a patent-ineligible abstract concept.”); West View (Fed. Cir. 04/19/17) (non-precedential) (aff’g judgment on pleadings of Sec. 101 invalidity of 81 claims in 7 pats.; claims directed to an abstract idea because they “do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query,” and not improvement to computer functionality itself); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (“We have previously held other patent claims ineligible for reciting similar abstract concepts that merely collect, classify, or otherwise filter data….[T]he claimed creation of an index used to search and retrieve information stored in a database is similarly abstract.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (“claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data.”); FairWarning (Fed. Cir. 10/11/16) (patent “is directed to or drawn to the concept of analyzing records of human activity to detect suspicious behavior”; “the practices of collecting, analyzing, and displaying data, with nothing more, are practices “‘whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.’”); TDE Petroleum (Fed. Cir. 08/15/16) (non-precedential) (claims directed to “the abstract idea of storing, gathering, and analyzing data”); TLI Commc’ns (Fed. Cir. 05/17/16) (Hughes, J.) (aff’g mtn. to dismiss: “claims are directed to the abstract idea of classifying and storing digital images in an organized manner”); Content Extraction (Fed. Cir. 12/23/14) (Chen, J.) (claims “drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.”); Return Mail (Fed. Cir. 08/28/17) (aff’g PTAB Sec. 101 unpatentability; claim reciting “‘receiving from a sender a plurality of mail items,’ ‘identifying undeliverable mail items,’ ‘decoding . . . encoded data,’ ‘creating output data,’ and ‘determining if the sender wants a corrected address,’” are analogous to those in Content Extraction); ”Digitech (Fed. Cir. 07/11/14) (“claims an abstract idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine.”); cf. Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; without discussing this line of decisions but approving claims by holding that “these claims are directed to a particular manner of summarizing and presenting information in electronic devices,” and “a specific manner of displaying a limited set of information to the user.”)
  • Improved Information Is Patent Ineligible: “An improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.” BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible); Interval Licensing (Fed. Cir. 07/20/18) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement ‘rooted in computer technology.’”)
  • “Mental Process” Is Ineligible “Abstract Idea”: A “mental process” (all steps can be performed in mind or with aid of pencil of paper) is an abstract idea. “‘Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.’ And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Mayo (U.S. 03/20/2012) (unanimous). In Benson, “the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas.” CyberSource (Fed. Cir. 08/16/11) (invalidating “method” and “computer readable medium” claims as being directed to a “mental process” “which can be performed entirely in the human mind,” “or by a human using a pen and paper,” without use of a computer); accord Praxair (Fed. Cir. 05/16/18) (2-1) (“mental steps or processes are not patent eligible subject matter”); Voter Verified (Fed. Cir. 04/20/18) (“human cognitive actions” are patent ineligible); Return Mail (Fed. Cir. 08/28/17) (“Encoding and decoding mail recipient information—including whether the sender wants a corrected address—are processes that can, and have been, performed in the human mind. The claims here simply recite that existing business practice with the benefit of generic computing technology.”); Coffelt (Fed. Cir. 03/15/17) (non-precedential) (aff’g dismissal of complaint: “calculating a particular steradian region of space” “is a purely arithmetic exercise” and “nothing more than a mathematical algorithm that could be implemented using a pen and paper.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (aff’g Summ. J. of invalidity; “claims are directed to an abstract mental process and contain no inventive concept. The claims are therefore invalid.” “the method can be performed mentally or with pencil and paper”); Mortgage Grader (Fed. Cir. 01/20/16) (“The series of steps covered by the asserted claims … could all be performed by humans without a computer.”); Versata II (Fed. Cir. 07/09/15) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“the budgeting calculations at issue here are unpatentable because they ‘could still be made using a pencil and paper’ with a simple notification device, even in real time as expenditures were being made.”); Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (aff’g Summ. J. of invalidity; “methods that can be performed in the human mind alone are not eligible for patent protection,” citing CyberSource); Smartgene (Fed. Cir. 01/24/14) (non-precedential) (aff’g Summ. J. of invalidity; CyberSource rested on “Supreme Court decisions indicating that section 101 covers neither “mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps.”); Ass’n for Molecular II (Fed. Cir. 08/16/12) (the S. Ct. has considered the exceptions to patent eligibility as “precluding the patenting of mental processes”), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims). Mental process “untied to another category of statutory subject matter” not eligible for patenting “even when a practical application [is] claimed.” In re Comiskey (Fed. Cir. 01/13/09) (arbitration method) (replacing earlier 09/20/07 decision); Planet Bingo (Fed. Cir. 08/26/14) (non-precedential) (“managing the game of bingo ‘consists solely of mental steps which can be carried out by a human using pen and paper.’ … Like the claims at issue in Benson, not only can these steps be ‘carried out in existing computers long in use,’ but they also can be ‘done mentally.’”; aff’g invalidity under Alice framework); accord In re Bilski (Fed. Cir. 10/30/08), aff’d on other grounds, Bilski v. Kappos (U.S. 06/28/2010). But, including a mental step does not make patentable method unpatentable. CyberSource (Fed. Cir. 08/16/11).
    • Claimed “Mental Process” Method Need Not Duplicate How Human Would Perform Steps Mentally: In Benson (U.S. 11/20/1972), the claimed programmed conversion of BCD numerals to pure binary numerals “can be done mentally” and the claimed method “varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation.” See Synopsys (Mentor) II (Fed. Cir. 10/17/16) (Benson recognized that claimed method “had been designed for use on a computer” and “varie[d] the ordinary arithmetic steps a human would use” but nonetheless held the claimed method, which “c[ould] be performed without a computer,” patent-ineligible.); Tranxition (Fed. Cir. 11/16/16) (non-precedential) (no “inventive concept”; “it is not relevant that a human may perform a task differently from a computer.”)
    • Comparing And Analyzing DNA Sequences Not Patent Eligible: “This claim thus recites nothing more than the abstract mental steps necessary to compare two different nucleotide sequences: one looks at the first position in a first sequence; determines the nucleotide sequence at that first position; looks at the first position in a second sequence; determines the nucleotide sequence at that first position; determines if the nucleotide at the first position in the first sequence and the first position in the second sequence are the same or different, wherein the latter indicates an alteration; and repeats the process for the next position.” Ass’n for Molecular II (Fed. Cir. 08/16/12), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (methods patent-ineligible: comparison of wildtype genetic sequences “correspond to the first step of Alice” in view of breadth of comparisons they cover; and specific recited comparison techniques “were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.”) (addressing other claims from same patent as Ass’n for Molecular II); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of method claims for being directed to naturally occurring phenomena, namely that detecting a signature nucleotide from a sample indicates that the sample contains MTB). But see Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “claims are like thousands of others that recite processes to achieve a desired outcome, e.g., methods of producing things, or methods of treating disease.”)
  • Mathematical Algorithms Are Abstract Ideas: Methods of calculation and other mathematical algorithms are unpatentable abstract ideas. Benson (U.S. 11/20/1972) (“A procedure for solving a given type of mathematical problem is known as an ‘algorithm.’ The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another.”); Flook (U.S. 06/22/1978) (the “application simply provides a new and presumably better method for calculating alarm limit values. If we assume that that method was also known, as we must under the reasoning in Morse, then respondent’s claim is, in effect, comparable to a claim that the formula 2 r can be usefully applied in determining the circumference of a wheel. …. ‘[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.’” “Respondent argues that the inventiveness of his process must be determined as of ‘the time the invention is made’ under § 103, and that, therefore, it is improper to judge the obviousness of his process by assessing the application of the formula as though the formula were part of the prior art. This argument confuses the issue of patentable subject matter under § 101 with that of obviousness under § 103. Whether or not respondent’s formula can be characterized as ‘obvious,’ his process patent rests solely on the claim that his mathematical algorithm, when related to a computer program, will improve the existing process for updating alarm units. Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.” “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.”); Diehr (U.S. 03/03/1981) (Flook “made it clear that an improved method of calculation, even when employed as part of a physical process, is not patentable subject matter under § 101.”);  Bilski v. Kappos (U.S. 06/28/2010); “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.”); SAP Am. (Fed. Cir. 08/02/18)  (“the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.”); Digitech (Fed. Cir. 07/11/14) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”); Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precedential) (claims “apply a mathematical methodology to convert geospatial coordinates into a single string of natural numbers.”). “It is of no moment that the algorithm is not expressed in terms of a mathematical formula. Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams (Fed. Cir. 11/03/89) (“mathematical algorithms join the list of non-patentable subject matter not within the scope of section 101;” most steps in claim “analyze that data to ascertain the existence and identity of an abnormality, and possible causes thereof. In that regard, [they] are in essence a mathematical algorithm, in that they represent ‘[a] procedure for solving a given type of mathematical problem.’”); In re Walter (CCPA 03/27/80) (“The calculations are the beginning and end of the claims. Thus, this case falls squarely within the holding in Flook, and the claims must be held to be nonstatutory.”); In re Gelnovatch (CCPA 03/08/79) (rejecting claims to “an iterative method for arithmetically determining a set of process outputs which provide the calculated response most nearly equivalent to a goal response for a mathematical model of a microwave circuit.”) But see McRO (Fed. Cir. 09/13/16) (approving under Step One claimed method gathering mathematical rules and other abstract information and using them to calculate other abstract information for use in an automated character animation process, without analyzing whether claims directed to a mathematical algorithm as argued by the defendants.)
  • Logical Structures And Processes Provided By Software—Not Defined By Reference to Physical Components—Not Necessarily Abstract: “Software can make non-abstract improvements to computer technology.” “That the improvement is not defined by reference to ‘physical’ components does not doom the claims. To hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents. Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or Alice, or our cases, an exclusion to patenting this large field of technological progress.” Enfish (Fed. Cir. 05/12/16) (rev’g Summ. J. of patent-ineligibility).
  • Contractual Relations Are Abstract Ideas: Arrangements involving contractual relations, which are intangible entities, are an abstract idea, under Bilski and Alice. buySAFE (Fed. Cir. 09/03/14) (2-0) (aff’g judgment on the pleadings).
  • Results and Effects (Without Reciting How They Are Achieved) Are Abstract Ideas: “A patent is not good for an effect, or the result of a certain process” because such patents “would prohibit all other persons from making the same thing by any means whatsoever.” Le Roy v. Tatham, 55 U.S. 156, 175 (1853); Corning v. Burden, 56 U.S. 252, 268 (1853) (patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”). “A claimed invention must embody a concrete solution to a problem having ‘the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.’” Interval Licensing (Fed. Cir. 07/20/18) (aff’g R. 12(c) invalidity of CRM claims; “the claimed ‘attention manager,’ broadly construed as any ‘system’ for producing that result [“our function-based construction of ‘attention manager’”; the “result-centric construction”; “defining that term by the result it yields, not by its structural design or any mode for producing the result”], is not limited to a means of locating space on the screen unused by a first set of displayed information and then displaying the second set of information in that space. The claim limitations for accessing, scheduling, and then displaying the second information set are conventional functions stated in general terms and do not further define how the attention manager segregates the display of two sets of data on a display screen.”); SAP Am. (Fed. Cir. 08/02/18)  (The claims in McRO “had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.”); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (claim “is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to something other than the abstract idea…. While the claim limitations provide steps for using the computer to perform the search, they contain no technical details or explanation of how to implement the claimed abstract idea using the computer…. Instead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.”); Two-Way Media (Fed. Cir. 11/01/17) (aff’g R. 12(c) invalidity; claim “recites a method for routing information using result-based functional language. The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way,” even under the patent owner’s proposed constructions); Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) (aff’g mtn. to dismiss and Sec. 101 invalidity: “the character of the claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms”; “IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon.”) Cf. Credit Acceptance (Fed. Cir. 06/09/17) (“the claims do not provide details as to any non-conventional software for enhancing the financing process”); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (step two analysis: [first patent:] “merely using XML tags—as opposed to other kinds of tags—to build an index is still abstract. The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in the technology of computer databases, as in Enfish.”; [second patent:] “The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve”). “Without an explanation of the ‘mechanism’ for ‘how the result is accomplished,’ this purported feature of the invention cannot supply an inventive concept.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (aff’g Sec. 101 invalidity; step two analysis: “the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”); but see Data Engine (Fed. Cir. 10/09/18) (rev’g R. 12(c) invalidity; patents “solved this known technological problem in computers in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment;” claims “recite a specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet).”); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; “these claims are directed to a particular manner of summarizing and presenting information in electronic devices,” “a specific manner of displaying a limited set of information to the user.”); Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment of no Sec. 101 invalidity; although even “an innovative result” is not patentable, claims “recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result.”); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; rejecting dissent’s position that claims directed to a result without specifying how achieved: “both the specification and the claims expressly state that this improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (Reyna, J., dissenting in part) (long discussion; arguing that the specific means may be software and need not be tangible).
  • Reciting Functions And Desired Results Without A Way To Implement Indicates Claim Is Drawn To Abstract Idea: Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment of no Sec. 101 invalidity; although even “an innovative result” is not patentable, claims “recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result.”); Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability determination and rev’g Sec. 101 patentability on some claims: “patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems. Essentially, the claims are directed to certain functionality—here, the ability to generate menus with certain features.”; relying on absence of disclosure in the Spec. as to how result achieved: “the linked orders claim limitation calls for the desired result of associating a customer’s order with said customer, and does not attempt to claim any method for achieving that result” and Spec. “refers to the use of handwriting and voice capture technologies without providing how these elements were to be technologically implemented”); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“The patent, however, does not disclose any particular mechanism for wirelessly streaming content to a handheld device. … The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (“There is nothing in claim 1 that is directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.”); Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) (“the end result of ‘maintaining the state’ is described as the innovation over the prior art,” but “claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation.” “IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon.”) But see Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; rejecting dissent’s position that claims directed to a result without specifying how achieved: “both the specification and the claims expressly state that this improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”)
  • Transitory, Propagating Signal Not Patent Eligible, If Not Limited To Particular Physical Form: Although physical, a transitory, propagating signal does not fall within one of the four statutory classes of patentable subject matter under Sec. 101, if a particular physical form is not specified. In re Nuijten (Fed. Cir. 09/20/07) (“A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.”); Mentor Graphics (Fed. Cir. 03/16/17) (aff’g indefiniteness; Spec. defined a “machine-readable medium” as including “carrier waves.”); In re Mewherter (PTAB 05/08/13) (precedential in part) (rejecting “machine readable storage medium” claim under Sec. 101 because Spec. did not exclude transitory carrier waves and “storage” (under broadest reasonable interpretation) does not exclude such transitory signals because “data can be copied and held by a transitory recording medium, albeit temporarily, for future recovery.”) See Allvoice (Fed. Cir. 05/22/15) (non-precedential) (claims reciting “speech-recognition interface” comprising various “means” elements “do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter” because, as construed by the patent owner, they “merely claim software instructions without any hardware limitations” and court refuses to imply any tangible medium into claims that recite none.)
  • Business Model Not Patentable: claimed “business model for an intangible marketing company” is not a machine or other category of patentable subject matter. In re Ferguson (Fed. Cir. 03/06/09).
  • Non-Method Claims Must Recite Something Physical Or Tangible; But Must Method Claim?: “For all categories except process claims, the eligible subject matter must exist in some physical or tangible form.” Digitech (Fed. Cir. 07/11/14) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information); In re Wang (Fed. Cir. 06/20/18) (non-precedential) (aff’g rejection of claims under section 101: “Because the phonetic symbol system that is the subject of Mr. Wang’s claimed invention is not a ‘concrete thing,’ a ‘tangible article,’ or ‘a combination of two or more substances,’ it plainly does not meet the ‘physical or tangible form’ requirement of section 101.”) But see Cochrane (U.S. 1876) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery.”); buySAFE (Fed. Cir. 09/03/14) (2-0) (“the provision also excludes the subject matter of certain claims that by their terms read on a human-made physical thing (‘machine, manufacture, or composition of matter’) or a human-controlled series of physical acts (‘process’) …. Such a claim falls outside section 101 if (a) it is ‘directed to’ matter in one of the three excluded categories and (b) ‘the additional elements’ do not supply an ‘inventive concept’ in the physical realm of things and acts—a ‘new and useful application’ of the ineligible matter in the physical realm—that ensures that the patent is on something ‘significantly more than’ the ineligible matter itself.”)
  • TIPS:

  • Isolated DNA Molecules Are Not Patent Eligible, But Synthetic cDNA Are: “Genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” “It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” “Myriad did not create anything. . . . separating that gene from its surrounding genetic material is not an act of invention.” That isolated DNA gene is a nonnaturally occurring molecule does not save claims because claims focus on the genetic information encoded rather than being “expressed in terms of chemical composition.” Others therefore cannot avoid claims by, e.g., adding one additional nucleotide pair. Ass’n for Molecular (Myriad) (U.S. 06/13/2013), rev’g in part, Ass’n for Molecular II (Fed. Cir. 08/16/12) (“the claims cover molecules that are markedly different—have a distinctive chemical structure and identity—from those found in nature.” Isolated DNA is not “purified” natural DNA; rather it “has been cleaved (e., had covalent bonds in its backbone chemically severed)). “A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature.” In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (patent-ineligible: claims directed to unmutated “primers, which are ‘short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].’” “it makes no difference that the identified gene sequences are synthetically replicated.”); accord Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of primer claims for being directed to naturally occurring phenomena; claimed unmutated primers “have the identical nucleotide sequences as naturally occurring DNA” (despite their 3-prime end and a 3-prime hydroxyl group) [O’Malley, J., concurring, suggests full court should revisit precedent on such primers]). “Where claims of a method patent are directed to an application that starts and ends with a naturally occurring phenomenon, the patent fails to disclose patent eligible subject matter if the methods themselves are conventional, routine and well understood applications in the art.” Ariosa (Fed. Cir. 06/12/15) (aff’g Summ. J. of Sec. 101 invalidity; claims recited “amplifying cffDNA contained in a sample of plasma or serum from a pregnant female, detecting paternally inherited cffDNA, and making diagnoses based thereon”).
  • Genetically Identical Clone Not Patent Eligible: In re Roslin Institute (Fed. Cir. 05/08/14) (Dyk, J.) (genetic clone not patent eligible: “Dolly’s genetic identity to her donor parent renders her unpatentable;” “the claims do not describe clones that have markedly different characteristics from the donor animals of which they are copies”).
  • But cDNA Molecules Are Patent Eligible: “Creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring.” “The lab technician unquestionably creates something new when cDNA is made,” and it therefore is not a product of nature. Ass’n for Molecular (Myriad) (U.S. 06/13/2013), aff’g in part, Ass’n for Molecular II (Fed. Cir. 08/16/12).
  • Screening Using Transformed Cells Is Patent Eligible: “Claim 20 recites a method that comprises the steps of (1) growing host cells transformed with an altered BRCA1 gene in the presence or absence of a potential cancer therapeutic, (2) determining the growth rate of the host cells with or without the potential therapeutic, and (3) comparing the growth rate of the host cells. Claim 20 thus recites a screening method premised on the use of “transformed” host cells” that are not naturally occurring. Ass’n for Molecular II (Fed. Cir. 08/16/12), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims); but see Mayo (U.S. 03/20/2012) (unanimous).
  • Method Of Treating Patient More Likely To Be Patent Eligible Than Method Of Diagnosing Patient: Compare Vanda Pharm. (Fed. Cir. 04/13/18) (Lourie, J.) (2-1) (aff’g judgment of patent eligibility under Step One and distinguishing Mayo as addressing claims directed to method of diagnosis with conventional treatment step: claims “require a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay. [Spec. explains] how certain ranges of administered iloperidone correlate with the risk of QTc prolongation. Thus, the ’610 patent claims are ‘a new way of using an existing drug’ that is safer for patients because it reduces the risk of QTc prolongation.’”) with Mayo (U.S. 03/20/2012) (invalid under Sec. 101: “A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising: (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder, wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.”)

d) McRO

  • The McRO Decision: McRO (Fed. Cir. 09/13/16) [Consider Seeking S. Ct. Review.] (rev’g invalidity judgment on the pleadings) upheld claimed methods “automatically animating lip synchronization and facial expression of three-dimensional characters comprising” obtaining certain rules and information and generating output information in part by “evaluating” the input information against the rules, and then “applying” the output data “to produce lip synchronization and facial expression control of said animated characters.” Previously, human animators, using computers, would create that output data without using rules. The panel construed the claims as limited to “specific, limited mathematical rules” having a specific characteristic and ruled that this particular type of “unconventional rules” allegedly improved both the speed and the reliability of the animation process. The court held that the claim “is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.” The decision upheld the claims under Step One, that the special rules were not used previously by animators, automated tasks not previously performed by animators, provided an improvement to the existing technological process, and did not preempt “all processes for achieving automated lip-synchronization of 3-D characters” or “all techniques for automating 3-D animation that rely on rules.” While the resulting “sequence of synchronized, animated characters … may not be tangible, there is nothing that requires a method ‘be tied to a machine or transform an article’ to be patentable.” The concern underlying the exceptions to § 101 is not tangibility, but preemption.” “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. [The claim], therefore, is not directed to an abstract idea.” Accord Secured Mail (Fed. Cir. 10/16/17) (Reyna, J.) (“The claims of the three sets of patents are not limited by rules or steps that establish how the focus of the methods is achieved.”); FairWarning (Fed. Cir. 10/11/16) (“The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers.” “the traditional process and newly claimed method stood in contrast: while both produced a similar result, i.e., realistic animations of facial movements accompanying speech, the two practices produced those results in fundamentally different ways”).
  • TIPS: Responding To McRO (Fed. Cir. 09/13/16)

e) Alice step two

  • Second Step of Mayo/Alice Analysis: Additional (Non-Abstract) Elements = Inventive Concept In Application Of The Idea?: Second, “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application. We have described step two of this analysis as a search for an ‘inventive concept’—e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp. (U.S. 06/19/2014) (citations omitted) (using a computer “to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping — one of the most basic functions of a computer.” “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry.”); Mayo (U.S. 03/20/2012) (discussing Flook: the other claim limitations “were all ‘well known,’ to the point where, putting the formula to the side, there was no ‘inventive concept’ in the claimed application of the formula.”). “The introduction of a computer into the claims does not alter the analysis at Mayo step two.” Alice Corp. (U.S. 06/19/2014). “In applying step two of the Mayo/Alice analysis, our task is to ‘determine whether the claims do significantly more than simply describe [the] abstract method’ and thus transform the abstract idea into patentable subject matter.” Affinity Labs (Direct TV) (Fed. Cir. 09/23/16). See Two-Way Media (Fed. Cir. 11/01/17) (“no saving inventive concept”).
    • No “Inventive Concept” In ApplicationSAP Am. (Fed. Cir. 08/02/18)  (“all of the claim details identified by InvestPic fall into one or both of two categories: they are themselves abstract; or there are no factual allegations from which one could plausibly infer that they are inventive. In these circumstances, judgment on the pleadings that the claims recite no “inventive concept” is proper.”); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (Spec. statement that “the present invention may be implemented on an IBM or compatible personal computer system,” supports no inventive concept); Smart Sys. (Fed. Cir. 10/18/17) (processor, hash identifier, identifying token, writeable memory, etc. are generic computer implementation); Secured Mail (Fed. Cir. 10/16/17) (claims “are non-specific and lack technical detail. Rather than citing a specific way to solve a specific problem as in DDR, the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology,” as shown in part in Spec.); Return Mail (Fed. Cir. 08/28/17) (additional steps reciting particular types or uses of data “amount to a basic logic determination of what to do given a user’s preferences,” akin to additional steps in Ultramercial); Audatex (Fed. Cir. 07/27/17) (non-precedential) (aff’g PTAB decision substitute claims unpatentable under Sec. 101; “no more than … ‘perfectly conventional’ generic computer components employed in a customary manner: “a web site,” “web pages,” “a client computer,” “an electronic communication network,” “a database,” “a web server,” “a valuation server” and “active server pages” (ASPs).); Prism Tech. (Fed. Cir. 06/23/17) (non-precedential) (rev’g denial of JMOL of invalidity under step two; patents “themselves demonstrate the conventional nature of these hardware identifiers.”); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (“While limiting the index to XML tags certainly narrows the scope of the claims, in this instance, it is simply akin to limiting an abstract idea to one field of use or adding token post solution components that do not convert the otherwise ineligible concept into an inventive concept.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (aff’g Summ. J. of Sec. 101 invalidity; “merely describe the functions of the abstract idea itself, without particularity.”); Smartflash (Fed. Cir. 03/01/17) (non-precedential) (rev’g trial court denial of JMOL: “‘storing payment data on the data carrier,’ ‘transmitting payment validation data to the data access terminal and having the terminal retrieve the digital content from the data supplier in response,’ and ‘writing on the data carrier ‘access rules’ that are dependent on the amount of payment,’” are routine computer activities: “merely storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not ‘transform the nature of the claim’ into a patent-eligible application.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (“given that the claims are for a mental process, assignment conditions, which merely aid in mental translation as opposed to computer efficacy, are not an inventive concept”); TDE Petroleum (Fed. Cir. 08/15/16) (non-precedential) (no inventive concept in “storing state values, receiving sensor data, validating sensor data, or determining a state based on sensor data” (collected from an oil well drill); claims “recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application”); Elec. Power (Fed. Cir. 08/01/16) (no “inventive concept in application of that abstract idea”: claims “specify what information in the power-grid field it is desirable to gather, analyze, and display, including in “real time”; but they do not include any requirement for performing the claimed functions … by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept in the realm of application of the information-based abstract ideas.”); Shortridge (Fed. Cir. 07/13/16) (non-precedential) (aff’g R. 12(c) judgment; relational database conventional); TLI Commc’ns (Fed. Cir. 05/17/16) (Spec. “limits its discussion of these components to abstract functional descriptions devoid of technical explanation as to how to implement the invention;” in view of Spec.’s “abstract functional descriptions” of these tangible components, “the recited physical components behave exactly as expected according to their ordinary use,” and thus “recitation of a ‘telephone unit,’ a ‘server’, an ‘image analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability”); In re Smith (Fed. Cir. 03/10/16) (aff’g PTAB Sec. 101 rejection of app. claims; “shuffling and dealing a standard deck of cards are ‘purely conventional’ activities”); Versata II (Fed. Cir. 07/09/15) (“The steps in Versata’s claims (e.g., arranging, storing, retrieving, sorting, eliminating, determining) are conventional, routine, and well-known.”); Internet Patents (Fed. Cir. 06/23/15) (“Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice.”; relying on admission in Spec. of elements being conventional); OIP Tech. (Fed. Cir. 06/11/15) (aff’g motion to dismiss; invalid because “claims no more than an abstract idea coupled with routine data-gathering steps and conventional computer activity”); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (Dyk, J.) (“we next ask whether the remaining elements, either in isolation or combination with the other non-patent-ineligible elements, are sufficient to ‘transform the nature of the claim’ into a patent-eligible application.’”); Ultramercial III (Fed. Cir. 11/14/14) (“Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter.”; claims recited “providing the media product for sale at an Internet website”); Content Extraction (Fed. Cir. 12/23/14) (aff’g grant of motion to dismiss: “no ‘inventive concept’ in [claim’s] use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry”); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (claims invalid: “The specificity of the technical solution provided by the claims in BASCOM stands in sharp contrast to the absence of any such specific technical solution in the claims” here).
    • “Inventive Concept” In Application: See Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility; “the patent is directed to the measurement of a natural phenomenon (core body temperature). Even if the concept of such measurement is directed to a natural phenomenon and is abstract at step one, the measurement method here was not conventional, routine, and well-understood.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer and was not routine or conventional); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (aff’g district court’s identification of “static price index as an inventive concept that allows traders to more efficiently and accurately place trades using this electronic trading system”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g Sec. 101 invalidity judgment; claims reciting correlating two network accounting records to enhance the first record “are much closer to those in BASCOM and DDR Holdings than those in Digitech, Content Extraction, and In re TLI Commc’ns.” Because “enhance” construed to require processing of the records close to their sources which improves operation by distributing load); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: even though freezing and thawing were well known, “a process of preserving hepatocytes by repeating those steps was itself far from routine and conventional.” “Repeating a step that the art taught should be performed only once can hardly be considered routine or conventional. This is true even though it was the inventor’s discovery of something natural that led them to do so.”); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating R. 12 dismissal: claimed “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces;” here, this cannot be said as a matter of law to have been conventional or generic: “the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user”); DDR Holdings (Fed. Cir. 12/05/14) (2-1) (distinguishing Ultramercial; claims recite steps altering conventional behavior when link clicked).
    • Second Step Is Distinct From First Step: “The dissent also conflates its Alice step one analysis with Alice step two’s inventive concept analysis, ignoring the Supreme Court directive that the Alice test is a two step inquiry.” Smart Sys. (Fed. Cir. 10/18/17).
    • “Inventive Concept” In Application Must Be Outside Abstract Realm And In Physical Realm: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer and Aatrix leave untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Aatrix Software Order Denying En Banc Rehearing (Fed. Cir. 05/31/18) (Moore, J. concurring Op. (joined by Dyk, O’Malley, Taranto, Stoll, J.). The “inventive concept” must be “in the physical realm of things and acts—a ‘new and useful application’ of the ineligible matter in the physical realm….” buySAFE (Fed. Cir. 09/03/14); see SAP Am. (Fed. Cir. 08/02/18)  (Step Two requires an “innovation in the non-abstract application realm.” “Because bootstrap, jackknife, and cross-validation methods are all ‘particular methods of resampling,’ those features simply provide further narrowing of what are still mathematical operations. They add nothing outside the abstract realm.”); BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept…. As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”); Genetic Tech. (Fed. Cir. 04/08/16) (“The term ‘to detect the allele’ … is a mental process step, one that provides claim 1 with a purpose but does not create the requisite inventive concept, because it merely sets forth a routine comparison that can be performed by the human mind.”). But see Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (in step two analysis, crediting discovery of a coefficient to convert skin temperature and ambient temperature to a core temperature under the skin: “Following years and millions of dollars of testing and development, the inventor determined for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature and incorporated that discovery into an unconventional method of temperature measurement. As a result, the method is patent eligible, similar to the method of curing rubber held eligible in Diehr.”); cf. Exergen (Fed. Cir. 03/08/18) (non-precedential) (Hughes, J., dissenting op.) (“the district court legally erred by using a law of nature to supply an inventive concept.” “Clearly, a patent-ineligible law of nature cannot be the inventive concept that ensures the claimed invention amounts to significantly more than a patent upon that law of nature. Yet the majority argues exactly that, reasoning that Exergen’s temperature detector is ‘unconventional’ at step two because it uses ‘for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature.’”)
    • “Inventive Concept” In Application Must Be Recited In Claims Not Just Spec.: “To save a patent at step two, an inventive concept must be evident in the claims.” RecogniCorp (Fed. Cir. 04/28/17) (no inventive concept). Details in Spec. but not in claim are irrelevant to this analysis. Accenture (Fed. Cir. 09/05/13) (2-1); Two-Way Media (Fed. Cir. 11/01/17) (“the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“district court erred in relying on technological details set forth in the patent’s specification and not set forth in the claims to find an inventive concept.”) Berkheimer (Fed. Cir. 02/08/18) (some of the claims do not recite any of the purportedly unconventional activities disclosed in the Spec., while other claims “contain limitations directed to the arguably unconventional inventive concept described in the” Spec. creating a genuine dispute of material fact); but see Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (relying on distributed architecture described in Spec. but not recited in claims or any claim construction, concluding claims necessarily depend on it); Ariosa (Fed. Cir. 06/12/15) (relying on Spec.’s description of invention to bolster conclusion that claims are directed to a natural phenomenon, and on Spec. and prosecution history as showing that method steps were conventional, routine steps).
    • Technological Environment/Data Gathering/Insignificant Post-Solution Activities Are Inadequate: Prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant postsolution activity.” Alice Corp. (U.S. 06/19/2014) (“Stating an abstract idea while adding the words ‘apply it with a computer’” simply limits claim to a particular technological environment); accord Mayo (U.S. 03/20/2012) (unanimous) (step of “administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder” “simply refers to the relevant [pre-existing] audience” of doctors, and the abstractness exclusion cannot be circumvented by limiting claim to “‘a particular technological environment.’”); Flook (U.S. 06/22/1978) (rejecting argument that “specific ‘post-solution’ activity—the adjustment of the alarm limit to the figure computed according to the formula” saves the claim: “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. 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.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (“recitation of XML documents specifically, does little more than restrict the invention’s field of use. Such limitations do not render an otherwise abstract concept any less abstract.”); Apple (Ameranth) (Fed. Cir. 11/29/16) (rev’g part of PTAB CBM Sec. 101 patentability determination: insignificant post-solution activity: linking of orders to customers); Elec. Power (Fed. Cir. 08/01/16) (“merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes”); TLI Commc’ns (Fed. Cir. 05/17/16) (“although the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis”); In re Brown (Fed. Cir. 04/22/16) (non-precedential) (using scissors to cut hair according to determined pattern is insignificant post-solution activity; “amounts to ‘apply it’ [the abstract idea of determining a hair style]”); Vehicle Intelligence (Fed. Cir. 12/28/15) (non-precedential) (aff’g invalidity renewed R. 12(c) motion, post claim construction, because “claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity.”); Internet Patents (Fed. Cir. 06/23/15) (dependent claims “do not add an inventive concept, for they represent merely generic data collection steps or siting the ineligible concept in a particular technological environment.”); Ultramercial III (Fed. Cir. 11/14/14) (“steps of consulting and updating an activity log represent insignificant ‘data-gathering steps,’ and thus add nothing of practical significance to the underlying abstract idea.”); Ass’n for Molecular II (Fed. Cir. 08/16/12) (“Limiting the comparison to just the BRCA genes or … to just the identification of particular alterations, fails to render the claimed process patent-eligible.”), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims). Cf. In re Abele, 684 F.2d 902 (CCPA 1982) (applying since-rejected standard; the claim-recited steps were part of a conventional CAT-scan process and thus are not merely “data gathering steps … dictated by the algorithm.”)
    • Elements Inherent In Abstract Idea Do Not Satisfy Step Two: “The use of metafiles to build the claimed index is yet another natural consequence of carrying out the abstract idea in a computing environment and is, therefore, also insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention.” Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17); Versata II (Fed. Cir. 07/09/15) (“The limitations are either inherent in the abstract idea of determining a price using organization and product group hierarchies—e.g., arranging the hierarchies—or conventional and well-known limitations involving a computer—e.g., storing pricing information.”).
    • Novelty Of Algorithm Does Not Satisfy Step Two: Coffelt (Fed. Cir. 03/15/17) (non-precedential) (“The novelty of the algorithm, however, does not determine whether the claim recites an inventive concept. Instead, the inventive concept must ‘transform’ the patent ineligible algorithm into a ‘patent-eligible application’ of the algorithm, and do so by more than merely implementing the algorithm on a generic computer.”)
    • The Second Step Is Not Reached If Claim Has No Additional Elements: Digitech (Fed. Cir. 07/11/14) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information; didn’t need to reach Alice/Mayo second step because claim not limited to an image processor: “We therefore need not decide whether tying the method to an image processor would lead us to conclude that the claims are directed to patent eligible subject matter in accordance with the Supreme Court’s Mayo ”).
    • Second Step Of Test Is Not Whether Elements Are Narrow Or Concrete: “The operative test here does not require concreteness and narrowness.” Smart Sys. (Fed. Cir. 10/18/17) (hash identifier is generic and routine).
  • Combining Law Of Nature, Abstract Idea, Etc. With Conventional Steps Or Functions Is Not Patent Eligible: Claims reciting an “abstract idea” or specific law of nature invalid because the additional steps recited in claim (implementing on a generic computer (Alice); administering drug and determining result (Mayo)) merely limit claim to particular technological environment, or require “well-understood, routine, conventional activity previously engaged in by scientists who work in the field” (Mayo), i.e., “conventional” (Alice), or “conventional or obvious” (Mayo) activity or function. Mayo (U.S. 03/20/2012) (unanimous); Alice Corp. (U.S. 06/19/2014) (unanimous). Thus, there is no “inventive concept” in the remainder of the claim. Mayo (U.S. 03/20/2012); accord Alice Corp. (U.S. 06/19/2014). Such a claim would effectively claim the law of nature or abstract idea itself and improperly tie up (preempt) its future use. Alice Corp. (U.S. 06/19/2014); Mayo (U.S. 03/20/2012). See SAP Am. (Fed. Cir. 08/02/18)  (“these limitations require no improved computer resources InvestPic claims to have invented, just already available computers, with their already available basic functions, to use as tools in executing the claimed process”); Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability: citing admissions in specification to support finding that elements cited under step two are merely conventional computer elements and insignificant post-solution activities); Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.) (aff’g Summ. J. of invalidity: “Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101.”) But see McRO (Fed. Cir. 09/13/16) (Reyna, J.) (rev’g Sec. 101 invalidity judgment on pleadings: claimed method “using unconventional rules” not directed to an abstract idea, in part because doesn’t preempt all techniques in the field and thus is not “directed to a result or effect.”)
  • To Lack “Inventive Concept” In Application Must Additional Elements Be Well-Understood, Routine And Conventional; Or Merely Be Known, Obvious, Or Non-Inventive?: S. Ct. precedents appear to equate “inventive” in “inventive concept” with being novel and non-obvious, but often describe additional elements as being well-understood, routine and conventional.
    • Additional Elements Need Only Be Unconventional or Non-Routine: Some Fed. Cir. panels have taken that latter phrasing as the definition of “inventive concept” for step two. “Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer (Fed. Cir. 02/08/18) (vacating Summ. J. of Sec. 101 invalidity on four claims, due to genuine dispute of material fact on whether elements conventional—without discussing whether additional elements non-abstract or constitute a particular way); Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “something is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference. There are many obscure references that nonetheless qualify as prior art.”); accord USPTO Berkheimer Memo. (04/19/18).
    •  Additional Elements Must Be New and Non-Obvious: See Flook (U.S. 06/22/1978) (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.” “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. 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…. Here it is absolutely clear that respondent’s application contains no claim of patentable invention. The chemical processes involved in catalytic conversion of hydrocarbons are well known…. ”); Mayo (U.S. 03/20/2012) (stating that “any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community,” and that “simply appending conventional steps, specified at a high level of generality” cannot make the claim patent eligible, but also quoting Flook: “‘purely “conventional or obvious” ‘[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law;” and explaining Diehr: “it nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.” “And, they transformed the process into an inventive application of the formula.”); Alice Corp. (U.S. 06/19/2014) (in step two analysis, explaining Benson: “Because the algorithm was an abstract idea, the claim had to supply a “‘new and useful’” application of the idea in order to be patent eligible. But the computer implementation did not supply the necessary inventive concept; the process could be carried out in existing computers long in use;’” and explaining Flook: “implementation was purely conventional.”); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of method claims for being directed to naturally occurring phenomena; Alice/Mayo step two’s requirement of “additional features that must be new and useful” is simply not met in this case because the asserted method claims recite standard PCR methods applied to a naturally occurring phenomenon; there is no additional innovation.”); Ariosa (Fed. Cir. 06/12/15) (“for process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful.”); SAP Am. (Fed. Cir. 08/02/18) (parallel processing was “not even asserted to be an invention” of the applicants in the Spec.; “we think it fair to say that an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is ‘well-understood, routine, [and] conventional.’”); Internet Patents (Fed. Cir. 06/23/15) (“Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice.”; relying on admission in Spec. of elements being conventional). See HP En Banc Petition in Berkheimer (03/12/18) (arguing that step two of test is “whether the limitations ‘transform a patent-ineligible abstract idea into a patent-eligible invention,’” but conflating steps one and two).
  • Generic Computer Implementation Of An Abstract Idea Is Not Patent Eligible: Whether drafted as method, system or medium claim, implementing an abstract idea on a “generic computer to perform generic computer functions” is not patent eligible. Alice Corp. (U.S. 06/19/2014) (unanimous) (hold “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”; not enough to use “some unspecified, generic computer.”) “If a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View (Fed. Cir. 04/19/17) (non-precedential) (a claim recited “’a microphone,’ ‘one or more processors,’ a ‘touch-screen input and display device,’ a ‘speech synthesis apparatus’ with ‘at least one speaker,’ an ‘input apparatus,’ and a ‘computer program’ that receives the user’s input and generates an audible or visual result.”); Voter Verified (Fed. Cir. 04/20/18) (standard computer equipment such as laser printer, scanner and keyboard do not satisfy Step Two).
    • Generic/Conventional Includes “Basic” Functions/Steps And Preexisting Computers: Computer elements are “conventional” (or generic) if function performed is a basic function of the computer, such as electronic recordkeeping, obtaining data, adjusting account balances, and issuing automated instructions. Alice Corp. (U.S. 06/19/2014). Also “conventional” if, per Benson (U.S. 11/20/1972), “the process could be ‘carried out in existing computers long in use.’” Id. This applies equally to generic, functional “hardware” in system claims: “what petitioner characterizes as specific hardware—a ‘data processing system’ with a ‘communications controller’ and ‘data storage unit,’ …—is purely functional and generic” that nearly every computer will include. Id. “That a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm, is beside the point.” Id. (citation omitted). Accord Mayo (U.S. 03/20/2012) (unanimous) (summarizing Flook: “Moreover, ‘[t]he chemical processes involved in catalytic conversion of hydrocarbons[,] . . . the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for ‘automatic monitoring-alarming’” were all ‘well known,’ to the point where, putting the formula to the side, there was no ‘inventive concept’ in the claimed application of the formula.”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“But the inquiry is not whether conventional computers already apply, for example, well-known business concepts like hedging or intermediated settlement. Rather, we determine whether ‘each step does no more than require a generic computer to perform generic computer functions.’”); Elec. Power (Fed. Cir. 08/01/16) (“nothing in the patent contains any suggestion that the displays needed for that purpose are anything but readily available.”); Mortgage Grader (Fed. Cir. 01/20/16) (“the claims ‘add’ only generic computer components such as an ‘interface, ‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement.”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (database, user profile, and communication “are all generic computer elements”; “interactive interface” is generic element as broadly construed by patentee; “the fact that the web site returns the pre-designed ad more quickly than a newspaper could send the user a location-specific advertisement insert does not confer patent eligibility”); OIP Tech. (Fed. Cir. 06/11/15) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”); buySAFE (Fed. Cir. 09/03/14) (2-0) (applying Alice to affirm judgment on the pleadings of Sec. 101 invalidity, of claimed computerized method for guaranteeing a party’s performance of its online transaction); Planet Bingo (Fed. Cir. 08/26/14) (Hughes, J.) (non-precedential) (aff’g Summ. J. of invalidity; claims recited “a generic computer implementation of the covered abstract idea” where they recited a computer with a CPU, a memory, input and output terminal, a printer, video screen, and a program enabling steps of managing a game of bingo).
    • That A Computer Is Necessary To Performing The Method Does Not Matter: “As stipulated, the claimed method requires the use of a computer to create electronic records, track multiple transactions, and issue simultaneous in­structions; in other words, ‘[t]he computer is itself the intermediary.’” Alice Corp. (U.S. 06/19/2014).
    • That The Idea Has No Practical Use Outside A Computer Implementation Does Not Matter: Mayo (U.S. 03/20/2012) (unanimous) (Benson “held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had ‘no substantial practical application except in connection with a digital computer.’ Hence the claim (like the claims before us) was overly broad; it did not differ significantly from a claim that just said ‘apply the algorithm.’”)
    • Invention’s Ability To Run On A General-Purpose Computer Is Not Dispositive: Claims directed to an improvement in functioning of a computer are patent-eligible, unlike claims “adding conventional computer components to well-known business practices,” or “use of an abstract mathematical formula on any general purpose computer,” or “generalized steps to be performed on a computer using conventional computer activity.” Enfish (Fed. Cir. 05/12/16).
    • “Technical Effect” Test? Must Improve Functioning Of Computer Or Another Technology?: S. Ct. gave just two examples of where adding a computer to an abstract idea might satisfy Sec. 101: “The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.” Alice Corp. (U.S. 06/19/2014) (unanimous) (citing to Diehr (U.S. 03/03/1981) and U.S. Amicus Brief). “The claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” Id. See Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer and was not routine or conventional); Amdocs II (Openet) (Fed. Cir. 11/01/16) (claims “an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)”); McRO (Fed. Cir. 09/13/16) (approving claim under Step One: “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice” and “therefore, is not directed to an abstract idea.”); Enfish (Fed. Cir. 05/12/16) (rev’g Summ. J. of patent ineligibility based on Alice step One; claims “directed to an improvement in the functioning of a computer” and “a specific improvement to the way computers operate” and “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” and “a specific implementation of a solution to a problem in the software arts,” i.e., a self-referential table for a database, which Spec. says provides faster searching, more effective storage and smaller memory requirements, and more flexible configuring than the conventional relational database); TLI Commc’ns (Fed. Cir. 05/17/16) (aff’g mtn. to dismiss: “the focus” of the Spec. “and of the claims was not on an improved telephone unit or an improved server,” rather, the telephone unit is “merely a conduit for the abstract idea.”); Carnegie Mellon (Fed. Cir. 08/04/15) (Taranto, J.) (dictum: no authority cited “finding ineligibility of an unconventional method, like CMU’s, for improving a physical process by overcoming limitations in physical devices—discerning more accurately what is on a physical recording medium from what a read head has sensed.”); Versata II (Fed. Cir. 07/09/15) (“Examination of the claims—as a whole and in terms of each claim’s limitations—reveals that the claims are not directed to improving computer performance and do not recite any such benefit. The claims are directed to price determination and merely use a computer to improve the performance of that determination—not the performance of a computer.”); buySAFE (Fed. Cir. 09/03/14) (2-0) (quoting this portion of Alice); I/P Engine (Fed. Cir. 08/15/14) (Mayer, J., Concurring Op., Chen, J., Dissenting Op.) (Alice adopted a “technological effects” test).
    • Advantage Over Alternatives Is Not Test For An “Inventive Concept”: “‘Provid[ing] a distinct advantage over alternatives’ is not the test for eligibility.” Smartflash (Fed. Cir. 03/01/17) (non-precedential) (generic computer components do not transform the claim into a patent-eligible invention).
    • Alleged Technological Improvement Must Be Recited In Claim: Supposed improvement to technology must be recited in the claim. Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability: “The difficulty of the programming details for this functionality is immaterial because these details are not recited in the actual claims.”); Versata II (Fed. Cir. 07/09/15) (“these supposed benefits are not recited in the claims at issue”; “the claims at issue do not recite any improvement in computer technology”); Planet Bingo (Fed. Cir. 08/26/14) (non-precedential) (rejecting argument that computer program handled millions of numbers because claimed invention did not require that); Return Mail (Fed. Cir. 08/28/17) (refusing to consider in step two features not recited in claim).
    • TIPS:

f) idea’s breadth immaterial

  • Ct.: Sec. 101 Exclusions Are A “Bright-Line Prohibition” Applying To Specific And Narrow Laws Of Nature, Etc. As Well As Broad Ones: The abstract idea, mental process, mathematical formula, etc. might be quite specific and narrow, as in the Benson, Flook and Bilski claims. “The particular laws of nature that its patent claims embody are narrow and specific” “but the patent claims that embody them nonetheless implicate this concern” that patent laws not inhibit future innovation. Mayo (U.S. 03/20/2012) (unanimous) (“our cases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow. See, e.g., Flook, 437 U.S. 584 (holding narrow mathematical formula unpatentable)…. And so the cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.”); see Roche Molecular (Fed. Cir. 10/09/18) (method claims “cannot gain subject matter eligibility solely because they are limited to specific signature nucleotides”); Ariosa (Fed. Cir. 06/12/15) (rejecting argument that narrowness of method avoids Sec. 101 invalidity); buySAFE (Fed. Cir. 09/03/14) (2-0) (“the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.”); SAP Am. (Fed. Cir. 08/02/17) (holding invalid under Sec. 101 reexamination claims in post-judgment certificate because “the most that the reexamination changes do is to add details to the abstract ideas in the claims; they add nothing to the non-abstract elements of the claims, which remain wholly conventional computer and display devices.”); BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “regardless of how narrow ‘summary comparison usage information’ may be relative to the category of ‘historical usage information,’ this does not affect whether the claims are directed to an abstract idea at Alice’s step one.”); Ultramercial III (Fed. Cir. 11/14/14) (identifying combination of six claim-recited steps as describing an abstract idea); CLS Bank (Fed. Cir. 05/10/13) (en banc) (agreement on this point: Lourie, J. 5-judge concurring op.: “broad claims do not necessarily raise § 101 preemption concerns, and seemingly narrower claims are not necessarily exempt.”; Rader, J. 4-judge op.: “It is not the breadth or narrowness of the abstract idea that is relevant, but whether the claim covers every practical application of that abstract idea.”), aff’d, Alice Corp. (U.S. 06/19/2014); Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (“dependent claims’ identification of files based on checksums,” narrowing claims to particular types of relationships, does not change step one analysis).) But see Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”)

g) idea’s novelty immaterial

  • Novelty Of Steps Added To The Abstract Idea (Step Two) Is A Consideration; But Not Novelty Of The Abstract Idea Itself (Step One): Under S. Ct. precedents, not even a novel or newly discovered abstract idea or law of nature is patent eligible. Claimed natural law in Mayo was not previously known: “those in the field did not know the precise correlations between metabolite levels and likely harm or ineffectiveness. The patent claims at issue here set forth processes embodying researchers’ findings that identified these correlations with some precision.” Mayo (U.S. 03/20/2012) (“even though rewarding with patents those who discover new laws of nature and the like might well encourage their discovery, those laws and principles, considered generally, are ‘the basic tools of scientific and technological work.’”.) E.g., Diehr did not suggest that the additional steps there “were in context obvious, already in use, or purely conventional.” Id. “In evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so.” Id. Here, “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” Mayo (U.S. 03/20/2012) (unanimous); Diehr (U.S. 03/03/1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Flook (U.S. 06/22/1978) (“Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, … it is treated as though it were a familiar part of the prior art.”) “Laws of nature, natural phenomena, and abstract ideas [are patent ineligible] no matter how ‘[g]roundbreaking, innovative, or even brilliant.’” buySAFE (Fed. Cir. 09/03/14) (2-0) (quoting Ass’n for Molecular (Myriad)); SAP Am. (Fed. Cir. 08/02/18) (“(“We may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. The claims here are ineligible because their innovation is an innovation in ineligible subject matter.”); Two-Way Media (Fed. Cir. 11/01/17) (aff’g trial court exclusion of evidence “relevant to a novelty and obviousness analysis, and not whether the claims were directed to eligible subject matter.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Return Mail (Fed. Cir. 08/28/17) (not inconsistent for PTAB to conclude that claims satisfy Secs. 102 and 103 but not Sec. 101); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“But the eligibility finding does not turn on the lack of novelty of the claim; it turns on the fact that the claim is drawn to any embodiment of an abstract idea.”); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of primer and method claims for being directed to naturally occurring phenomena, notwithstanding that “Roche’s discovery of these signature nucleotides on the MTB rpoB gene and the designing of corresponding primers are valuable contributions to science and medicine, allowing for faster detection of MTB [a “major cause of tuberculosis”] in a biological sample and testing for rifampin resistance.” “Many groundbreaking, innovative, and brilliant discoveries have been held patent-ineligible.”); Genetic Tech. (Fed. Cir. 04/08/16) (“The inventive concept necessary at step two of the Mayo/Alice analysis cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. That is, under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility; instead, the application must provide something inventive, beyond mere ‘well-understood, routine, conventional activity.’”); Ariosa (Fed. Cir. 06/12/15) (claims invalid despite inventors having “revolutionized prenatal care” with their method for detecting small amounts of paternally inherited cffDNA in maternal plasma or serum (that used to be discarded) to determine fetal characteristics); Ultramercial III (Fed. Cir. 11/14/14) (rejecting patent owner argument that abstract ideas remain patent-eligible “as long as they are new ideas, not previously well known, and not routine activity;” “[A]ny novelty in implementation of the idea is a factor to be considered only in the second step of the Alice ”); PerkinElmer (Fed. Cir. 11/20/12) (non-precedential) (“Even assuming it is new or even inventive, this ‘two markers are better than one’ concept is still a mental step or abstract idea, i.e., it is ineligible subject matter.”); See Ariosa Diagnostics (Fed. Cir. 12/02/15) (Lourie, J., Concurring Op. denial of en banc rehearing) (disagreeing with Mayo) (“it is undisputed that before this invention, the amplification and detection of cffDNA from maternal blood, and use of these methods for prenatal diagnoses, were not routine and conventional. But applying Mayo, we are unfortunately obliged to divorce the additional steps from the asserted natural phenomenon to arrive at a conclusion that they add nothing innovative to the process.”); id. (Dyk, J., Concurring Op.) (disagreeing with Mayo but not Alice) (“Mayo states that the inventive concept necessary for eligibility must come in the application analyzed at step two, rather than from the discovery of the law of nature itself.”; “Alice also holds that inventive concept must be found at step two of the framework.”) But see Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (“[T]he graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept, as the court explained in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 73 (2012) (the patent must ‘amount to significantly more in practice than a patent upon the [ineligible concept itself]’”). “An invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”)) (Note: this “threshold criterion” point is contrary to above decisions, including Mayo, and not supported by quote from Mayo concerning step two).
  • But, Many Decisions Focus On Lack Of Novelty Of The Abstract Idea: That an idea has been used in other fields helps show the idea’s value is independent of any particular physical implementation, confirming that the idea is abstract. But many decisions focus on the lack of novelty of the idea as if that is a requirement under Alice and without explaining why it is relevant. E.g., FairWarning (Fed. Cir. 10/11/16) (claims’ rules are “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (filtering email was abstract because “it was long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.” Also: claim “involves an idea that originated in the computer era—computer virus screening. But the idea of virus screening was nonetheless well known when the ’610 patent was filed.” But same decision says: “Indeed, ‘[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“At step one of the Alice framework, it is often useful to determine the breadth of the claims in order to determine whether the claims extend to cover a ‘fundamental . . . practice long prevalent in our system.’”; looking at combination of abstract idea and added elements in step two: “we ask whether the remaining elements, either in isolation or combination with the non-patent-ineligible elements, are sufficient to ‘transform the nature of the claim’ into a patent-eligible application.”); Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) (conflating steps one and two: “Courts have found guidance in deciding whether the allegedly abstract idea (or other excluded category) is indeed known, conventional, and routine, or contains an inventive concept, by drawing on the rules of patentability.”)

h) idea’s utility immaterial

  • Usefulness Of The Idea Is Immaterial: Potential utility of an idea is immaterial to whether it is abstract. Genetic Tech. (Fed. Cir. 04/08/16) (“GTG’s attempts to distinguish this case on the ground that the method of claim 1 is useful have no basis in case law or in logic.”); see Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (characterizing the discovery of the BRCA1 and BRCA2 genes as “important and useful”); Flook (U.S. 06/22/1978) (“For the purpose of our analysis, we assume that respondent’s formula is novel and useful and that he discovered it.” Formula designed to more accurately trigger alarms on potentially dangerous chemical reactions); Secured Mail (Fed. Cir. 10/16/17) (“that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract.”); Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precedential) (while additional claim element “may demonstrate that the invention produces a useful result, it does not transform the abstract idea into patent-eligible subject matter.”) But see Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment that claims not invalid; claimed method unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting.”) But see Trading Techs. (Fed. Cir. 01/18/17) (non-precedential). (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”)

i) preemption of idea

  • Preemption (Monopolization) In Some Field Of Abstract Idea [Not Preemption Of Entire Field Or Of Alternatives To The Abstract Idea] Is The Concern—But Not The Test: “Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.” Bilski v. Kappos (U.S. 06/28/2010) (Bilski claims here). Accord Mayo (U.S. 03/20/2012) (unanimous) (claims that would “monopolize” or preempt a law of nature are invalid under Sec. 101); Benson (U.S. 11/20/1972) (“The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.”); cf. Return Mail (Fed. Cir. 08/28/17) (“Arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to patent ineligible subject matter.”); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating dismissal order: claims “do not preempt the use of the abstract idea of filtering content on the Internet or on generic computer components performing conventional activities. The claims carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.”); Genetic Tech. (Fed. Cir. 04/08/16) (claim “broadly covers essentially all applications, via standard experimental techniques, of the law of linkage disequilibrium to the problem of detecting coding sequences of DNA.”); Vehicle Intelligence (Fed. Cir. 12/28/15) (non-precedential) (“while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.”); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (“The preemptive nature of the claims is not ameliorated even if we accept Myriad’s argument that other methods of comparison exist. If the combination of certain routine steps were patent eligible, so too would different combinations of other routine steps.”); Ariosa (Fed. Cir. 06/12/15) (questions on preemption are “made moot” and resolved by the Sec. 101 analysis; “the absence of complete preemption does not demonstrate patent eligibility”); OIP Tech. (Fed. Cir. 06/11/15) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”); Dealertrack (Fed. Cir. 01/20/12) (“the claims are invalid as being directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area.”) But see McRO (Fed. Cir. 09/13/16) (as part of Step One, analyzing whether claims preempt use of all types of rules rather than the particular type of rules to which the claims are directed).

j) machine-or-transformation “test”

  • Ct.: Machine-or-Transformation “Test” Is “Clue” Relevant Only To Step Two of Mayo/Alice: Bilski v. Kappos (U.S. 06/28/2010) endorsed but demoted particular-machine-or-transformation test: “This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” See Mayo (U.S. 03/20/2012) (unanimous) (even if claim did satisfy transformation prong, it is invalid under “law of nature” exclusion); cf. SAP Am. (Fed. Cir. 08/02/18) (distinguishing McRO claims as being “directed to the creation of something physical—namely, the display of ‘lip synchronization and facial expressions’ of animated characters on screens for viewing by human eyes.”); buySAFE (Fed. Cir. 09/03/14) (2-0) (aff’g Sec. 101 invalidity under Alice without mentioning machine or transformation test); Fuzzysharp (Fed. Cir. 11/04/11) (non-precedential) (agreeing that claims failed machine or transformation test but vacating ruling invalidating claims under Sec. 101 and remanding for further claim construction). Machine-or-transformation “test” “can provide a ‘useful clue’ in the second step of the Alice framework.” Ultramercial III (Fed. Cir. 11/14/14) (did not “tie the claims to a novel machine,” and “manipulations of ‘public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.’”). S. Ct. rejected Fed. Cir. reliance on “transforming the human body by administering a thiopurine drug” under the “particular transformation” clue: “[this] transformation[], however, is irrelevant. As we have pointed out, the ‘administering’ step simply helps to pick out the group of individuals who are likely interested in applying the law of nature.” Mayo (U.S. 03/20/2012).
  • Pre-Alice Cir. Divided On Meaning Of “Particular Machine”: CLS Bank (Fed. Cir. 05/10/13) (en banc) (disagreement on meaning of this principle: Lourie, J. 5-judge concurring op.: not using “particular machine” rubric, but making similar point: “the system claims recite a handful of computer components in generic, functional terms that would encompass any device capable of performing the same ubiquitous calculation, storage, and connectivity functions required by the method claims.”); (Moore, J. 4-judge op.: stripping “particular” from “particular machine” prong: “As the Supreme Court recognized in Bilski, whether a claim is tied to a machine is “an important and useful tool” for assessing that it is directed to patent eligible subject matter.”), aff’d, Alice Corp. (U.S. 06/19/2014); Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (“the ‘telephone’ recited in claim 1 is not a specific machine” in part because could be any type of telephone). See Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (patent “must disclose the use of an apparatus specific to the claimed invention,” not “general computer components.”).

k) non-method claims

  • CRM Claims And System Claims Just As Easy To Invalidate Under Sec. 101 As Corresponding Method Claim: Computer system and CRM claims “fail for substantially the same reasons….because…. add nothing of substance to the underlying abstract idea.” Alice Corp. (U.S. 06/19/2014) (also noting that patent owner had conceded that the CRM and method claims rose or fell together.); Smart Sys. (Fed. Cir. 10/18/17) (2-1, Linn, J., dissenting on two patents) (aff’g R. 12(c) invalidity; where method and system claims contain “‘only minor differences in terminology but require performance of the same basic process, . . . they should rise or fall together.’”); Internet Patents (Fed. Cir. 06/23/15) (summarily aff’g invalidity of CRM and system claims after analysis of method claims: “The statement that the method is performed by computer does not satisfy the test of ‘inventive concept.’”); CLS Bank (Fed. Cir. 05/10/13) (Lourie, J., concurring) (“Applying a presumptively different approach to system claims generally would reward precisely the type of clever claim drafting that the Supreme Court has repeatedly instructed us to ignore. [I]t is often a straightforward exercise to translate a method claim into system form, and vice versa. …. Thus, when § 101 issues arise, the same analysis should apply regardless of claim format: ….”), aff’d, Alice Corp. (U.S. 06/19/2014).
  • Patent Owner’s Burden To Show “Functional” Manufacture Or Apparatus Claim Not Truly Drawn To Underlying Method: Even when claim literally is directed to an article of manufacture or machine, court looks to “the underlying invention” for Sec. 101 purposes. Where such a claim has a “broad” and “functionally-defined” nature, it is the patent owner’s “burden” to demonstrate that the claim is truly drawn to a specific apparatus “distinct from other apparatus[es] capable of performing the identical functions.” CyberSource (Fed. Cir. 08/16/11) (following In re Abele, 684 F.2d 902 (CCPA 1982), invalidating CRM claim as being directed to same method as invalidated method claim: “it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information.”); cf. Bancorp (Fed. Cir. 07/26/12) (system and medium claims here equivalent to method claims; invalid under Sec. 101).

l) when decided?

  • Question Of Law Suitable For Summary Judgment, Or Decision On Pleadings, But On Rare Occasion May Contain Factual Issues?: Whether patent claims are “drawn to patent-eligible subject matter under § 101 is a threshold inquiry” and “an issue of law.” In re Bilski (Fed. Cir. 10/30/08) (en banc), aff’d, Bilski v. Kappos (U.S. 06/28/2010); see Flook (U.S. 06/22/1978) (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”); Secured Mail (Fed. Cir. 10/16/17) (rejecting argument that district court made fact findings on a motion to dismiss, or put burden of proof on the patent owner to show elements not conventional: court has “determined claims to be patent ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’”); Return Mail (Fed. Cir. 08/28/17) (“§ 101 subject matter eligibility is a ‘threshold test’ that typically precedes the novelty or obviousness inquiry.”); Genetic Tech. (Fed. Cir. 04/08/16) (Dyk, J.) (aff’g mot. dismiss: “We have repeatedly recognized that in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”) The issue “may contain underlying factual issues.” Accenture (Fed. Cir. 09/05/13) (2-1). Expert declarations will not necessarily establish a disputed issue of fact. Mortgage Grader (Fed. Cir. 01/20/16) (no genuine issue of fact when defendant’s expert provided “non-material historical information” adding “little if anything to the … specification” and plaintiff’s expert declared that patents “require use of a computer”). See Smartflash (Fed. Cir. 03/01/17) (non-precedential) (trial court denied summary judgment of Sec. 101 invalidity, then jury verdict in favor of patent owner and trial court denied Sec. 101 JMOL; Fed. Cir. reversed, holding claims invalid under Alice); FairWarning (Fed. Cir. 10/11/16) (rejecting patent owner argument that trial court dismissal of complaint decided facts; “‘We have repeatedly recognized that in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.’”); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“While Affinity criticizes the magistrate’s making factual findings on a motion for judgment on the pleadings, the practice of taking note of fundamental economic concepts and technological developments in this context is well supported by our precedents.”); OIP Tech. (Fed. Cir. 06/11/15) (“Patent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.”). See Interval Licensing (Fed. Cir. 07/20/18) (Plager, J., concurring) (long critique and criticism of current state of abstractness exclusion case law: “The Emperor Has No Clothes”; “there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine;” suggesting trial courts postpone section 101 until after sections 102, 103 and 112 are addressed).
  • Attempted Sea Change In Feb. 2018: Fact Disputes Defeating Sec. 101 R. 12 And R. 56 Motions: Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “The district court’s conclusion that these claim elements were not well-understood, routine, and conventional is a question of fact to which we must give clear error deference.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision on account of fact issues regarding whether “the claimed combination contains inventive components and improves the workings of the computer,” and “factual disputes” such as “whether the claim term ‘data file’ constitutes an inventive concept; and reversing district court denial of post-judgment motion of patent owner to file second amended complaint alleging these facts which “if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine.”), rehearing denied (Fed. Cir. 05/31/18) (Moore, J. concurring Op. (joined by Dyk, O’Malley, Taranto, Stoll, J.) defending panel decision; Louire J. concurring Op. (joined by Newman, J.) calling for Congressional intervention on Sec. 101; Reyna dissenting Op., criticizing panel decision); Berkheimer (Fed. Cir. 02/08/18) (Moore, J.) (vacating Summ. J. of Sec. 101 invalidity on four claims; “patent eligibility under 35 U.S.C. § 101 is ultimately an issue of law we review de novo. The patent eligibility inquiry may contain underlying issues of fact.”); Automated Tracking (Fed. Cir. 02/16/18) (Stoll, J.) (non-precedential) (aff’g R. 12(c) Sec. 101 invalidity but emphasizing only due to “unique facts” where patent owner conceded two broad claims are representative, complaint contained no allegations that hardware elements “are anything but well-understood, routine, and conventional,” and Spec. described the hardware elements as conventional); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating R. 12 dismissal: claimed “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces;” here, this cannot be said as a matter of law to have been conventional or generic); Trading Techs. (Fed. Cir. 01/18/17) (Newman, J.) (non-precedential). (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.” “Applying an overview of this evolving jurisprudence, the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.”) Cf. Nalco (Fed. Cir. 02/27/18) (rev’g trial court dismissal of infringement complaint under Iqbal / Twombly; a claim construction dispute is “not suitable for resolution on a motion to dismiss,” and dispute about interpretation of statements made by patent owner in reexamination are not appropriate to resolve on motion to dismiss either.) But see BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”); Intellectual Ventures (Symantec) (Fed. Cir. 03/15/18) (non-precedential) (aff’g Summ. J. Sec. 101 invalidity where district court found that the specification “confirms that the individual components . . . are conventional, generic, and operate as expected,” and that the patent owner had “failed to offer evidence to show that the order of the steps was unconventional,” and did not “offer expert testimony to show the lack of conventionality of its components.”); HP En Banc Petition in Berkheimer (03/12/18) (arguing that Sec. 101 presents a question of law, and statements in the specification cannot create a fact dispute, but conflating steps one and two).
  • Not Necessary Usually To Engage In Claim Construction Procedure Before Deciding Sec. 101 Eligibility On A Motion: “There is no requirement that the district court engage in claim construction before deciding § 101 eligibility.” Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (aff’g Summ. J. of invalidity); The Cleveland Clinic (Fed. Cir. 06/16/17) (appropriate to grant motion to dismiss with no claim construction or discovery where patent owner proposed no claim construction or expert testimony that would change the analysis). “If there are claim construction disputes at the Rule 12(b)(6) stage, we have held that either the court must proceed by adopting the non-moving party’s constructions, or the court must resolve the disputes to whatever extent is needed to conduct the § 101 analysis, which may well be less than a full, formal claim construction.” Aatrix Software (Fed. Cir. 02/14/18) (2-1) (vacating R. 12(b)(6) invalidity decision: arguments on appeal show that claim construction is necessary on remand).
  • Whether Claim Elements Are Conventional Is Question Of Fact: “Whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer (Fed. Cir. 02/08/18) (vacating Summ. J. of Sec. 101 invalidity on four claims, due to genuine dispute of material fact on step two, created by the Spec. Spec. “explains that the claimed improvement increases efficiency and computer functionality over the prior art systems,” and four of the seven claims “contain limitations directed to the arguably unconventional inventive concept described in the specification”: “‘storing a reconciled object structure in the archive without substantial redundancy” and ““selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.” “The Supreme Court recognized that in making the § 101 determination, the inquiry ‘might sometimes overlap’ with other fact-intensive inquiries like novelty under § 102.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating grant of R. 12(b)(6) motion due to fact disputes: “Whether the claim elements or the claimed combination are well understood, routine, conventional is a question of fact. And in this case, that question cannot be answered adversely to the patentee based on the sources properly considered on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice.”) See generally U.S. Bank (U.S. 03/05/2018) (“Mixed questions [of law and historical (basic) fact] are not all alike. … [S]ome require courts to expound on the law, particularly by amplifying or elaborating on a broad legal standard. When that is so—when applying the law involves developing auxiliary legal principles of use in other cases—appellate courts should typically review a decision de novo. But …, other mixed questions immerse courts in case-specific factual issues—compelling them to marshal and weigh evidence, make credibility judgments, and otherwise address what we have (emphatically if a tad redundantly) called ‘multifarious, fleeting, special, narrow facts that utterly resist generalization.’ And when that is so, appellate courts should usually review a decision with deference. [But not in the constitutional realm.] In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”); Oracle (Fed. Cir. 03/27/18) (rev’g verdict of fair use in copyright action; “whether the court applied the correct legal standard to the fair use inquiry is a question we review de novo, whether the findings relating to any relevant historical facts were correct are questions which we review with deference, and whether the use at issue is ultimately a fair one is something we also review de novo.”)
  • Undecided Whether Entitled To Jury Trial On Fact Questions Related To Sec. 101: Exergen (Fed. Cir. 03/08/18) (non-precedential) (“Whether the Seventh Amendment guarantees a jury trial on any factual underpinnings of § 101 is a question which awaits more in-depth development and briefing.”). Cf. Tex. Advanced (Fed. Cir. 05/01/18) (no Seventh Amendment right to jury trial, in trade secret misappropriation case, on “disgorgement of the defendant’s profits, considered on its own terms, without proof that it was a sound measure of the plaintiff’s harm,” because no showing that such disgorgement “was available at law in 1791 for this sort of wrong” in causes of action analogous to trade secret misappropriation.)
  • Sec. 101 Invalidity Is Not A Last Resort: Relying on Secs. 102, 103 and 112 in lieu of Sec. 101 “would make the ‘law of nature’ exception to §101 patentability a dead letter. The approach is therefore not consistent with prior law. The relevant cases rest their holdings upon section 101, not later sections.” Mayo (U.S. 03/20/2012) (unanimous).
  • TIPS: Strategy for Patent Challengers to Win a Rule 12 or 56 Alice Motion Post Aatrix, Berkheimer and Exergen:

Outdated Line Of Older Decisions Following Research Corp. Tech.:

  • Must Be Manifestly Abstract: Sec. 101 is “only a threshold test,” and Sec. 112 also addresses abstractness, so “this court also will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.” Research Corp. Tech. (Fed. Cir. 12/08/10) (Rader, J.); accord Ultramercial II (Fed. Cir. 06/21/13) (Rader, J.) (claimed 10-step method of distributing media products over Internet for free if consumer submits to viewing an advertisement) (quoting Research Corp. repeatedly with approval; “rare” that patent suit can be dismissed at pleadings stage under Sec. 101; Sec. 101 “rife with underlying factual issues;” Sec. 101 is “coarse” filter; “merely a threshold check;” an abstract idea is one that “is not concrete;” satisfies Sec. 101 if “in addition to the abstract idea, the claim recites added limitations which are essential to the invention;” claims here do not simply claim “idea that advertising can serve as currency;” Figures show that “claim is not to some disembodied abstract idea;” not “manifestly abstract”), vacated (U.S. 06/30/2014); see Ultramercial III (Fed. Cir. 11/14/14) (claim patent ineligible).
  • If Patent’s “Invention” Is Not Abstract, Then Neither Are Its Claims: If patent’s “invention” is eligible, then so are its claims: “Moreover, because the inventions claimed in the ’310 and ’228 patents are directed to patent-eligible subject matter, the process claims at issue, which claim aspects and applications of the same subject matter, are also patent-eligible.” Panel quoted Spec. and language from non-asserted claims to support conclusion that the “invention” was not abstract. Research Corp. Tech. (Fed. Cir. 12/08/10) (Rader, J.).
  • (Dictum) Inventions With Specific Applications To Technologies In Marketplace Unlikely To Be Abstract: “The invention presents functional and palpable applications in the field of computer technology.” “Inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” Research Corp. Tech. (Fed. Cir. 12/08/10) (Rader, J.). Accord Ultramercial II (Fed. Cir. 06/21/13) (Rader, J. plurality op.) (claim is patent eligible if “cover[s] an application of an abstract idea”), vacated (U.S. 06/30/2014); see Ultramercial III (Fed. Cir. 11/14/14) (claim patent ineligible).

DDR Holdings Claim:

“19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;

(i) wherein each of the first web pages belongs to one of a plurality of web page owners;

(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and

(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;

(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:

(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;

(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;

(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and

(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays:

(A) information associated with the commerce object associated with the link that has been activated, and

(B) the plurality of visually perceptible elements visually corresponding to the source page.”

Versata System Claim:

  1. An apparatus for determining a price of a product offered to a purchasing organization comprising:a processor;a memory coupled to the processor, wherein the memory includes computer program instructions capable of:
    retrieving from a data source pricing information that is (i) applicable to the purchasing organization and (ii) from one or more identified organizational groups, within a hierarchy of organizational groups, of which the purchasing organization is a member;
    retrieving from the data source pricing information that is (i) applicable to the product and (ii) from one or more identified product groups, within a hierarchy of product groups, of which the product is a member; and
    receiving the price of the product determined using pricing information applicable to the one or more identified organizational groups and the one or more identified product groups according to the hierarchy of product groups and the hierarchy of organizational groups.

Internet Patents Claim:

“1. A method of providing an intelligent user interface to an on-line application comprising the steps of:

furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated on-line application form set, and wherein said web browser comprises Back and Forward navigation functionalities;

displaying said dynamically generated on-line application form set in response to the activation of said hyperlink, wherein said dynamically generated on-line application form set comprises a state determined by at least one user input; and

maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.”

Trading Techs. Claim:

  1. A method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange having an inside market with a highest bid price and a lowest ask price on a graphical user interface, the method comprising:

dynamically displaying a first indicator in one of a plurality of locations in a bid display region, each location in the bid display region corresponding to a price level along a common static price axis, the first indicator representing quantity associated with at least one order to buy the commodity at the highest bid price currently available in the market;

dynamically displaying a second indicator in one of a plurality of locations in an ask display region, each location in the ask display region corresponding to a price level along the common static price axis, the second indicator representing quantity associated with at least one order to sell the commodity at the lowest ask price currently available in the market;

displaying the bid and ask display regions in relation to fixed price levels positioned along the common static price axis such that when the inside market changes, the price levels along the common static price axis do not move and at least one of the first and second indicators moves in the bid or ask display regions relative to the common static price axis;

displaying an order entry region comprising a plurality of locations for receiving commands to send trade orders, each location corresponding to a price level along the common static price axis; and

in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.

Ultramercial Claim:

“1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.”

Enfish System Claim:

“A data storage and retrieval system for a computer memory, comprising:

means for configuring said memory according to a logical table said logical table including: …

and means for indexing data stored in said table.”

“The district court construed the “means for configuring” language as requiring a four-step algorithm:

  1. Create, in a computer memory, a logical table ….
  2. Assign each row and column an object identification number …
  3. For each column, store information about that column in one or more rows, rendering the table self-referential, the appending, to the logical table, of new columns that are available for immediate use being possible through the creation of new column definition records.
  4. In one or more cells defined by the intersection of the rows and columns, store and access data ….”

Enfish Method Claim:

“A method for storing and retrieving data in a computer memory, comprising the steps of:

configuring said memory according to a logical table, said logical table including:

a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;

a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and

wherein at least one of said logical rows has an OID equal to the OID to a corresponding one of said logical columns, and at least one of said logical rows includes logical column information defining each of said logical columns.

Representative MCRO Claim Held Patent Eligible:

  • USP Claim 1: “1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
  • obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
  • obtaining a timed data file of phonemes having a plurality of sub-sequences;
  • generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
  • generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
  • applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.”

Sample Myriad “Method” Claims Not Patent Eligible:

–     USP 5,709,999 Claim 1: “A method for detecting a germline alteration in a BRCA1 gene, said alteration selected from the group consisting of the alterations set forth in Tables 12A, 14, 18 or 19 in a human which comprises analyzing a sequence of a BRCA1 gene or BRCA1 RNA from a human sample or analyzing a sequence of BRCA1 cDNA made from mRNA from said human sample with the proviso that said germline alteration is not a deletion of 4 nucleotides corresponding to base numbers 4184-4187 of SEQ ID NO:1.”

–           USP 5,710,001 Claim 1: “1. A method for screening a tumor sample from a human subject for a somatic alteration in a BRCA1 gene in said tumor which comprises gene comparing a first sequence selected form the group consisting of a BRCA1 gene from said tumor sample, BRCA1 RNA from said tumor sample and BRCA1 cDNA made from mRNA from said tumor sample with a second sequence selected from the group consisting of BRCA1 gene from a nontumor sample of said subject, BRCA1 RNA from said nontumor sample and BRCA1 cDNA made from mRNA from said nontumor sample, wherein a difference in the sequence of the BRCA1 gene, BRCA1 RNA or BRCA1 cDNA from said tumor sample from the sequence of the BRCA1 gene, BRCA1 RNA or BRCA1 cDNA from said nontumor sample indicates a somatic alteration in the BRCA1 gene in said tumor sample.”

Administering A Drug To A Subject: S. Ct. unanimously overturned Fed. Cir., and affirmed Summ. J. of invalidity of this claim under Sec. 101:

“1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8.times.10.sup.8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8.times.10.sup.8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.”

Elec. Power Group Claim:

–     Representative claim has 395 words and 7 steps:

  1. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measurements from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diagnoses of events and associated ones of the metrics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stability metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.

Pre-Alice: Fed. Cir. Divided, Especially On Computer-System Claims: En banc Fed. Cir. issued per curiam ruling accompanied by six opinions and one “additional reflections,” none garnering majority support. CLS Bank (Fed. Cir. 05/10/13) (en banc) (5-5 split on whether system claims invalid under Sec. 101 (therefore affirmed trial court invalidity ruling), aff’d, Alice Corp. (U.S. 06/19/2014). Seven of 10 judges agreed that the method and CRM claims are invalid under Sec. 101, but 2 of those 7 merely deferred to patent owner’s concession that CRM claims rose or fell with method claims.), cert. granted (U.S. 12/06/2013).[1] Disagreed on (1) meaning of Prometheus opinion’s reference to “inventive concept,” (2) significance of computer limitations in a claim, (3) what constituted the abstract idea in the claims, (4) meaning of the machine-or-transformation clue to patent eligibility, and (5) breadth, and benefit/harm caused by, the abstractness exception to patent eligibility. At least nine judges agreed that (1) CRM claim rises or falls with counterpart method claim, (2) breadth of the abstract idea is not the issue, (3) pre-emption of the abstract idea is a central consideration, and (4) a field-of-use restriction is insufficient to save a claim. Accenture (Fed. Cir. 09/05/13) (2-1) (aff’g Summ. J. of invalidity of system claim (“A system for generating tasks to be performed in an insurance organization, the system comprising: an insurance transaction database for storing …; a task library database for storing …; a client component … configured for …; and a server component … including an event processor, a task engine and a task assistant; wherein …..”), where counterpart method claim invalidity not appealed: no meaningful limitations on the abstract idea).

buySAFE Claim: panel summarized as: “(1) a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an “online commercial transaction”; (2) the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service; and (3) the computer offers, via a “computer network,” a transaction guaranty that binds to the transaction upon the closing of the transaction.

Fed. Cir. Pre-Alice View of “Inventive Concept”: CLS Bank (Fed. Cir. 05/10/13) (en banc) (no agreement on meaning of this principle: Lourie, J. 5-judge concurring op.: “Inventive concept” in Sec. 101 context is a “genuine human contribution,” “a product of human ingenuity.” “Limitations that represent a human contribution but are merely tangential, routine, well-understood, or conventional, or in practice fail to narrow the claim relative to the fundamental principle therein, cannot confer patent eligibility.”); Rader, J. 4-judge op.: “Supreme Court’s reference to ‘inventiveness’ in Prometheus must be read as shorthand for its inquiry into whether implementing the abstract idea in the context of the claimed invention inherently requires the recited steps.”), aff’d, (U.S. 06/19/2014); Smartgene (Fed. Cir. 01/24/14) (non-precedential) (“Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.”)

Dealertrack Claim:

“1. A computer aided method of managing a credit application, the method comprising the steps of:

[A] receiving credit application data from a remote application entry and display device;

[B] selectively forwarding the credit application data to remote funding source terminal devices;

[C] forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device;

[D] wherein the selectively forwarding the credit application data step further comprises: ….”

“The claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. The undefined phrase ‘computer aided’ is no less abstract than the idea of a clearinghouse itself. Because the computer here ‘can be programmed to perform very different tasks in very different ways,’ Aristocrat, 521 F.3d at 1333, it does not ‘play a significant part in permitting the claimed method to be performed.’ CyberSource, slip op. at 19 (citing SiRF Tech., 601 F.3d at 1333). Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.” Dealertrack (Fed. Cir. 01/20/12).

Federal Circuit’s En Banc In re Bilski Particular Machine-Transformation-Preemption “Test”: The only way a patent claim reciting an abstract idea/mental process/law of nature can avoid preempting all uses of that idea in violation of Sec. 101 is for the claim to also require (1) some particular machine, or (2) some particular transformation of a particular article, that would not be required by all practical applications or uses of the abstract idea, etc. In re Bilski (Fed. Cir. 10/30/08) (en banc) [1], aff’d on other grounds, Bilski v. Kappos (U.S. 06/28/2010) (demoting this test to an “important clue.”) Collecting and organizing data does not meet the transformation prong. CyberSource (Fed. Cir. 08/16/11); cf. Benson (U.S. 11/20/1972) (claimed conversion of numbers from binary coded decimal to pure binary could compress the data, e.g., “decimal 53 is represented as 0101 0011 in BCD, because decimal 5 is equal to binary 0101 and decimal 3 is equivalent to binary 0011. In pure binary notation, however, decimal 53 equals binary 110101.”)

–     Visual Depiction Of Data Representing Physical Articles: Under a since-rejected standard, CCPA approved below-quoted claim 6 after interpreting “X-ray attenuation data” as requiring that “an X-ray beam is produced by a CAT scanner, passed through an object, and detected upon its exit. Only after these steps have been completed is the algorithm performed, and the resultant modified data displayed in the required format.” In re Abele, 684 F.2d 902 (CCPA 1982). The production, detection and display steps are part of a conventional CAT-scan process and thus are not merely “data gathering steps … dictated by the algorithm.” Id. Claim 5, in contrast, “presents no more than the calculation of a number and display of the result, albeit in a particular format.” Id. En banc Fed. Cir. approved this split result, but emphasized that a particular physical article was being depicted: “This data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible. In re Bilski (Fed. Cir. 10/30/08) (en banc). “So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.” Id.

Allowed claim 6 and rejected claim 5 in In re Abele:

  1. A method of displaying data in a field comprising the steps of

calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field, and

displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.

  1. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.

–           Other Tests Remain Rejected: Fed. Cir.’s past tests (application of algorithm to physical elements or steps; producing useful, concrete and tangible results) (rejected by en banc court), not endorsed. Five Justices in Concurring Opinions criticize “useful, concrete and tangible results” test.

Apparatus Claim in In re Abele:

“7. Apparatus for displaying data values representative of values at data points in a two dimensional field comprising:

means for calculating the differences between the local values at each data point and the average value at data points in a limited region of said field surrounding each said data point, and

means for displaying the value of said differences as signed gray scale values at points in a picture which correspond to said data points.”

–           CCPA Always Sat En Banc: Note, “[t]he CCPA’s later decisions control because that court always sat en banc.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989). And, that CCPA precedent cannot be overruled by a panel of the Fed. Cir.: “we deem it fitting, necessary, and proper to adopt an established body of law as precedent. That body of law represented by the holdings of the Court of Claims and the Court of Customs and Patent Appeals announced before the close of business on September 30, 1982 is . . . herewith adopted by this court sitting in banc. . . . The present adoption does not affect the power of this court, sitting in banc, to overrule an earlier holding with appropriate explication of the factors compelling removal of that holding as precedent. If conflict appears among precedents, in any field of law, it may be resolved by the court in banc in an appropriate case.” South Corp. (Fed. Cir. 10/28/82) (en banc).

CRM Claim Directed To “Mental Process”:

  1. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
  2. a) obtaining credit card information relating to the transactions from the consumer; and
  3. b) verifying the credit card information based upon …,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other trans-actions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

CyberSource (Fed. Cir. 08/16/11).

Core Wireless Claim: “1. A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more ap-plications are in an un-launched state.”