The issue of patent eligible subject matter under 35 USC § 101 affects many different types of inventions including those which incorporate software technology for controlling conventional machines and devices. Although the Alice v. CLS Bank 1 decision by the U.S. Supreme Court has made it more difficult to patent software-related inventions, recent Federal Circuit decisions interpreting this decision have subsequently softened the blow.
In Alice, the U.S. Supreme Court established a two-step analysis for determining patent eligible subject matter in which (1) it must first be determined whether the claims of an application are directed to an “abstract idea,” and, if so, (2) there must be an “inventive concept” which the U.S. Supreme Court defined as an element or combination of elements sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself. Recent decisions from the Federal Circuit interpreting the two-step analysis of Alice have developed grounds and rationales for persuasively arguing that a claimed invention is not directed to an ineligible abstract idea.
The Federal Circuit in Enfish, LLC v. Microsoft Corp.2 found “it relevant to ask whether the claims are directed to an improvement to computer functionality” under the first step of the Alice framework. The patent in dispute had claims directed to a self-referential database, and the description of the patent described multiple benefits of this database design which included faster searching of data, more effective storage of data, and more flexibility in configuring the database. In view of the benefits described in the description, the Federal Circuit found that the focus of the claims was to improve computer functionality itself. Accordingly, the Federal Circuit held that the claims were not directed to an abstract idea under the first step of the Alice framework because they addressed a specific improvement to the way computers operate.
In McRO, Inc. v. Bandai Namco Games America Inc. 3 , the Federal Circuit held that a method of automatic lip synchronization and facial expression animation using computer-implemented rules was not an abstract idea under the first step of the Alice framework because it was directed to an improvement in computer-related technology (See DDR Holdings, LLC v. Hotels.com 4 a 2014 decision from the Federal Circuit which held that a solution rooted in computer technology and directed to overcoming a problem specifically arising in the realm of computer networks is not an abstract idea). The basis of the Federal Circuit’s decision in McRO was that the claimed method of computer automation improved previously known methods through “the use of rules, rather than artists” for setting the parameters needed for automatic lip synchronization and facial expression animation.
The Federal Circuit stated in the McRO decision that “the concern underlying the exceptions to § 101 is not tangibility, but preemption.” The preemption concern was discussed in Alice as arising when the claims are not directed to a specific invention and instead improperly monopolize “the basic tools of scientific and technological work.” Alice, 134 S.Ct. at 2354 (quoting Myriad, 5 133 S.Ct. at 2116). The Federal Circuit held that by incorporating the specific features of the rules as claim limitations, the claimed invention was limited to a specific process for automatically animating characters using particular information and techniques and did not preempt approaches that use rules of a different structure or different technique. Thus, the Federal Circuit in McRO emphasized the importance of specificity in order to avoid preemption under the first step of the Alice framework.
Under the second step in the Alice framework, the Federal Circuit in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC 6 held that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” In Bascom, the patent at issue was directed to a system for filtering content retrieved from an Internet computer network by individual controlled access network accounts. The Federal Circuit found that an “ordered combination of limitations” can provide an “inventive concept” under the second step of Alice, and that critical to this determination is a focus on the particular arrangement of generic and conventional components in the claims. The Federal Circuit in Bascom held that the specific features of the claimed invention were sufficient to establish patentable subject matter eligibility not because the features themselves provided an inventive concept, but because the arrangement of those features did.
In view of the recent Federal Circuit decisions interpreting patent eligible subject matter, a claimed invention must go beyond simply collecting, analyzing, and displaying data. The description of the invention should explain how the invention improves the performance and/or functionality of the machine, device or computer controlled by the software. The description of the invention should also explain whether the arrangement of known functional elements is unconventional and novel. Finally, the description should be carefully drafted to ensure that specific, concrete steps using specific information and techniques are described for achieving a specific, improved result.
- Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347, 110 U.S.P.Q.2d 1976 (2014). ↩
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 U.S.P.Q.2d 1684 (Fed. Cir. 2016). ↩
- McRO, Inc. v. Bandai Namco Games America Inc., 2016 WL 4896481 (Fed. Cir. 2016). ↩
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014). ↩
- Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 106 U.S.P.Q.2d 1972 (2013). ↩
- Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, No. 15-1763 (Fed. Cir. 2016) ↩