March 9, 2015
By: Gregory K. Gerstenzang & Nicole A. Palmer
Subsequent to the decision of the U.S. Supreme Court in Alice Corp. v. CLS Bank in June of 2014, there has been an increase in the number of patent applications including claims that are rejected by the USPTO as allegedly being directed to non-patentable “abstract ideas.” Such claims are typically method claims, for example, claims directed to software implemented inventions or to business methods. The Court in Alice Corp. found that, consistent with prior decisions, claims reciting abstract ideas per se or the mere application of an abstract idea “without something more” are not statutorily eligible for patenting under 35 U.S.C. § 101.
Many commentators and practitioners felt that the Court was not sufficiently explicit regarding what would be required for a claim to recite “something more” than an abstract idea. The USPTO issued a set of preliminary guidelines regarding how patent examiners should determine patent eligibility of a claim under 35 U.S.C. § 101 in light of Alice Corp. a day after the decision, and issued a revised, more comprehensive set of guidelines in mid-December 2014. An analysis of that guidance which focused on the two-part test enumerated in Alice Corp. may be found here:
Additional direction regarding what may be required to render a claim subject matter eligible for patentability has been most recently provided by the USPTO in a memo issued on January 27, 2015 and available here. Part I presents examples of claims that would be patent eligible when analyzed under the 2014 Interim Eligibility Guidance, and Part II presents examples of claims that would be ineligible. While some are hypothetical, many of the claims are taken from actual Federal Circuit decisions (including DDR Holdings discussed below) and are newly analyzed under the two-part framework. A few highlights are as follows:
A claim directed to performing isolation and eradication of computer viruses, worms, and other malicious code is characterized as being inextricably tied to computer technology and distinct from the types of concepts found by courts to be abstract.
A claim otherwise directed to an abstract idea is said to include elements that add significantly more as evidenced by improved functioning of a computer in halftoning a gray scale image and improved digital image processing. In contrast, a claim also in the realm of digital image processing is said to not amount to significantly more than the abstract idea itself because it does not include additional elements beyond the abstract idea of gathering and combining data.
A subject matter eligible claim includes a combination of elements that impose meaningful limits on an abstract idea in that mathematical operations are applied to advance an existing technology (global positioning) by improving the signal-acquisition sensitivity of a receiver to extend the usefulness of the technology into weak-signal environments and by providing the location information for display on a mobile device.
A subject matter ineligible claim directed to conducting reliable transactions in an e-commerce environment presents a generic recitation of a computer and a computer network performing their basic functions that does not amount to significantly more than a judicial exception. Likewise, another ineligible claim includes limitations which taken as a whole simply instruct one to implement an abstract concept (using advertising as an exchange or currency) with routine, conventional activity specified at a high level of generality in a particular technological environment.
These examples provide greater insight and inform patent practitioners regarding how claims will be examined in terms of subject matter eligibility under 35 U.S.C. § 101. The specific fact patterns presented also provide a tool from which patent practitioners may argue that rejected claims are similar or analogous to one or more of the patent eligible examples, and thus are directed to patent eligible subject matter for at least the same reasons.
To date, the Court of Appeals for the Federal Circuit (CAFC) has issued only one decision, DDR Holdings, LLC. v. Hotels.com, in which a patent having claims challenged as being directed to ineligible subject matter under 35 U.S.C. § 101 in view of Alice Corp. was upheld as being valid. The holding in DDR Holdings is significant, however, and provides valuable guidance regarding what might render a computer or software related claim subject matter eligible for patentability. It was indicated that method claims should not be considered abstract if they necessitate technology or necessarily involve real-world elements. The CAFC found claims to be patent eligible in DDR Holdings because the claimed solution was “necessarily rooted” in computer technology to overcome a problem specifically arising out of computer networks. In light of DDR Holdings, claims that solve computer-specific or Internet-specific problems, as opposed to simply implementing old ideas on a computer or online, may be considered patent eligible under 35 U.S.C. § 101.
Further clarity regarding the requirements for patent eligibility under 35 U.S.C. § 101 will likely come as additional cases are litigated. For now, DDR Holdings and the USPTO examples provide some guidance for drafting and prosecuting patent claims in the wake of the Supreme Court’s decision in Alice Corp.
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