What types of software inventions are statutory under 35 USC § 101
post-Alice v. CLS Bank?
Clark A. Jablon, Esq.
Patent Attorney and Partner
Panitch Schwarze Belisario & Nadel LLP*
Philadelphia, PA
*The views expressed herein are solely those of the author and not those of
PSBN.
I. SLIDE 1
II. SLIDE 2
Let’s take a quick look at Alice just so that we are all on the same page. You can
see that the holding in Alice means that there are patent-eligible abstract ideas and
patent-ineligible abstract ideas. So how do you know which one you have?
The answer according to the Supreme Court in Alice is to apply the two-step
Mayo test which is shown in this slide.
Since the USPTO and the Courts almost always seem to find that software
inventions are directed to an abstract idea, we will focus most of our attention
today on STEP 2, and particularly, the “inventive concept”/”significantly more”
aspect of STEP 2.
And not to lose sight of the forest for the trees, the whole point of this two-part
test according to the Supreme Court is to determine if the claims are preempting
or monopolizing a judicial exception. If so, the claims are non-statutory under
§ 101.
III. SLIDE 3
So does Alice provide any bright line tests for software eligibility? The answer is
yes. If the software invention automates a conventional process via generic
computer elements, it is not likely to be statutory under Alice.
This changes the landscape from the previous 1994 Federal Circuit Alappat case
which held that that programming creates a new machine, because a general
purpose computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software.
IV. SLIDE 4
The conventional analysis of “claims as a whole” is close to dead, at least as it
related to § 101. Each claim element can now be tested for “inventiveness,”
thereby conflating Section § 101 and Sections 102/103. The opinions in both
Alice and Mayo endorsed this new piecemeal approach.
Most practitioners believe that the Courts are also now looking for some sort of
technological component for any identified inventive clauses, despite the lack of
any clear endorsement of such a test in either Mayo or Alice. The painfully
litigated Ultramercial patent ultimately fell victim of this new analysis. In
Ultramercial, the Federal Circuit even admitted that some of the eleven claimed
steps were novel, but found that they “were devoid of a concrete or tangible
application.” Judge Mayer in a concurring opinion argued that Alice and Bilski
can be read to endorse a technological arts test for § 101 eligibility but the
majority opinion in Ultramercial couched their analysis in somewhat different
terms, but still focused on the lack of a technological component in the novel
steps.
In both Planet Bingo and BuySafe, the Federal Circuit found that the functions
performed by the computer at each step of the process are purely conventional.
Thus, the claims in both Planet Bingo and BuySafe failed to meet the new clauseby-clause inventiveness test.
In Digitech Image Technologies, the Federal Circuit held that the claims were
invalid under § 101 because they were not tied to a specific structure or machine.
The invention in Digitech was highly technological and would have likely been
statutory under § 101 if claimed differently, as clearly telegraphed by the Court’s
reasoning.
DDR Holdings was a completely different story. In DDR Holdings, the Federal
Circuit clearly analyzed the “claims as a whole,” showing that this doctrine is not
completely dead. The claims in DDR Holdings were found to recite significant
technological components, evidenced by these quotes:
the claimed solution is necessarily rooted in computer
technology to overcome a problem specifically arising in the
realm of computer networks
Claims represent a “specific way” of creating a composite
web page “in order to solve a problem faced by websites on
the Internet.”
So what’s the key to writing a potentially § 101 eligible software claim?
Based on the case law to date, the secret formula appears to be to recite at least
one inventive clause and to tie that inventive clause to one or more technological
components so that it is clear that the feature in this clause is not a human activity.
V. SLIDE 5
The Office of Patent Legal Administration (OPLA) has done an extensive
analysis of § 101 jurisprudence and formulated a list of six ways that a claim can
potentially meet the Mayo Part 2 “significantly more” test as shown in this slide.
In theory, any software invention that has overcome the prior art and is claimed
with technological components should meet at least one of these tests,
particularly, the 5th test, even if the technological components use generic
computer elements. However, most patent practitioners have had no luck to date
in relying upon the 5th test for overcoming § 101 rejections during prosecution,
and litigants have not fared much better in District Court using arguments along
the lines of the 5th test, despite the fact that it is fully supported by the § 101
analysis from Mayo and Alice.
Most Examiners will tell you that meeting the 2nd test is the easiest way to avoid
or overcome a § 101 rejection, but a large number of software inventions simply
cannot meet this test no matter how they are claimed.
VI. SLIDE 6
One view of the Mayo/Alice analysis as it applies to software is that once an
abstract idea is identified, the only relevant inquiry is whether the computer
elements that implement the identified abstract idea are generic. If so, the claim is
patent-ineligible under § 101.
Under this view of Alice, a software claim cannot be saved from invalidity merely
by showing that it performs an inventive function.
This type of analysis is the primary one being used in most District Courts with
respect to software inventions.
The attractiveness of this analysis is that District Courts can dispose of a
significant percentage of their patent docket on summary judgment motions
because no in-depth analysis of the claims is required with respect to thorny
102/103 issues.
Examiners are also using this abbreviated analysis which has caused allowance
rates to plummet into the low single digits in many software areas. This
abbreviated analysis does not conform to OPLA’s guidance document, but
Examiners are being told to follow it until more guidance is provided by new
decisions.
VII. SLIDE 7
If your software improves the functioning of a computer or other hardware
elements, the invention should clearly be § 101 eligible.
If your software invention is not of this type, it will be vulnerable to § 101
challenges at the District Court and will likely run into trouble at the USPTO if it
is in the application stage.
Most patent practitioners have resigned themselves to advising clients that their
only viable choice right now to maintain pendency is to write up an appeal and
park their application at the PTAB.
If you are preparing a new software application, you’ll want to follow some of the
tips in this slide.
VIII. SLIDE 8
The one issue that patent practitioners are most eager to see resolved is whether
novel and unobvious software inventions can be recited with generic computer
structure and still pass muster under § 101, or whether such inventions will have
to be limited to claiming specialized computer structure that will necessarily limit
their value because of the ease in designing around the specialized computer
structure.
For example, will the next GOOGLE search algorithm invention, which is the one
that single-handedly launched the company and which was unquestionably
inventive, have to be narrowly claimed as executing on specialized computer
structure, even though the invention concept lies solely in the algorithm? If so,
the invention can be easily designed around by executing the algorithm on a
conventional high-speed computer.
We are likely to see more guidance on this issue sooner than later because there
are a significant number of cases in the appeal hopper that have this fact pattern.
Also, we would all like to get better guidance on STEP I of the Mayo framework
but nobody is expecting that to come out anytime soon.
IX. CONCLUSION
Some District Courts are starting to find Defendant arguments regarding STEP 1
to be overreaching and are rejecting them outright.
“Judicial Exception” conundrum (STEP 1 of Mayo)
“one should “tread carefully” in applying § 101 tests
because at some level, “all inventions . . . embody, use,
reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”
Mayo and Alice
“If one looks at almost any patent from far enough away, it
could arguably claim an abstract idea. For example,
Alexander Graham Bell's patent could be said to claim the
abstract idea of oral communication. But his invention was
not the concept of oral communication itself; it was a
technological innovation that allowed a type of oral
communication between people who could otherwise not
communicate in that way.”
Messaging Gateway Solutions LLC v. Amdocs, Inc. et al, 114-cv-00732 (DED April 15, 2015, Order) (Andrews, J.)
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