Munck Wilson Mandala

District Court admits the Alice test for excluding abstract ideas from patentable subject matter involves “a difficult exercise.”


Shannon Tipton
Public Relations Director 

At least one U.S. District Court has publicly acknowledged that applying the Alice test differentiating unpatentable “abstract” ideas from patentable subject matter is “a difficult exercise.”  In the process, however, the Court presented useful guidance on the factors that federal judges are likely to find persuasive in the patentability analysis of computer-implemented inventions. 

In a trio of October 8, 2015 opinions in 13-cv-00581-SLR, YYZ, LLC v. Hewlett-Packard Co., 14-cv-00427–SLR, Parus Holdings, Inc. v. Sallie Mae Bank, and 14-cv-00489–SLR, CyberFone Systems, LLC v. Lexmark International, Inc., and , Judge Sue Robinson of the District of Delaware explained the difficulty with harmonizing the Alice process with the other aims and requirements of the patent statute (footnotes and citations omitted):

In other words, even though most of the patent claims now being challenged under§ 101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under § 112 and non-obviousness under § 103), especially in light of the Federal Circuit’s past characterization of § 101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.

In discussing the contemporary “ubiquity of computers” that motivated the Alice test for statutory subject matter, Judge Robinson went on to comment on the particular difficulty under Alice in distinguishing patentable from unpatentable claims directed to computer-implemented inventions:

At their broadest, the various decisions of the Federal Circuit would likely ring the death-knell for patent protection of computer-implemented inventions, a result not clearly mandated (at least not yet). On the other hand, to recognize and articulate the requisite degree of specificity – either in the equipment used or the steps claimed – that transforms an abstract idea into patent-eligible subject matter is a challenging task.

Within the context of computer-implemented inventions, the Court suggested that the Federal Circuit’s DDR decision should serve as a “benchmark” for drawing distinctions between patentable and unpatentable subject matter:

In reviewing post-Alice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. . . . .

In trying to sort through the various iterations of the § 101 standard, the court looks to DDR as a benchmark; i.e., the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to “override the routine and conventional” use of the computer.

Applying the Alice process to the claims under consideration on summary judgment in each of the three cases, Judge Robinson held:  that the “technological improvement” in YYZ was an unclaimed and apparently prior art feature that was “neither sufficiently described nor sufficiently innovative to transform the inventive concept at bar into patent-eligible subject matter”; “the steps claimed [do not] provide sufficient specificity to negate the risk of preemption” of the idea of a unified phone/fax/voicemail/paging/conferencing/e-mail messaging system; and that, “although the problem addressed by the asserted claims is rooted in computer technology, the claimed solution is not disclosed with enough specificity to transform the abstract idea (entering and processing data in response to questions on forms or templates) into a patentable application of such.” 

The Court’s opinions concisely articulate one category of computer-implemented inventions that should generally pass muster under the application of the test articulated in Alice.  The analysis of current precedent also suggests that, rather than ignoring or downplaying technical details of the problem addressed and solution provided by a computer-implemented invention, patent owners should emphasize such features.