In an unanimous
decision, the U.S. Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l., finding
that the computer-implemented method and system patent claims at issue were
invalid as being directed to patent ineligible subject matter (under 35 U.S.C. § 101). The basis for finding the patent claims
invalid was a determination that the claims were directed to an “abstract idea.” Regrettably, the “Supremes” sang
their same old tune and failed to define, the term, “abstract idea.” Like a broken record and like so
many recent opinions, the Supremes instead relied on the tried and true
precedent first articulated by U.S. Supreme Court
Justice Potter Stewart when determining when material is obscene, we know an abstract idea when we see it,
therefore “we need not labor to delimit the precise contours of the ‘abstract
ideas’ category in this case.” Interestingly
enough, the definition of an “abstract idea” was discussed during oral
arguments, but the Court refused to adopt the Solicitor General’s definition of
a claim directed to an abstract idea as “a claim that is not directed to a
concrete innovation in technology, science, or the industrial arts…abstract in
the sense that it is not a concrete innovation in the traditional realm of
patent law.”
While not exactly a welcomed
decision, the outcome in the case was consistent with prior U.S. Supreme Court
cases and consistent with my
first hand observations and predictions after hearing the oral augments in
this case as previously reported in our article entitled, “Eyewitness
Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of
Computer Implemented Methods.” The
specific question before the Supreme Court was whether computer-implemented
inventions, including claims to computers/computer systems, software, and
processes are eligible for patent consideration. (See. e.g. footnote 2,
page 2 of the opinion for a representative method claim and our prior OP-IP
blog post, “Déjà vu all over again…” for a representative system
claim).
In reaching its decision, the
Supreme Court extended its two-step analysis test for determining patent eligibility
of patent claims announced in the biotechnology case of Mayo v.
Prometheus. Thus, the test for
patent eligibility under § 101 for computer implemented methods, including
business methods, is the same as the test for patent eligibility of
biotechnology claims.
Step
1: Is the patent claim directed to one of the three patent ineligible
concepts of Laws of Nature, Natural Phenomena or an Abstract
Idea, (“LNA”)? If no, then the patent
claim does not raise a § 101 issue. If
yes, then step 2.
Step
2: If the claim is directed to a LNA, does the claim put meaningful
limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g.
does the patent claim recites a meaningful application of the LNA so that the
claim is not merely the LNA performed in a computer environment, and thereby claims less than the LNA, itself?
Like the prior U.S. Supreme Court
cases of Bilski
v. Kappos, Mayo
v. Prometheus and Association
for Molecular Pathology v. Myriad Genetics, Inc., we now have a fourth
example of patent claims which are not patent eligible. Regrettably, in recent years, we have not had
a case in which patent claims were held to be valid under §101. Therefore, it remains a challenge for patent
practitioners to know what the U.S. Patent Office and the courts, all the way
up to the Supreme Court, will find to be patent eligible. While each decision makes it more clear as to
what is not patent eligible, we still do not have clear vision on what patent
claims are absolutely patent eligible.
In addition, since Court refused to define
the term, “abstract idea,” we do not know how to analyze a patent claim to
determine whether a patent claim is directed to an “abstract idea.”
For
more in-depth legal analysis of the issues in the case and possible
ramifications, please see our article entitled, “Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."
© Stephen J. Weyer 2014
Send email feedback- sweyer@stites.com
