Recent developments in the Federal Circuit indicate a shift in the Alice–Mayo framework set out by the Supreme Court to determine patent subject matter eligibility. The two-step framework asks first whether a patent claim is directed to excluded subject matter and, if so, whether the claim contains additional elements that amount to significantly more than the excluded matter.
In February of this year, the Federal Circuit reversed a determination by the International Trade Commission (“ITC”) as having incorrectly applied the first Alice–Mayo step in considering the eligibility of a diamond-based composition of matter known as a PDC. The ITC held the PDC claims ineligible because they described the invention by its intrinsic material properties, such as magnetic profile. The ITC described the connection between the claimed properties and the underlying structure as too “loose and generalized”.
On appeal, the Federal Circuit concluded in a precedential opinion that the ITC had improperly applied Step One and “overlook[ed] the broader context of the patent.” The Federal Circuit reminded the ITC that claims must be read with the full context of the specification and are presumed valid until proven otherwise. In light of the PDC specification, the properties specified in the claims “inform[] a skilled artisan about physical characteristics of the PDC” and are therefore not abstract under Alice Step One. Patent drafters seeking to identify an invention by its intrinsic characteristics should take note of this holding.
