The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under  35 USC § 101.  This case will provide a new test for the most basic provision of U.S. patent laws — whether an invention is patent eligibile — a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.

As we have discussed in detail in the earlier decisions of CLS Bank v. Alice, and its progeny Ultramercial Inc. v. Hulu, and Accenture Global Services v. Guidewire Software — all relating to patent eligibility of computer-related inventions — the Federal Circuit left much to be desired as to what analytical approach to take for evaluating when a software-related claim is patent-eligible subject matter, versus an otherwise ineligible “abstract idea”.  “Abstract ideas”, along with “laws of nature” and “natural phenomena”, are long-standing judicially-created exceptions, which were introduced to prevent the monopolization of the basic tools of scientific and technological work.  

In these earlier cases, Chief Judge Rader opined that Congress intended § 101 to be read expansively, and it was the courts that introduced the exceptions to patentable subject matter.  Thus, § 101 should play a limited role in patentability of an invention, and should act as “merely a threshold check . . . no more than a ‘coarse eligibility filter’.”  Under such an approach, a claim that recites an abstract idea can be valid so long as the claim is directed to an application of that idea, and the claim should be considered as a whole to determine whether the claim includes meaningful limitations restricting it to such an application.  

On the opposing front, Judge Lourie created a more complex “inventive concept” analysis first set forth in his plurality opinion in CLS Bank v. Alice, in an attempt to synthesize the Supreme Court’s 2012 decision in Mayo v. Prometheus.  This analysis requires — for an invention involving an abstract idea — that one needs to first “identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing.”  Next, one needs to evaluate the claim to determine whether it contains additional limitations that “narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.”  Further, an “inventive concept”, in contrast to whatever fundamental concept is also represented in a claim, must be “a product of human ingenuity” and that human contribution must be more than “a trivial appendix to the underlying abstract idea.”