Intellectual Property Law: What Cannot Be Patented?
| Publication year | 2016 |
| Author | By Morgan Chu & Dominik Slusarczyk |
By Morgan Chu & Dominik Slusarczyk
Seismic rumblings continue to shake up what can and cannot be patented. The Supreme Court's decisions in Alice Corp. Pty. Ltd. v. CLS Bank International1and Mayo Collaborative Services v. Prometheus Laboratories, Inc.2 created a new standard about what is and is not eligible for patent protection. While appellate decisions from the Federal Circuit over the past year provide new guidance in this arena, they add little clarity or certainty to the law.
Section 101 sketches in broad strokes the subject matter that may be patented: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."3 The provision is by no means the sole authority on patentability; other notable and more familiar requirements for patentability include the novelty and nonobviousness requirements set forth in 35 U.S.C. sections 102 and 103. Section 101 is, however, the most rapidly developing patentability constraint in recent years.
The Alice and Mayo Supreme Court cases set forth a two-step framework for determining whether a patent claims ineligible subject matter. Although section 101 itself is not explicitly phrased as an exclusion on what can be patented, courts have held that " [p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts . . . are the basic tools of scientific and technological work,"4 and thus do not fall within the scope of eligible subject matter in section 101. An accused infringer of a patent may defend an infringement action by successfully showing that the patent is invalid for claiming ineligible subject matter.
As articulated in Alice, the two-step framework that courts use in evaluating section 101 validity challenges is: (1) Determine whether the challenged patent claims are directed to a patent-ineligible concept, such as an abstract idea, law of nature, or natural phenomenon (Alice Step One); and (2) if so, determine whether the elements of the patent claims individually or as an ordered combination transform the nature of the claim into a patent-eligible application (Alice Step Two).5
This article focuses on three 2016 Federal Circuit decisions: Enfish, LLC v. Microsoft Corp.,6 BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,7and Amdocs (Israel) Limited v. Openet Telecom, Inc.8 These cases are not the only recent Federal Circuit cases to address section 101—far from it—but they illustrate some of the most significant changes that have materialized in just the last year. Notable among all three cases is that they uphold the validity of patents that might have been predicted not to survive.
As discussed below, Enfish, BASCOM and Amdocs may help practitioners develop new arguments, but they also blur the line between the two steps of Alice.
A large number of section 101 challenges post--Alice have featured claims directed to computer functionality, including so-called "software patents," which claim technology typically or largely implemented in software. Many such patents have fallen to these challenges, in part because such claims can easily be characterized as abstract ideas in the Step One analysis, and in part because such claims often appear to consist of "conventional" elements in Step Two, almost automatically spelling their doom under Alice and its progeny.9 The Federal Circuit gave this type of patent a shield this past year in Enfish, LLC v. Microsoft Corp. 10 with a new "computer functionality" gloss on the two-step Alice framework.
[Page 1]
Enfish featured a section 101 challenge to patents claiming aspects of a self-referential database, a type of database structure that, in contrast to conventional so-called "relational" databases, commingles data and meta-data in a single table in advantageous ways.11 The Federal Circuit found the challenged claims eligible under section 101. The panel's analysis ended at Step One, concluding that the claims were not even directed to an abstract idea—an unusual feature in Alice challenges because, under Alice, judicial opinions have rarely ended the inquiry at that step.
More interestingly, the version of Alice Step One that the court applied in Enfish appears to be a very different Step One than has been applied in other cases. Rather than ask whether the claims were directed to an abstract idea, the opinion asked more pointedly whether the claims were directed to an improvement in computer capabilities: "[T]he first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool."12
The new angle on Step One draws from statements in the Supreme Court's Alice opinion. According to the Enfish decision, "The Supreme Court has suggested [in Alice] that claims 'purport[ing] to improve the functioning of the computer itself,' or 'improv[ing] an existing technological process' might not succumb to the abstract idea exception."13 The Enfish opinion goes on to assert that there is "no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice,"14 and builds the "functioning of the computer itself" concept directly into the Step One inquiry.
Proceeding to answer the question, the decision contrasts the challenged claims' focus on a self-referential database with "conventional database structures,"15 and concludes that the claims were not merely utilizing a database for some more abstract end. "[W]e are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather the claims are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea."16
This approach signals a new direction for the analysis of computer-related claims under Alice: rather than struggle with peeling away layers of the proverbial onion to determine what concept or idea the claims are directed to,17 only to then add the previously shed layers back into the mix in Step Two, the Enfish court simply asked whether the claims were directed to an improvement in the functionality of a computer. This approach makes it easier for computer-related patent claims to survive a section 101 attack, as such claims were often viewed as an abstract idea before Enfish, even if directed to improvements in computer functionality. Indeed, at some level, all patent claims can be distilled down to an "abstract idea" in the Alice process as it was commonly undertaken before Enfish.18
At the same time, the Enfish approach might not be sustainable. For instance, not too long ago—before the Alice case but still in recent memory—the Federal Circuit applied a "machine-or-transformation" test to determine whether claims were eligible for patent protection under section 101. In Bilski v. Kappos, the Supreme Court acknowledged that test as "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,"19 but refused to endorse it as the sole or even an authoritative test for patent eligibility. The Court worried that, when "applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain."20 Accordingly, the Bilski opinion restored first principles as the first line of analysis.
[Page 2]
Does Enfish run afoul of similar policies by setting up a more refined...
To continue reading
Request your trial