Patent Eligibility Under Alice: Reliance On Lack Of Routine Or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court's ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). This is illustrated, for example, in two decisions - one from a district court and one from the Federal Circuit - in which the courts reached opposite conclusions on computer-related patents, showing that not all such patents are the same for purposes of determining patent eligibility.

Alice created a two-step process to determine whether a claim is directed to patent-eligible subject matter under § 101. 134 S. Ct. at 2355. First, a court must "determine whether the claims at issue are directed to [a] patent-ineligible concept[]" by evaluating the claims "[o]n their face" to determine to which "concept the claims are 'drawn.'" Id. at 2355-56. Then, the court "search[es] for an inventive concept - i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." Id. at 2355. The Supreme Court clarified that for an abstract idea to be considered patent-eligible, "the claim ha[s] to supply a 'new and useful' application of the idea" and that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent eligible invention." Id. at 2357-58.

In Amdocs Ltd. v. Openet Telecom, Inc., 2014 U.S. Dist. LEXIS 152447 (E.D. Va. Oct. 24, 2014), the Eastern District of Virginia court followed this two-step analysis for each of the four patents-in-suit and found each of the patents-in-suit invalid under § 101. Id. at *12-28. The court found that the claims satisfied step 1 of Alice by being "drawn to the abstract ideas" of (1) "correlating two network accounting records 'using some unspecified, generic' computer hardware"; (2) collecting and storing information, and generating reports; (3) "generat[ing] a single record reflecting multiple services; and (4) "collecti[ng] [] network usage information from a plurality of network devices." Id. Furthermore, at step two, the court found that the claims did "nothing significantly more than an instruction to apply the abstract idea . . . using some unspecified, generic" computer hardware and did not "add more than conventional computer functions operating in a conventional manner." Id.

The Amdocs court also emphasized preemption concerns that were...