The Federal Circuit Adopts Classic Common Law Approach For Analyzing Patent Eligibility

On November 1, 2016, the Court of Appeals for the Federal Circuit ("CAFC") in Amdocs (Israel) v. Openet Telecom, No. 2015-1180 ("Amdocs II"), rendered a precedential opinion with regard to the issue of patent eligibility and reversed the district court's finding of patent ineligibility under 35 U.S.C. § 101. The suit between Amdocs and Openet was brought in 2010 in the District Court for the Eastern District of Virginia ("EDVA") by Amdocs, asserting that Openet infringed claims of four patents. Openet asserted patent invalidity, unenforceability, and non-infringement. The EDVA granted Openet's motion for summary judgment of non-infringement, but denied the parties' motions for summary judgment with respect to validity. Amdocs appealed. In Amdocs (Israel) v. Openet Telecom, 761 F.3d 1329, 1331-36 (Fed. Cir. 2014) ("Amdocs I"), the CAFC rendered an opinion regarding claim construction and non-infringement. Following the remand from the CAFC in Amdocs I, Openet moved for judgment with respect to validity, asserting that, pursuant to Alice, [i] all asserted claims were ineligible under § 101. Openet's motion was granted, and the EDVA found the asserted claims of all four patents ineligible under § 101. Amdocs again appealed. In analyzing patent eligibility of claims, the CAFC in Amdocs II adopted a flexible common law approach in which claims were compared with eligible and ineligible claims of a similar nature from past cases. The CAFC recognized that even though the more comprehensive analysis in search of the "inventive concept" is generally reserved to step two of the two-step patent eligibility framework set out by the Supreme Court in Alice and Mayo, [ii] there is "considerable overlap between step one and step two" and "in some situations this analysis could be accomplished without going beyond step one." [iii] According to the CAFC, the more detailed analysis could be undertaken either at step one or at step two. In both situations, "the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an 'abstract idea' encompasses." [iv] The CAFC further recognized the lack of a "single, universal definition of 'abstract idea'" and the difficulty to "fashion a workable definition to be applied to as-yet-unknown cases with as-yet-unknown inventions." [v] According to the CAFC, when a single governing definitional context is not available, "examin[ing] earlier cases in which a similar or parallel...