Tracking The Evolving Abstract Idea Doctrine: How Courts Have Applied The Two-Part Test For Computer-Implemented Inventions Post-Alice

• Jurisdiction: United States
• Date: 18 March 2015

The Supreme Court decision in Alice v. CLS Bank.1 provides a framework for determining when a patent claim is directed to one of the long-standing exceptions to patent eligibility, namely, laws of nature, natural phenomena, and abstract ideas. That is, even though a patent claim technically falls within one of the four statutory categories of invention—process, machine, manufacture, or composition of matter—the claim may not be patent-eligible if it is directed to one of the exceptions to the extent that the claim preempts or monopolizes one of these fundamental building blocks. Alice particularly addresses whether computer-implemented inventions are patent-ineligible abstract ideas, but the framework set forth in Alice is broadly applicable to each of the long-standing exceptions. The Alice framework includes a two-part test: first, determining whether a claim is directed to an abstract idea, and if so, then determining whether the claim has additional elements that transform the claim into patent-eligible subject matter by supplying an "inventive concept." However, this two-part test left patent practitioners, patent holders, and patent applicants alike in a state of uncertainty because the Court resolved the "abstract idea" determination in the test's first part by way of example, rather than by providing a clear definition. Further, the second part of the test requires a claim analysis to search for an "inventive concept," and the Court again resorted to fact-specific examples of what might constitute additional features of a claimed invention that are "sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself."2 Subsequent Federal Circuit decisions applying Alice shed light on patent eligibility of claims directed to abstract ideas, specifically abstract ideas implemented on a computer and/or using the Internet. Here, we recap the cases to date that have fallen within and outside both parts of the test. The Interim Guidance on Patent Subject Matter Eligibility3as well as the Subject Matter examples,4recently issued by the USPTO, substantially adhere to the principles of these cases. Step 1: Are THE claims directed to AN abstract idea? The first step of Alice asks whether the claims are directed to an abstract idea. Alice notably declined to define the term "abstract idea," and even acknowledged that at some level, all inventions are directed to an abstract idea. But for this first step, the Court focused on preemption: does the invention seek to improperly patent building blocks of human ingenuity? If the claims recite broad building blocks of innovation, they are directed to an abstract idea. Supreme Court To answer step 1, the Alice Court first distilled from the claimed invention a short narrative to characterize the "abstract idea" to which the claim is directed. In first applying this framework in Alice, the Supreme Court looked back to previous Supreme Court cases and provided reasoning for how its previous cases fit within the new two-step framework. The Supreme Court cases in Table 1 of the Appendix illustrate a comparison between the claim language and the abstract idea generalization. The Supreme Court then found that the claims in Alice's patents were directed to an abstract idea as covering fundamental economic principles. Federal Circuit Applying Alice, the Federal Circuit held that five claimed inventions were directed to abstract ideas and one claimed invention was not directed to an abstract idea. In the former cases, the Federal Circuit—like the Supreme Court—initially distilled the claimed inventions as follows:

"A process of organizing information through mathematical correlations [that is] not tied to a specific structure or machine."sup>5(Digitech) "[M]anaging a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions."6 (Planet Bingo) "Creating a contractual relationship—a 'transaction performance guaranty'—that is of ancient lineage" even if narrowed to particular types of relationships.7 (buySAFE) "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving...