September 03, 2015 Articles

The Federal Circuit's Application of Alice Corp. v. CLS Bank

In one year, computer software inventions have been found eligible for patenting just once

By Ben Hodges

On June 19, 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The Supreme Court set out a two-part test to determine patent eligibility under section 101 of the Patent Act. "First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355. If so, then examine the claim elements "both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application." Id. (internal quotation marks omitted). The second step is "a search 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. (alteration and internal quotation marks omitted). Any "claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea." Id. at 2357 (alteration and internal quotation marks omitted). The court found that a major reason for finding abstract ideas ineligible was the idea that such claims attempted to preempt an entire idea. Id. at 2354.

As of mid-July 2015, the Federal Circuit cited Alice less than 20 times. Only one case, DDR Holdings (discussed below), found a patent valid under this framework. This article briefly discusses some of the Federal Circuit decisions citing Alice, as well as representative claims that the Federal Circuit analyzed in each case.

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