In 2014, the U.S. Supreme Court established the current framework for determining patent-eligible subject matter in Alice[1]. The Alice framework is a two-part test, with step one requiring a determination regarding whether a claim is directed to an abstract idea. If not, the claim is patent-eligible. If the claim is directed to an abstract idea, step two requires determining whether the elements of the claim, considered both individually and as an ordered combination, transform the claim into a patent-eligible application of the abstract idea.
This framework does not provide a “bright line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework.”[2] Consequentially, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen – what prior cases were about, and which way they were decided.”[3]
The Patent Trial and Appeal Board (PTAB) appears to be following suit in using such analogies to determine eligibility under the Alice framework. In 2017 alone, the PTAB has reversed twenty‑seven Alice-based section 101 rejections. The decisions are categorized below based on the manner in which the PTAB reached their eligibility determination via analysis under the Alice framework. There are several cases in which the Federal Circuit held software claims patent-eligible post-Alice – DDR[4],Enfish[5], McRO[6], and Amdocs[3] – summarized here. These cases, as well as a Supreme Court case from nearly forty years ago (Diehr[7]), are discussed below with respect to analogies used to establish subject-matter eligibility in these recent PTAB decisions.
Eligible under Step One
Nine[8] of the identified PTAB decisions determined that the claims at issue were not directed to an abstract idea under step one. Following are summaries of some of the analogies made by the PTAB.
Enfish: Improvement to computer functioning, specific implementation of a solution to a problem in the software arts
o Ex parte Kamimura: The PTAB determined that a claimed “method of updating a database” is eligible under step one as it is “directed to improved methods for multiple computers to effect parallel edits to a common database” and thus represents “an improvement to computer functionality itself.”
o Ex parte Sutton-Shearer: The PTAB looked to problem-solution statements in the specification to determine that claims provide an “improvement in the mechanism by which social networks manage information privacy” and thus are not directed to an abstract idea under step one.
o Ex parte Plondke: The PTAB looked to the specification to determine that claims directed to providing “faster search times” solve “the art recognized problem of determining a global extremum without consuming “intensive” computing resources” are not directed to an abstract idea.
McRO: Rooted in technology and directed to technological improvements
o Ex parte Forthoffer: The PTAB determined that claims reciting “an automotive vehicle comprising… an antenna; and a processor” are not directed to an abstract idea as they are rooted in technology and directed to the technological improvement of “managing transmission of data records using different thresholds.”
o Ex parte Ostrovsky-Berman: The PTAB determined that claims relating to automated medical image segmentation go “beyond merely ‘organizing [existing] information into a new form’” and thus are not directed to an abstract idea. The PTAB noted that the asserted improvements in the specification were relevant to this determination.
o Ex parte Baym: The claims relate to “an evaluation module for automatically evaluating a biological sample” with the module including one or more of a test strip and lateral flow test strip, among a few other examples. The PTAB determined that this is not directed to an abstract idea because the claim requires a specific medical device that improves the relevant technology over requiring a human to interpret the color of a test strip, for example by using automated evaluation and a machine that can detect color or other indicators.
Amdocs: An unconventional technological solution to a technological problem using generic components
o Ex parte Zidan: The PTAB determined that “computer processing of sequence data is enhanced by generic [computing] components that are operated in an unconventional manner” by splitting database sequences according to length into a first portion for processing by a CPU and a second portion for processing by a GPU.
Diehr: Practical application of a mental process
o Ex parte Cao: The PTAB analogized to Diehr to determine that the claimed method is “directed to an improvement in how macromolecules are analyzed” and thus eligible under step one.
Eligible under Step Two
Four[9] of the PTAB decisions determined that the claims at issue, while directed to an abstract idea, recited sufficiently more to transform the claim into a patent-eligible application of the abstract idea under step two. These decisions all relied on analogies to DDR.
DDR: Rooted in technology and overcomes a problem in the realm of computers
o Ex parte Ferber: The PTAB considered claims relating to Internet-based ad selection optimization in view of the benefits described in the Specification. The PTAB determined that the claims are eligible under step two as they are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
o Ex Parte Mackay: The PTAB relied upon the Specification to determine that claims relating to a “two-way messaging interface” for block trade matching are analogous to DDR as well as Amdocs for entailing “an unconventional solution to a technological problem.”
o Ex parte Yui: The PTAB found that claims “rooted in complex MRI technology” that use software “to overcome a problem specifically arising in the realm of MRI data signal acquisition technology” are eligible under step two.
o Ex parte Hafner: The PTAB determined that “software-related language in the claims” relating to energy transaction plans for charging electric vehicles provide an “improvement over existing solutions in the field.”
Eligible under Both Steps
Three[10] related appeals resulted in PTAB decisions finding that the claims at issue were patent-eligible under both step one and step two.
· Ex parte Tripp and Ex parte Tripp: The claims at issue in both appeals relate to “customizing a security report” in the context of website security and specifically recited “limiting an amount of processing resources allocated to processing a uniform-cost search method by dynamically configuring… a size of the uniform-cost search method.” The PTAB identified the “limiting an amount of processing resources” as a patent-eligible concept and determined that the “dynamically configuring” elements would transform any abstract idea into a patent-eligible application. While the PTAB did not explicitly reference previous cases, the analysis under step one is consistent with Enfish.
· Ex parte Kotanko: The PTAB determined that “treating a patient to reduce a risk of death” is not an abstract idea under step one and that, even if it was, such treatment improves the field of medicine and would therefore be a patent-eligible transformation under step two. This decision was influenced by Appellant’s analogies to Diehr in asserting that the claimed method is limited to a particular practical application (potentially saving lives is “unquestionably practical”).
Insufficient Demonstration by Examiner under Either Step
Eleven[11] of the PTAB decisions overturned the section 101 rejections due to the Examiner’s failure to demonstrate ineligibility under the Alice framework. While these decisions do not provide insights into the boundaries between patent-eligible and patent-ineligible subject matter, they are exemplary of the thoroughness of examination required under section101.
· Ex parte Murto: “the Examiner’s characterization of the claimed subject matter fails to encompass key aspects of what is being claimed.”
· Ex parte Brown: rejection of dependent claims reversed “because the Examiner did not analyze any of” the dependent claims.
· Ex parte Mecilati, Ex parte Terbrueggen, Ex parte Pavlou, Ex parte Snow, Ex parte Silva, Ex parte Priyadarshan: Examiner fails to argue that the ordered combination fails to transform the claim into a patent-eligible application.
Section 101 Trends at the PTAB
As evidenced by the PTAB decisions from 2017 highlighted above, analogies to court-determined patent-eligible concepts can garner success in overcoming Alice-based section 101 rejections at the PTAB. These PTAB decisions provide additional possibilities for specific comparisons to similar claims during prosecution. Further, description in the Specification can be presented as persuasive evidence in support of assertions that the claims provide a technological solution to a problem and thus are patent-eligible. In addition, Examiners are being held to a higher standard in providing their analysis under section 101.
Looking at court decisions and recent PTAB decisions together provides a more complete picture of how claims are faring under section 101. At a high level, the patent-eligible claims emerging from the Alice framework appear to be directed to specific, technology-based solutions to problems in the relevant technological field, where such solutions are not carried out in the same way as any prior non-automated solutions. However, the fate of any given claim under either step of the Alice framework can hinge upon analogies to previously identified eligible claims and Specification quotes that can be used to establish eligibility.
References
[1] Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (U.S. 2014).
[2] Twilio, Inc. V. Telesign Corp., Case No. 16-CV-06925-LHK (N.D. Cal. Mar. 31, 2017).
[3] Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
[4] DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
[5] Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
[6] McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).
[7] Diamond v. Diehr, 450 U.S. 175 (1981).
[8] Ex parte Forthoffer, Appeal 2012-002645; Ex parte Ostrovsky-Berman, Appeal 2015-002450; Ex parte Sutton-Shearer, Appeal 2015-003977; Ex parte Baym, Appeal 2015-004608; Ex parte Kamimura, Appeal 2015-007472; Ex parte Cao, Appeal 2016-001740; Ex parte Scheucher, Appeal 2016-002623; Ex parte Plondke, Appeal 2016-006905; Ex parte Zidan, Appeal 2016-007482.
