Following the Supreme Court's recent guidance in Alice Corp. v. CLS Bank International, several software patents have been invalidated by the Federal Circuit, and district courts.  In Alice Corp., the court set out a two prong validity test.  First, whether the subject matter is eligible for a patent; and second, if so, whether the recitation of generic computer components adds something that is not already present when the steps are considered separately?  For software patent applicants, Alice Corp. now requires that the method or system 1) improve the functioning of the computer itself, and do more than instruct one to apply the abstract idea on an unspecified generic computer; or 2) effect an improvement in another technology or field.

In general these recent cases have invalidated patent claims directed to commercial activity – or business methods – implemented in a software environment.  All of the invalidated claims included a recitation of other generic computer components, as has been the practice in the U.S. ever since the seminal case permitting business method patents (State Street Bank).  However, after stripping away the generic components, the courts found there to be nothing "additional" or "meaningful" to the limitations directed to purely commercial activity or methods of conducting business.

In Tuxis Tech. v. Amazon.com, the Federal Circuit invalidated a computer-implemented method for up-selling (i.e., seeking additional purchases based on a buyer’s initial purchase and preferences) upholding the lower court's dismissal on the pleadings, based on its conclusion that none of the patent's limitations was “meaningful.” 

In a district court case decided by Federal Circuit Judge William Bryson, a computer-based method for converting airline customers’ loyalty reward credits was  invalidated for claiming only an abstract idea. Loyalty Conversion Systems Corp. v. American Airlines. 

In Eclipse IP LLC v. McKinley Equipment Corp., a California district court applied Alice Corp. and held that the claims recited nothing more than an abstract idea – asking someone to perform a task and waiting for them to complete the task – implemented on a generic computer.  Similarly, in Buysafe, Inc. v. Google, the Federal Circuit held that converting an abstract concept- guaranteeing a contractual relationship – into the realm of the Internet, was unpatentable.  

The court in Planet Bingo v. VKGS rejected, on similar grounds, a patent claiming computer-aided methods and systems for managing the game of bingo. Generally, the invalid claims recited storing a player's preferred sets of bingo numbers; retrieving one such set upon demand, and playing that set; while simultaneously tracking the player's sets, tracking player payments, and verifying winning numbers.

In Walker Digital v. Google, the Delaware district court granted defendant's motion for summary judgment of invalidity, because the asserted claim limitations simply described an interaction whereby two parties share a series of demands with a third party, where one of the demands of both parties is that the parties' identities remain anonymous, a method long practiced by matchmakers or headhunters.

Other software or method claims held invalid include: a computerized method and system for diet-related behavior analysis, training, and planning (Dietgoal Innovations v. Bravo Media); a method with two limitations: “receiving a request,” and “determining” a response to that request (Comcast IP Holdings v. Sprint Communications); and combining two data sets into a single data set to provide a device profile (Digitech Imaging Technologies v. Electronics for Imaging).

The momentum is clearly turning against the validity and enforceability of patents claiming computer-implemented methods.  A close analysis of software or method patent claims in light of Alice Corp. may be necessary before filing an infringement action, or when defending against a claim of infringement. And when filing for patent protection patent counsel will need to carefully draft claims that do not fall within the statutory exceptions for natural phenomena, natural law or abstract ideas set forth in the Patent Act.