Aftermath of the Supreme Court Ruling regarding Patent-Ineligible Abstract Ideas in Alice v. CLS Bank

by Womble Bond Dickinson

Readers are likely aware that the Supreme Court of the United States has issued a ruling, in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 13–298. Argued March 31, 2014—Decided June 19, 2014.  Also, the United States Patent and Trademark Office (USPTO) issued on June 25, 2014 a memorandum on the above subject.  What do we as patent practitioners expect and do in the aftermath?

A consensus is emerging among numerous blogs (e.g., June 19, 2014 IP Law360 and June 27, 2014 IP Law360) and among colleagues that this is not a disaster for software-based patents, as some originally feared.  Initially, it appeared to some that the Supreme Court ruling provides a blueprint for invalidating software-based patents, or rejecting software-based patent applications.  The Supreme Court reduced all of the claims in four issued patents to variations of “An instruction to apply the abstract idea of intermediate settlement using some unspecified, generic computer” (see syllabus page 3).  Apparently, all one has to do to invalidate a software-based patent or reject a software-based patent application is show that claims in such a patent or patent application are directed to an abstract idea, and show that any structural limitations (in the independent claims or the dependent claims) involving computers or other structural elements are devoid of “an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application” (see page 11 opinion of the court, citing Mayo).  Since, as many have noted in various words (see especially the dissenting opinions in the original case), it is a straightforward manner to declare that just about any patent can be abstracted to an abstract idea at its foundation or core, it might seem at first glance the Supreme Court ruling puts software-based patenting as an overall category at risk.  Of course, the real answer as to whether or not this is so, and how narrow or broad the ruling is, will play out in the courts (e.g., Digitech Image Technologies LLC v. Overstock 2013-1600-1618 (Fed Cir. 2014)) as the Supreme Court ruling is interpreted and applied.

Meanwhile, the USPTO June 25, 2014 memorandum, while not having the force of law, nonetheless provides analysis of the Supreme Court ruling that we can use as guidelines for drafting claims in software-based patent applications.  And, the memorandum reminds us (on page 1) that “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”  The memorandum is directed to Examiners looking at patent applications.  Now, we know a bit more about what the Examiners in the USPTO are looking for.  One of the aspects they are looking for (see Part 2, page 3 of the memorandum) is whether the claim has limitations that qualify as “significantly more” than an abstract idea in and of itself.  Examples of limitations that might qualify as “significantly more” include “Improvements to another technology or technical field; Improvements to the functioning of the computer itself; Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.”  Examples of limitations that might not be enough to so qualify include “Adding the words ‘apply it’ (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer; Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.”

Structure, Structure, Structure.  The antidote to an assertion that claims are merely an abstract idea combined with the instruction to “apply it” is to add structure to the claims.  Remember, abstract can be defined as non-concrete, mental, non-material, separated or apart from actual or real objects, among other definitions.  Reciting structural limitations anchors the claim to actual or real objects.  The machine or transformation test, while not necessarily absolute, is still relevant.  Reciting specific components in a computer, particularly components that have a novel function or structure, may qualify the claim as patent-eligible subject matter.  This tactic moves the computer away from being a generic computer, and may qualify as an improvement to the so-called generic computer.  Tying the claim to a specific technology, e.g., by reciting structural elements indicative of that technology, may qualify the claim as patent-eligible subject matter.  Then, it can be argued that the claim shows improvements to the technology or the technical field.  This could be especially helpful if the specific technology is not necessarily implied in the abstract idea in and of itself.  In a method claim, or an apparatus or system claim involving a function (which could be interpreted as a method), adding actions to the claim that amount to more than just “apply it” may qualify the claim.  A result specific to a particular technology, or an unexpected result, while not mentioned in the memorandum, might also help qualify the claim as patent-eligible subject matter.  Reciting, in the claims, a computer function that is not well-understood, routine and conventional in the industry might be useful.  Software-based patenting is alive and well, we just need to adapt to changes in the legal arena.  This is all part of the art of patenting.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Womble Bond Dickinson | Attorney Advertising

Written by:

Womble Bond Dickinson

Womble Bond Dickinson on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.