BitLaw

Section 101 Court Cases

Need more Guidance?
See our new Guidance on Section 101 Dealing with Section 101

The page provides a summary of the Federal Circuit and Supreme Court cases that have analyzed the topic of patent subject matter eligibility under Section 101 of the Patent Act. More information on Section 101, and other resources for analyzing these issues, can be found on Bitlaw's Section 101 Index.

The first section of this page contains a dynamic table of appellate-level Section 101 cases since the Supreme Court's Mayo decision (also including the Supreme Court's Bilski decision). The second section contains a static index and summary of all of the cases considered in Bitlaw concerning Section 101, including historic cases.

Section 101 Cases Table

This table summarizes the Federal Circuit and Supreme Court cases that have analyzed Section 101 since the Supreme Court's Mayo decision in 2012. The table is dynamic, meaning that it can be sorted by selecting the heading for any of the columns. The table can also be filtered using the search box.

Inventions that have been found patent eligible are highlighted in yellow.

Cases from before 2012 can be located in the static index.

Search the PTO Examples list.

Case Name and Citation Date Patent Eligible Abstract / Natural Phenomenon Inventive Concept Invention Case Summary
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.CT. 1289 (2012) 2012-03-20 Ineligible Natural Phenomenon IC Not Found Metabolite Correlation In this unanimous 2012 decision, the U.S. Supreme Court determined that a medical testing patent was unpatentable as nonstatutory subject matter under Section 101 of the Patent Act. The Court then recited the well-settled rule that laws of nature, like natural phenomena and abstract ideas, are not patentable. Nonetheless, the Court acknowledged that while laws of nature are not patentable, claims that contain a law of nature can be patentable as long as the claim applies the law of nature. The court was guided by two principles: that it is important that the claim does not preempt the entire use of the natural law, and that the additional elements added to the claim beyond the natural law must be significant in that they cannot merely involve steps that are well-understood, routine, and conventional. In this case, the Court found that the claim preempted the law of nature.
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. CT. 2347 (2014) 2014-06-19 Ineligible Abstract IC Not Found Intermediated Settlement Relying on its Mayo v. Prometheus and Bilski v. Kappos decisions, the Supreme Court unanimously decided that the claims in this case were unpatentable under Section 101. The Court set forth a two-part test for analyzing whether or not a claim is unpatentable for claiming an abstract idea. First, it is necessary to determine whether or not the claim is "directed to" an abstract idea. While every claim may be considered to relate in some manner to an abstract concept, this decision appears to indicate that many such claims are not "directed to" an abstract idea, at least not to an "abstract idea" as the Court has used that term. Second, it is necessary to determine whether or not the claim contains an "inventive concept" outside the abstract idea, with the term "inventive concept" defined to mean "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.'"
Digitech Image Tech's v. Electronics For Imaging, 758 F.3d 1344 (Fed. Cir. 2014) 2014-07-11 Ineligible Abstract IC Not Found Device Profiles The apparatus claims covered "device profiles" for an imaging device, where the profiles described various properties of the device. The court found these claims to be pure data, not method or apparatus claims, and therefore rejected the claims as non-statutory under Nuitjen. The method claims for generating the device profiles were not tied to any physical apparatus, and were considered directed to the abstract ides of "gathering and combining data that does not require input from a physical device." There was no inventive concept (although the phrase was not used) because all of the other limitations related to data gathering.
Planet Bingo, LLC v. VKGS, LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) (nonprecedential) 2014-08-26 Ineligible Abstract IC Not Found Playing Bingo As the process for managing a bingo game consisted of "solely" of mental steps that can be carried out using a pen and paper, the claims were not eligible under the Alice test.
Buysafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) 2014-09-03 Ineligible Abstract IC Not Found Guarantee online transaction The Federal Circuit determined that patent claims to relating a guaranty service for online transactions is not patent eligible. The case describes the claims as one dealing with the formation or manipulation of "economic relations." The court found that these claims were directed to the same type of fundamental economic concept as the formation of contractual relations in the Bilskibe directed to an abstract idea.
Ultramercial, Inc. v. Hulu, LLC, 772 F. 3d 709 (Fed. Cir 2014) 2014-11-14 Ineligible Abstract IC Not Found Advertising as currency This is the third Ultramercial decision by the Federal Circuit. In this third decision, the Federal Circuit once again reconsiders the issue in light of a new Supreme Court case, this time the 2014 Alice decision. The Court found that novelty of the claims is to be considered only in connection with step two of the Alice test, not step one. Thus, the additional of novel elements will not cause a claim to a be "directed to" something other than an abstract idea. In analyzing step two, the machine-or-transformation test discussed in the Bilski case can still be a useful clue. In this case, even though the claim include eleven specific steps, each of these steps simply implement the abstract idea with "routine, conventional" activities.
DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014) 2014-12-05 Eligible Abstract IC Found Web page manipulation The Federal Circuit examines whether a software-related invention is patentable. This is one of the few appellate decisions after the Alice decision that found the invention to be eligible for protection under Section 101. Didn't identify the abstract idea. Instead went to step two to find an inventive concept. The Court found that the claims contained an inventive concept, and distinguished this case from the numerous other software-related cases that were not patent eligible. More specifically, the Court found that the claims in this case "do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet." Instead, the claims are "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer network."
In Re BRCA1-& BRCA2-Based Hereditary Cancer Test, 774 F. 3D 755 (Fed. Cir. 2014) 2014-12-17 Ineligible Abstract IC Not Found Compare genetic sequences The Federal Circuit applied the Supreme Court's Myriad decision, and found that primers were "structurally identical to the ends of DNA strands found in nature" and therefore are not eligible for patent protection even though they are synthetically generated. Furthermore, a method which is directed to the abstract idea of comparing genetic sequences was ineligible subject matter under the Alice decision.
Content Extraction and Transmission. v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) 2014-12-23 Ineligible Abstract IC Not Found Data analysis from documents The Federal Circuit evaluated claims relating to the receipt of certain data (from a scanner), recognizing data fields from that data, and then storing that data. The Court found that the claim was directed toward the abstract idea of "data collection, recognition, and storage," and that the remainder of the claim only recited computer components performing routine and ordinary functions.
OIP Technologies, Inc. v. Amazon.com, 788 F. 3d 1359 (Fed. Cir. 2015) 2015-06-11 Ineligible Abstract IC Not Found Price Optimization The Federal Circuit determined that the claims were related to the abstract concept of "price-optimization," and that none of the claim elements added anything other than routine use of a general purpose computer.
Internet Patents Corp. v. Active Network, Inc., 790 F. 3d 1343 (Fed. Cir. 2015) 2015-06-23 Ineligible Abstract IC Not Found Processing online forms The claims in this case were Web browser specific, and related to dynamically generated forms that allowed uses of back and forward navigation in the web browser while maintaining the state of partially completed forms. The Court found the abstract idea to be "retaining information in the navigation of online forms." The court put great emphasis on the fact that the claims simply described the desired outcome (maintaining said state) without describing the mechanism for maintaining that state. The claim was directed to the "idea itself," rather than for the mechanism for doing so. Additional claim elements were mere data gathering or elements that limited the claim to a particular technological environment, so there was no inventive concept.
Intellectual Ventures I LLC v. Capital One Bank, 792 F. 3d 1363 (Fed Cir. 2015) 2015-07-06 Ineligible Abstract IC Not Found Online financial budgeting The claims related to a "profile" that stored particular information relating to spending limits for particular financial categories. The claims then required the transmission of part of that data. The Court found these claim were directed to the abstract idea of tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting). Other elements of the claim were generic and did not create an inventive concept.
Versata Development Group v. SAP America, Inc., 793 F. 3d 1306 (Fed. Cir. 2015) 2015-07-09 Ineligible Abstract IC Not Found Price determinations The patent in this case contained claims that covered arranging and sorting data to determine a product price. The Federal Circuit found these claims to be directed toward an abstract idea. The additional claim elements did not improve the functioning of the computer, nor improve any other technology, so there was no inventive concept. The court used the machine-or-transformation test, but the claims did not pass.
Vehicle Intelligence And Safety LLC v. Mercedes-Benz USA, LLC, (nonprecential) 2015-12-28 Ineligible Abstract IC Not Found Detect impairment of equipment operator The claims in this case related to monitoring equipment (such as parts of a motor vehicle) to determine if a person (driver) is impaired and then limiting control of the vehicle if impairment is detected. The court found the claims directed to idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment. The claims were too general (a generic "expert system" was used without any details provided) to show an inventive step. Although the claims arguable related to "specialized existing equipment modules" as opposed to generic computers (such as gas and brake pedals and climate-control systems in a car), the patent did not explain anything about how to use this equipment in this manner.
Mortgage Grader v. First Choice Loan Services, 811 F. 3d 1314 (Fed. Cir. 2016) 2016-01-20 Ineligible Abstract IC Not Found Loan Shopping anonymously The claims in this case were directed to a computerized system for anonymous shopping for a bank loan, which was found to be the abstract idea behind the claims by the court. There was no inventive concept, as no improvement was made to the functioning of the computer or to external technology. Rather, the claims just added generic computer components to the abstract idea.
In re Smith, 815 F.3d 816 (Fed. Cir. 2016) 2016-03-10 Ineligible Abstract IC Not Found Play wagering game with cards These claims related to a method of conducting a wagering game using playing cards, and the claims required the shuffling and dealing of the playing cards. The Court found that the claims were directed to "rules for conducting a wagering game," which was a fundamental economic practice and therefore directed to an abstract idea. The Court rejected that patent owner's argument that the use of physical playing cards should make the claims not abstract, but the Court rejected this argument finding that the shuffling and dealing a standard deck of cards are "purely conventional" activities much like the recitation of purely convention computer components in Alice.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) 2016-05-12 Eligible Not Abstract IC Not evaluated New database model For only the second time, the Federal Circuit considers a computer-implemented invention after the Alice decision and finds the invention to be patent eligible subject matter. The Enfish decision is important as it establishes a mechanism to evaluate the first step in the Alice test as to whether a claim is "directed to" an abstract idea. The court explains that the claim is to be considered as a whole, and the "focus" or "character" of the claim is to be determined based on an evaluation of the specification. If the focus of the claim is on a technological improvement (to the computer or to another technology), the claim is patent-eligible subject matter and there is no need to evaluate step two of the Alice test.
In re TLI Communications LLC, 823 F.3d 607 (Fed. Cir. 2016) 2016-05-17 Ineligible Abstract IC Not Found Image classification and storage Five days after Enfish, the Federal Circuit was able to apply the new step one test to another computer- implemented invention. However, the court found that, unlike Enfish, the inventor here was not faced with a technological problem with a technical solution. Although the invention was related to digital images taken and classified on a smart phone, and then automatically stored according to the classification information, the court felt this was an administrative as opposed to technical issue.
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) 2016-07-27 Eligible Abstract IC Found Internet Content Filtering Bascom is important because the Federal Circuit takes a new approach in analyzing step two of the Alice test. In particular, the Federal Circuit found that even when all of the claim elements being analyzed in step two are well-known, "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." This opens a new avenue for explaining that a claim is subject matter eligible under step two of the Alice test.
Rapid Litigation Management Ltd. v. Cellzdirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016) 2016-07-05 Eligible Natural Phenomenon IC Found Hepatocyte perservation This decision found a process for re-freezing liver cells to be patent eligible under both step one and step two of the Alice test. Under step one, the court noted that it was "not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is 'directed to.'" In this case, the claim was directed to a new and useful laboratory technique, not the natural law underlying the claim.
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) 2016-08-01 Ineligible Abstract IC Not Found Analyzing data from power grid The Federal Circuit applies the Enfish decision with respect to step one of the Alice test. The court looked at the character of the claim as a whole, but found the claim directed to the abstract idea of collecting and analyzing data even though the type of data collected was limited to data from an electric power grid. The claim was not patent-eligible, because it also failed to include an inventive concept under step two of the test. Importantly, the court noted that the claims did not relate to a new source or type of information, or a new algorithm for analyzing the information, which implied that such an improvement might have met the requirement of step two.
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) 2016-09-23 Eligible Not Abstract IC Not evaluated Animated video lip synching In McRO, the court again analyzed the claims "as a whole" under step one of the Alice test (as required by Enfish). After this analysis, the court found that claims directed to using a set of rules to set parameters for a digital animation software process was directed to a technological improvement, and not directed to an abstract idea. It was important to the Federal Circuit that the claimed invention was not simply automating the normal, human animation process since the claimed steps included elements that would never be undertaken by humans. As a result, the claim is patent-eligible under step one.
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253 (2016) 2016-09-23 Ineligible Abstract IC Not Found Accessing out-of-region broadcasts The Federal Circuit again reviewed the two-step test of Alice. The Court explained that the "abstract idea" requires the Court "to look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter. In this case, the claims covered generic functions for providing "out-of-region access to regional broadcast content" through a cellular telephone, and the Court found this to be abstract. The Court hinted that if the software provided a specific technique or a "particular way" to implement this method, it would not be abstract. The Court also found that there was no inventive concept under the second part of the test, comparing the technical detail found in Bascom with the lack of detail in the patent at issue in this case.
Fairwarning IP, LLC v. Iatric Systems, Inc., 2016-10-11 Ineligible Abstract IC Not Found Detecting fraud in data access The claims related to a system to monitor access to protected health information in which a rule is created, an audit log is compared with the rule, and a notification is provided if rule is fulfilled. The court found the claim directed to the abstract idea of detecting misuse in a computer environment based on analyzing log files, while also finding that the claims simply automated a process that was commonly performed without computers in the past. Furthermore, the court found that the claims simply related to the collection and analysis of data, which is an abstract idea. There is no inventive concept, and there are no details in the claim that describe an improvement to existing computer technology.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (2015) 2015-06-12 Ineligible Natural Phenomenon IC Not Found Detecting fetal DNS in mother's plasma The claims related to the diagnosis of certain fetal characteristics using "cell-free fetal DNA" taken from the mother's bloodstream. The claims related to obtaining the sample, amplifying the relevant DNA, and detecting the DNA. The court found that the claims were "directed to naturally occurring phenomena," and found that the remaining steps were well-understood, routine, and conventional at the time of the invention. Judge Linn issued a concurrence, lamenting the fact that Mayo requires that the court discount all conventional post-solution, even where here the post-solution activity had never been applied to serum gathered in the claimed manner.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282 (Fed. Cir. 2015) 2015-12-02 Ineligible Natural Phenomenon IC Not Found Detecting fetal DNS in mother's plasma This is a denial for a request for a rehearing en banc. Judges Lourie and Moore explained that they could find no basis to distinguish case from Mayo. The Federal Circuit understands that Alice requires that the test established in Mayo for natural phenomenon applies to abstract ideas. And the Mayo decision implements the Flook test for inventive concept--you must put aside the natural phenomenon and find something inventive in the other elements analyzed in step 2 and not in the natural phenomenon.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) 2016-11-01 Eligible Abstract IC Found Correlating network accounting records The Federal Circuit agreed with the district court that the claims were related to the abstract idea of using a database to compile and report on network usage information. However, the majority found that the claims include an inventive concept in the ordered combination of claim steps, finding that the "claim recites a technological solution to a technological problem specific to computer networks — an unconventional solution that was an improvement over the prior art." A dissent by Judge Reyna saw no technological solution that did not form part of the abstract idea.
Intellectual Ventures I LLC v. Symantec Corp., 838 F. 3d 1307 (Fed. Cir. 2016) 2016-09-30 Ineligible Abstract IC Not Found Filtering files and emails The claim in this case relate to the receiving and analyzing of data, and the output of data relating to the analysis. In particular, the claims related to filtering emails. In fact, the Court found the claims to be directed to the abstract idea of filtering email. In analyzing whether there was an inventive concept, the Court found it irrelevant that the claims were novel under Section 102. Here, the claims did not improve the functioning of the computer itself, but rather use generic computers to perform generic computer functions.
Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (2017) 2017-06-09 Ineligible Abstract IC Not Found Custom loan package generation The claim at issue in this case relate to customizing a loan package for each item in inventory at a dealer. The Federal Circuit found the claim directed to the abstract idea of "processing an application for financing a purchase." All other claim elements related to use and arrangement of conventional and generic computer components and did not constitute an inventive concept.
Recognicorp, LLC v. Nintendo Co, Ltd., 855 F.3d 1322 (Fed. Cir. 2017) 2017-04-28 Ineligible Abstract IC Not Found Encoding and decoding facial images The claims in this case did not meet Section 101. They failed step one of the Alice test because they were directed to the abstract idea of encoding and decoding image data. In fact, the court found that the technique of creating a composite image based on selecting facial features could be practiced verbally or with a telephone. The court found the claims abstract for reasons similar to the rationale of the Digitech case: a process that starts with data, applies an algorithm to the data, and then ends with a new form of data is abstract. Furthermore, the claims did not add an inventive concept as they did not describe "a particularized application," nor they did not improve any other technology.
Thales Visionix Inc. v. US, 850 F.3d 1343 (Fed. Cir. 2017) 2017-03-08 Eligible Not Abstract IC Not evaluated Tracking motion of object The claims in this case required that an inertial sensor be mounted on a tracked object and another sensor on a "moving reference frame," and mathematics then be used to track the motion of the object relative to the reference frame. The court found that the claim was not directed to an abstract idea. Rather the claims seek "to protect only the application of physics to the unconventional configuration of sensors as disclosed." The claims, which admittedly included mathematics, were allowable in the same manner that the claims in Diehr were allowable.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) 2016-10-17 Ineligible Abstract IC Not Found Mental steps to generate hardware component The court denied subject matter eligibility for a method that translates a functional description of a logic circuit into a hardware component. The claims did not mention a computer, and the Court found that the claims effectively constituted mental steps. As such, the claims were directed to an abstract idea, and none of the limitations added anything more than additional mental steps. The court rejected the notion that consideration should be given to the fact that the steps were novel and non-obvious, instead finding that "[t]he search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty" (even while acknowledging that the §101 inquiry may overlap the §102 inquiry).
The Cleveland Clinic Foundation v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017) 2017-06-16 Ineligible Natural Phenomenon IC Not Found Testing for a disease A testing process created by the Cleveland Clinic to determine the risk for having atherosclerotic cardiovascular disease was considered to be directed to a patent-ineligible law of nature. Although the Court agreed that the invention may have been groundbreaking, the Court stated that even such valuable contributions can fall short of Section 101. The Court found the claims very similar to the Ariosa case, in that a detected element in the blood was found to be correlated with another condition, and the claim simply instructed doctors to apply routine, conventional techniques. None of the techniques created an inventive concept, and the discovery was not converted into a new laboratory technique as was the case in Rapid Litigation v. Cellz Direct.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) 2016-11-29 Ineligible Abstract IC Not Found Generating restaurant menu The invention in this case relates to a system for remote management of restaurant menus. Menus are downloaded onto mobile devices and are used for ordering food in a restaurant. The court found that the concept of creating second menus (orders) from a customer based on modifying the first menu was the abstract idea to which the claims were directed. These claims did not improve any technology, and in this case were claimed so broadly as to simply claim the result--which is the abstract idea. As for the inventive concept, the court found that all of the elements cited by the patent owner were conventional. The Court noted that, while it may have been difficult to program the software to perform these elements, none of that difficulty and detail was recited in the actual claims.
Association for Molecular Pathology v. Myriad Genetics, Inc., 132 S.Ct. 1794 (2013) 2013-06-13 Ineligible Natural Phenomenon Gene sequencing The Supreme Court analyzed the patentability of gene sequencing inventions under Section 101. The court found that isolating naturally occurring gene fragments did not result in the invention of anything that was not found in nature. This is true even though "isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule." Thus, these gene fragments were not patent eligible under section 101. In contrast, the creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. As a result, the cDNA sequence molecule was patent eligible subject matter.
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) 2017-08-15 Eligible Not Abstract IC Not evaluated Memory system for computer The claims in this patent related to the creation of for creating a three tiered memory system (bulk/disk, RAM, and high-speed cache) were not directed to an abstract idea. The court held that the claims were directed to an improvement in computer functionality versus being directed to an abstract idea. Like Enfish, the claims here were not directed to an economic or other task for which a computer is used in its ordinary capacity. Rather, the claims are directed "to an improved computer memory system, not to the abstract idea of categorical data storage." It was important that the specification explained the multiple benefits that flowed from the claimed improved memory system. In the end, the Court found that the claims were directed to a technological improvement, namely an enhanced computer memory system.
Return Mail, Inc. v. US Postal Service, 868 F.3d 1350 (Fed. Cir. 2017) 2017-08-28 Ineligible Abstract IC Not Found Undelivered physical mail The Federal Circuit agreed with the PTAB's CBM holding that the claims at issue related to the abstract idea of relaying mailing address data. In particular, the Court found that the claim elements were analogous to the steps of collecting data, recognizing data, and storing data in memory, which were found abstract under Step 1 in Content Extraction. While the claim included the step of encoding and decoding mail recipient information, that process can and has been performed in the human mind, and thus the claims are abstract under Step 1. There is also no inventive concept, as the claims only recite routine and conventional activities. While the patent owner receives certain hardware such as a mail sorter, scanners, and the mail itself, these limitations are not found in the claims. Finally, the Federal Circuit explained that a lack of complete preemption does not save the claims.
Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) 2017-10-16 Ineligible Abstract IC Not Found Affixing ID to physical mail The claims in this case relate to the generation of a unique, sender-generated identifier that is placed on physical mail. The district court found the claims were directed to the abstract idea of "communicating information about a mail object by use of a marking." The Federal Circuit agreed, and found that the claims provided no specific detail on how to perform the various claimed steps. Rather, the claims merely cite, for example, that the unique identifier "is generated." Furthermore, the Federal Circuit found no inventive concept as the claims are "replete" with routine steps. The Court rejected an analogy to DDR Holdings because the claims are "non-specific and lack technical detail."
Smart Systems Innovations v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017) 2017-10-18 Ineligible Abstract IC Not Found Authorize transit ride via CC The claims in this case allowed a credit card to be used to authorize a transit ride without any other ticket or card, including the ability to automatically purchase a monthly fare voucher, were directed to an abstract idea. The Court found these claims to be directed to the formation of financial transactions in a particular field (mass transit) and data collection relating to those transactions. As such, the claims are directed to the collection, storage, and recognition of data, and therefore are directed to an abstract idea. The majority also finds that the claims do not recite an inventive concept because they invoke general computers and technological components performing their basic function.
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3D 1329 (Fed. Cir. 2017) 2017-11-01 Ineligible Abstract IC Not Found Routing audio data streams The Federal Circuit found that the claims did not focus on specific means or methods for routing audio data streams, but rather were directed to the result and merely invoked generic machinery in achieving that result. If more specific techniques were provided that could provide an improvement to the functioning of the underlying technology, then the patent may have been eligible under step one. Instead, the claims used result-based functional language without sufficiently describing how to achieve these results in a non-abstract way.
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) 2018-01-10 Eligible Not Abstract IC Not evaluated Filtering virus through profiles The invention related to virus screening, which was found to be an abstract idea in Intellectual Ventures I v. Symantec. However, the Court found that the technique for virus scanning claimed in this case constitutes an improvement in computer functionality and therefore included an inventive step. The Court focused on the fact that the claims here were not merely focusing on a desired result, but instead recited specific steps that accomplished the result.
Genetic Technologies Ltd. v. Merial L.L.C., 818 F.3d 1369 (2016) 2016-04-08 Ineligible Natural Phenomenon IC Not Found Detecting genes by analyzing linked, non-coding region The invention related to a discover that non-coding portions DNA regions ("junk DNA") are frequently correlated with coding regions. The invention relates to detecting alleles of a particular gene not by looking for the coding region of the gene, but by amplifying and analyzing the linked, non-coding regions. The Federal Circuit found the claims to be similar to the Mayo case, in that the correlation is a consequence of the naturally occurring linkages in the DNA sequence. Thus, like Mayo and Ariosa Diagnostics, the claims are directed to a law of nature. Any additional elements in the claim are insufficient to provide the inventive concept under step two of the Alice/Mayo test.
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) 2018-01-25 Eligible Not Abstract IC Not evaluated Mobile device interface screen An improved user interface for small screens such as a mobile device is considered to be patent eligible because the claims are not directed to an abstract idea. While the basic concept of "summarizing information" might be abstract and exist prior to the invention, the claims in this case were "directed to a particular manner of summarizing and presenting information in electronic devices." This case further characterizes the decisions in Enfish, Thales, Visual Memory, and Finjan as being patent eligible because the claims were directed toward specific implementations of a concept.
Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86 (1939) 1939-01-30 Eligible In this case, a Mr. Carter had obtained a patent on a directional antenna system. This antenna was different from previous antennas solely in the fact that the arrangement of the wires was determined by the application of a mathematical formula that had been known for 30 years prior to the filing of the patent application. The patent was eventually rejected not as non-statutory subject matter, but for an unacceptable alteration of the claims in variance with the originally filed application. The case assumes "without deciding" that an invention can be found in the application of known math to a familiar type of structure to come up with a new structure guided by the mathematics. The case is relevant in this area for the following dicta: “[w]hile a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”
Diamond v. Chakrabarty, 447 US 303 (1980 1980-06-16 Eligible The invention in this case was to a new bacterium with markedly different characteristics from any found in nature. Because this bacterium was not a previously unknown natural phenomenon, but rather a nonnaturally occurring manufacture or composition of matter, the Supreme Court found that the invention qualifies as patentable subject matter. The Supreme Court emphasized that here, the invention was not nature's handiwork, but the handiwork of the inventor. The four Justice dissent argues that Congressional intent was that the Patent Act doesn't cover living organisms, which is made clear by acknowledging that Congress felt it needed new legislation to cover plants when it created plant patents.
Bilski v. Kappos, 561 U.S. 593 (2010) 2010-06-28 Ineligible Abstract IC Not Found Hedging process for energy market The Supreme court rejected the Federal Circuit's holding in In re Bilski that the machine-or- transformation test is the sole test to determine whether a particular process constitutes patent-eligible subject mater. Instead the test should be viewed as "a clue" to this analysis. The majority decided that the Bilski invention was not patent-eligible subject matter because it was an attempt to preempt an abstract idea. In particular, the claims related to the basic concept of hedging, which the Supreme Court agreed was a "fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class." It is not clear from this decision what test or analysis should be used going forward to analyze whether a particular process is merely an abstract idea or not.
Intellectual Ventures I and II v. Capital One, 850 F.3d 1332 (Fed. Cir. 2017) 2017-03-07 Ineligible Abstract IC Not Found Data mapping in XML documents Claim for data mapping in XML documents was abstract because it was directed to the abstract idea of collecting, displaying, and manipulating data. Limitations related to XML documents were dismissed as "field of use limitations." Furthermore, the claim was too result-oriented, and lacked particularity as to how the results were to be achieved, to include an inventive concept under step two of the Alice test.
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) 2018-02-08 Ineligible Abstract IC Not Found Parsing computer data into parts A method for archiving an "item" in a computer using "a parser" to parse the item into a multi-part object structure was rejected as ineligible under Section 101 for being directed to an abstract idea. The court found that the parsing and comparing steps found in these claims were similar to the collecting and recognizing steps of the Content Extraction case. Even though the data in this case may be related to computing technology, the court found that this was merely a limitation to a particular technological environment, and the claims were still directed to an abstract idea. This case is also one of the first cases to determine that step two of the Alice test requires a determination as to whether a claim element or combination is conventional, and that this is a question of fact.
Aatrix Software v. Green Shades Software, 882 F. 3d 1121 (Fed. Cir. 2018) 2018-02-14 Eligible Abstract IC Found Importing data into forms The Federal Circuit reversed the District Court's rule 12(b)(6) holding that the claims at issue were not eligible for patent protection under Section 101. Although the ultimate determination of eligibility under Section 101 is a question of law, there are subsidiary fact questions that must be resolved first. The court indicated that if the District Court had allowed an amended complaint, the amended complaint would allege facts that could influence the determination made under step two of Alice as to whether the claim included non-conventional elements. The court stated that non- conventional elements would allow the claim to pass step two and be eligible. Thus a ruling under rule 12(b)(6) was inappropriate.
Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, 887 F.3d 1117 (2018) 2018-04-13 Eligible Not Natural Phenomenon IC Not evaluated Genetic test plus drug treatment The Federal Circuit considered a claim that related to treating schizophrenia by first performing genetic testing to see if the patient has a "CYP2D6 poor metabolizer genotype." If so, then a limited amount of iloperidone is administered to the patient. If no, then more. The court found that this claim was not directed to a natural law under step one of Alice, and was therefore patent eligible. The court distinguished the Mayo decision, in which the claims did not treat an illness but instead went only to recognizing a need to increase or decrease a dose. The dissent by Chief Judge Prost argued that there is no significant difference between the present case and Mayo, and would find the claim directed to a natural law. He also indicated that, in his view, the claims would also fail step two of the Alice test and would not be patent eligible.
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) 2018-05-15 Ineligible Abstract IC Not Found Statistical analysis of investment data The Federal Circuit considered the invention in this case to be improved mathematics used in financial analysis. The court found that the claims were related to the collection and analysis of data, and therefore was directed to an abstract idea. It does not matter, the court explained, that the mathematics involved was new and nonobvious, as the innovation "is an innovation in ineligible subject matter." In analyzing step two, the court indicated that all of the claim elements were either themselves abstract (mathematics), or if they were physical in nature they were not inventive. The court distinguished this case from those where improvements were made to something physical, such as in McRO or Thales Visionix.
Berkheimer and Aatrix Denial of Rehearing en Banc, 2018-05-31 The Federal Circuit considered whether to rehear its decisions in Berkheimer and Aatrix that the step two of the Alice test involves questions of fact. The majority of judges declined to rehear these decisions, and were comfortable with the fact that step two requires a factual determination of whether or not claim elements or routine or conventional. This clearly involves issues similar to Section 102 and 103, and some judges disagreed. Judges Lourie and Newman concurred in the result, but wrote separately to urge that the Supreme Court or Congress do away with the two-part Alice test. Judge Reyna dissented, indicating that step two of the Alice test should be based on the claims and the patent itself, and is a purely legal issue.
In re Roslin Institute (Edinburgh), 750 F.3d 1333 (Fed. Cir. 2014) 2014-05-08 Ineligible Natural Phenomenon IC Not evaluated Cloned Sheep The markedly different characteristics test was used by the Federal Circuit to reject the subject matter eligibility of cloned sheep. The sheep were considered genetically identical to another sheep, and therefore did not possess markedly different characteristics from any farm animals found in nature. Although the case was decided after the Supreme Court's Mayo decision, the Federal Circuit did not apply step two of the Mayo/Alice test.
BSG Tech LLC v. BuySeasons, Inc., Fed. Cir. Aug. 15, 2018 2018-08-15 Ineligible Abstract IC Not Found Guided database input using prior data An invention related to database entry was found to be ineligible for patent protection under Section 101. In this invention, users were able to choose their own parameters and values to define an object in the database. To improve the content of the database, previously used parameters and values were presented. The court found this to be directed to an abstract idea. Enfish and Visual Memory were distinguished because they altered the internal functioning of the computer. While the claimed method improves the data in the database, the underlying database is unchanged. An inventive concept was not found, because the rest of the claim element included only conventional elements. The court went out of their way to clarify (for the first time) that those claim elements that implement the abstract idea are ignored under the second step of determining the existence of the inventive concept.
Interval Licensing LLC v. AOL, Inc., Fed. Cir. July 20, 2018 2018-07-20 Ineligible Abstract IC Not Found Placing info on unused portion of user interface This invention relates to the displaying of additional information on a display in such a way that it appears on the display in parallel to the user's primary tasks (such as on an unused portion of the display). The claims were silent on how this was to be accomplished. In the words of the court, the claims demanded "the production of a desired result" without "any limitation on how to produce that result." As such, the claims were directed to an abstract idea. The court also found that there was no inventive concept, as the claims do not provide any inventive method of how the secondary information is to be displayed. Interestingly, the court implied that if a specific technique of reaching that result were found in the claims as a whole, an inventive concept might have been found.
Roche Molecular Systems, Inc. v. Cepheid, 2018-10-09 Ineligible Natural Phenomenon IC Not Found Genetic test for M. tuberculosis The patent was directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis ("M. tuberculosis" or "MTB"), which is a major cause of tuberculosis. Scientists discovered eleven signature nucleotides for MTB. A conventional process called PCR amplifies (copies) the relevant DNA segment using primers that are customized for these signature nucleotides. An examination is then conducted to look for these copies (the "amplification product") to determine if MTB is present. Claims to the primers were rejected under Section 101 even though they were not naturally occurring because they have genetic sequences identical to those found in nature. The Court found the facts to parallel the facts in In re BRAC1. The method claims were considered to be directed to the natural phenomenon--the presence of these nucleotides and the presence of MTB. The PCR step was well-known, and the determining step was merely a mental process, so there is no inventive concept. Note that the concurrence from O'Malley agrees that the holding in BRAC1 compels the decision reached here, but Jude O'Malley believes that the BRAC1 decision should be reconsidered en banc.
Data Engine Technologies LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018) 2018-10-09 Eligible Not Abstract IC Not evaluated Tab interface for 3-D spreadsheets The invention relates to the use of user-definable tabs in a spreadsheet program for identifying and navigating between pages of a spreadsheet. Originally implemented in Quattro Pro in 1992, the related patents were asserted against Google. The Federal Circuit specifically stated that the lack of a user-friendly interface for navigating three-dimensional spreadsheets was a "technological problem in computers." This case is useful in showing that improved user-interfaces are technological in nature, and the case cites Core Wireless in support of this holding. The court emphasized that the claims recited a "specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three- dimensional spreadsheet)." As such, these claims were distinguished from other cases where the claims were merely directed to displaying information on a screen or merely collecting, manipulating, or organizing information.
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) 2017-03-07 Ineligible Abstract IC Not Found Index in Computer Database Two inventions are analyzed in the case. The first uses XML "tags" as an index to a database. The Federal Circuit felt that this was directed to the abstract idea of creating an index and using that index to access data. The patent owner failed to explain how the use of XML tags improves the technology of computer databases. In addition, no inventive concept was found as the claim only recited conventional pieces and their arrangement did not result in any technological improvement. The second invention relates to using pointers at a local device to point to remote data sources, which the court found to be directed to the abstract idea of remotely accessing user specific information. No inventive concept was found, as the patent did not provide an inventive solution to this issue, but merely recited the abstract idea and explained that it was implemented using conventional components in mobile devices. Although an "interface" was recited, the claims were "so lacking in implementation details" that it amounted to a generic component that implemented an abstract idea.
Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (2018) 2018-11-16 Eligible Not Abstract IC Not evaluated Software license control using BIOS Invention relates to operating a software within the limits of a software license. The court reviewed the other software cases that found the claims to be patent eligible, and found that the claims in this case focused on a solution to a computer-functionality problem, and included sufficient specificity to be patent-eligible under step one of Alice. The court found it important that the proposed technique "depart[ed] from earlier approaches," implying that it might be appropriate to consider the prior art under step one.
In re Bilski, 545 F3d 943 (Fed. Cir. 2008) 2008-10-30 Ineligible
In Re Marco Guldenaar Holding BV, 911 F.3d 1157 (Fed. Cir. 2018) 2018-12-28 Ineligible Abstract IC Not Found Wagering game with modified dice The invention related to a dice wagering game using three specialized dice, with one dice having one winning side, the second having two, and the third three. The Federal Circuit found the claimed invention to be directed to a method of conducting a wagering games, which was abstract for the same reasons as the wagering game in In re Smith. The inventor claimed that the claims included an inventive step because the claims included altered, specialized dice. The Federal Circuit rejected this argument, explaining that such alteration falls under the printed matter exception to patentability, and the printed indicia on the dice are not functionally related to the die itself.
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372 (Fed. Cir. 2017) 2017-12-08 Ineligible Abstract IC Not Found Local POS payment for remote order The court found that a system for handling the local payment at a point-of-sale system for remotely ordered goods was directed to an abstract idea. Codes are received to determine whether the goods have been purchased locally or remotely, and data is sent to the remote seller on the payment of goods. The panel found that this was "manifestly directed to an abstract idea" of the local processing of payments for remotely purchased goods. The Federal Circuit found that the plaintiff should have reassessed its case after Alice and withdrawn the lawsuit. The trial courts awarding of fees was affirmed as the failure to withdraw the lawsuit constituted an exceptional case where fees are appropriate.
Voter Verified, Inc. v. Election Systems & Software LLC, 887 F.3d 1376 (Fed. Cir. 2018) 2018-04-20 Ineligible Abstract IC Not Found Verifying the voting process through printed receipt In this case, the Federal Circuit found that claims relating to a method for voting were drawn to the concept of voting, verifying the vote, and submitting the vote for tabulation. Even the patent owner characterized the claim steps as "human cognitive actions." Not surprisingly, the Federal Circuit found the claim directed to an abstract idea. The Court also found that the use of general purpose computers to carry out the abstract idea cannot constitute an inventive concept.
Natural Alternatives Int'l, Inc. v. Creative Compounds, LLC, 2019-03-15 Eligible Not Natural Phenomenon IC Not evaluated Treating humans using an existing product, Beta-alanine The Federal Circuit rejected the trial court's JNOV decision, finding that (at least at this stage in the proceedings), the invention should be considered to be patent eligible. While the claims related to an existing, natural product, the method claims can be considered treatment claims that are patent eligible under Vanda Pharmaceuticals. Similarly, while the product claims contain a natural element, they are patent-eligible because the claim is for more than the natural element, and the claimed product has markedly different characteristics than the natural element. The Court further found that there were insufficient facts to allow an analysis of step two to determine whether or not the claim contained an inventive concept.
SRI International, Inc. v. Cisco Systems, Inc., 2019-03-20 Eligible Not Abstract IC Not evaluated Evaluating network data to find suspicious activity Although this invention is similar to that of Electric Power Group, the Federal Circuit in this case found an invention that collected and analyzed data over a network to be patent-eligible. The claimed invention involved "network monitors" deployed in a computer network that reported back network traffic data. By analyzing the data, the invention could find suspicious activity and generate reports. The Court distinguished Electric Power Group by noting that computers in that case were being used to "solve a power grid problem," while the computers in the present case improved the functionality of computer networks themselves.
Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., 2019-03-28 Eligible Not Natural Phenomenon IC Not evaluated Method of treating pain in renally impaired patient As was the case in Vanda Pharmaceuticals, the Federal Circuit found the invention to be directed to a method of treatment, which is considered patent- eligible under step one of Alice. The Court found the claims to be distinguishable from patents that merely claim a diagnostic step that is based on a natural law correlation.
Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 915 F.3d 743 (Fed. Cir. 2019) 2019-02-06 Ineligible Natural Phenomenon IC Not Found Method of diagnosing developmental disorders The majority in this decision examined the claim for a diagnostic method and found it patent-ineligible. The diagnostic technique relied upon a natural law, and under step one the majority found the claim to be directed to that natural law as it did not including any treatment steps. In examining the claim under step two, the majority emphasized that the inventive concept must be found outside of the natural law itself. In this case, the steps outside the natural law correlation were considered to be conventional. As a result, no inventive concept was found, and the claim was patent- ineligible.
In dissent, Newman emphasized that claims should be considered "as a whole," going back to the Supreme Court's Diamond v. Diehr decision. Newman would find the claim eligible under step one, considering the claim to be directed to a method of diagnosing that is more than the mere natural law correlation. Newman appears to go beyond disagreeing as to what the claim was "directed to" under step one (which should always consider the claim as a whole and, when properly applied, should not consider issues of novelty and obviousness), and instead appears to support the original Diehr holding that issues of what portions of a claim are "standard techniques" should play no role even under step two. This appears to contradict most decisions that have analyzed step two, including (arguably) Alice and Mayo.
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019) 2019-03-28 Ineligible Abstract IC Not Found Network-controlled electric vehicle charging stations The Federal Circuit upheld the trial court's decision to declare a patent to be ineligible under Section 101 in a Rule 12(b)(6) motion. In this case, the patent claimed a vehicle charging station with network communications to the server, which allowed the server to turn on and off the electricity flow at the charging station (such as in response to increased electrical demand in the power grid). The Federal Circuit agreed that the claims were directed to an abstract idea of a network-controlled charging station, noting that the specification did not describe how the functioning of the charging station is actually improved. Furthermore, the Court found no inventive concept under step two of Alice, indicating that the only non-conventional components in the claim related to the abstract idea itself.
University of Florida Research Foundation v. GE Company, 916 F. 3D 1363 (Fed. Cir. 2019) 2019-02-26 Ineligible Abstract IC Not Found Converting bedside-collected hospital data The claims at issue covered the conversion of data received from a medical monitoring machine into a "machine independent format," and then doing further analysis on that data. No methods of treatment were claimed. The court viewed the claim as one directed toward collecting, analyzing, manipulating, and displaying data. Since the basic process was previously performed using pen and paper, the court referred to this as a quintessential "do it on a computer" patent. The patent was found to be directed to an abstract idea, and rejected the idea that individual drivers for each machine to handle the conversion process improved the functioning of the computer. The drivers were described in the specification in purely functional terms.
Trading Technologies International v. IBG LLC, 921 F.3d 1084 (Fed. Cir. 2019) 2019-04-18 Ineligible Abstract IC Not Found Financial Trading Software The invention in this case helped a trader make an order when buying and selling items on a computer. The court found that the claims were directed to the abstract idea of graphing or displaying bids as part of the ordering process. The court was not persuaded that the claims were directed to an improved graphical user interface, finding that a "purportedly new arrangement of generic information" was not enough to improve the functioning of the computer in the manner of Core Wireless.
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019) 2019-06-25 Eligible Abstract IC Found Data transfer between devices Although the claims specifically recited physical, Bluetooth enabled devices, the court found the claims to be directed to an abstract idea of capturing and transmitting data between devices. However, the claim may involve an inventive concept under step two of Alice. The specification emphasizes the unconventional nature of separating the steps of capturing and publishing data so that each step is performed by different devices. The context of this case was an appeal of a dismissal under Rule 12. It is not necessary that the specification support the argument that the claimed element is unconventional, as the allegation of this unconventional feature in the complaint is sufficient to withstand a Rule 12 dismissal.
Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161 (Fed. Cir. 2019) 2019-07-30 Ineligible Abstract IC Not Found Physical Processing of Paper Checks The Federal Circuit found that a claim for processing paper checks was directed to an abstract idea under step one of Alice even though the steps involve the physical handling of the paper checks in "two 'different location[s]' via two paths." In spite of the physical nature of the steps, the claims were "at bottom, directed to getting the merchant's account credited from a customer's purchase as soon as possible, which is an abstract idea." Judge Chen selected an identified advantage or benefit specified in the specification as the claimed advance over the prior art.
Genetic Veterinary Sciences v. Laboklin GMBH & KG , 933 F.3d 1302 (Fed. Cir. 2019) 2019-08-09 Ineligible Natural Phenomenon IC Not Found Analyze gene sequence of dog The Federal Circuit found that the claims in this case for obtaining a biological sample from a dog and detecting the presence of a particular nucleotide at a particular sequence position of the gene was nothing more than "observing or identifying" the natural phenomenon of a mutation in the gene. Therefore the claim was directed to a natural phenomenon. Furthermore, since the techniques used to obtain and analyze the sample were routine, there was no inventive concept in the claims.
MyMail, Ltd. v. OOVOO, LLC, 934 F.3d 1373 (Fed. Cir. 2019) 2019-08-16 Updating toolbar interface The Federal Circuit held that the decision of the trial court to rule on the eligiblity of a patent under Rule 12 without first addressing a relevant claim construction dispute was an error under Aatrix. Furthermore, the majority court refused to analyze the Section 101 issue based on its own claim construction in the first instance. The court therefore remanded for further proceedings.
In dissent, Judge Lourie argued that the claim should have been rejected outright as being directed to an abstract idea for the analysis, transmission, and display of information. The element that is subject to the claim construction issue was, according to Lourie, was both unclaimed and could not form an inventive concept.
Chamberlain Group, Inc. v. Techtronic Industries Co., 935 F.3d 1341 (Fed. Cir. 2019) 2019-08-21 Ineligible Abstract IC Not Found Wireless status communication from garage door The court considered a claim to a garage door opener (a "movable barrier") that transmitted its state information wirelessly. Since wired systems that functioned similarly were prior art, the claim was found to be directed to the abstract idea of wirelessly communicating status information about a system. The court (Judge Chen) appears to be determining the character of the invention by determining a point of novelty between the claim and the prior art. The claim was also not saved by tying the abstract idea of a wireless status communication to physical claim elements, as this was merely a field of use limitation. The court also clarified that the step two ordered combination analysis does not determine whether the ordered combination was new or obvious, but rather, after determining whether each step is conventional, does the ordered combination add anything "that was not already present when the steps are considered separately." Here, the wireless communication cannot create the inventive concept because "it is the abstract idea that the claims are directed to."
Koninklijke KPN NV v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019) 2019-11-15 Eligible Not Abstract IC Not evaluated Error Checking in Data Claims relating to error checking in data transmission are not directed to an abstract idea because they recite a "specific implementation of varying the way check data is generated that improves the ability of prior art error detection systems to detect systematic errors." As such, this is a non-abstract improvement to computer technology. The court rejected the argument that the claim was inherently abstract because the claim did not recite a specific step that actually used the generated data to perform error detection (in other words, the claim seems to stop with the mathematical process steps). The court felt that improving the functionality of one tool in an existing system (the overall error checking system) was sufficient, relying primarily on the recitation in the claims of a "sufficiently specific implementation" of the process. This claim is not limited to a recited goal, but recites a specific process to obtain the goal, and therefore is not abstract.
Customedia Technologies, LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020) 2020-03-06 Ineligible Abstract IC Not Found Delivery of advertisements Although the claims required that some computer memory be dedicated to the storage of advertising, the court rejected the argument that this improved the functioning of the computer under step one of Alice. This step merely improved the abstract ideal of delivering targeted advertising to users. The patent was therefore invalid for being directed to an abstract idea.
Ericsson Inc. v. TCL Communication Technology Holdings, 955 F.3d 1317 (Fed. Cir. 2020) 2020-04-14 Ineligible Abstract IC Not Found Granting access to software services The court found that claims directed to granting software access to particular services was ineligible for being directed to the abstract idea of controlling access to resources. Furthermore, the court rejected the patent owner's argument under step two of Alice because the alleged inventive concept was not specifically identified in the claims. In dissent, Judge Newman argues that even if the basic concept of controlling access to resources (such as controlling access to books in a library) is abstract, not every software implemented technique for controlling access in a technological environment is automatically abstract. The dissent would hold the claimed invention as one necessarily rooted in computer technology, and would have found the patent eligible for patent protection under step one.
Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, 955 F.3d 971 (Fed. Cir. 2020) 2020-04-10 Ineligible Abstract IC Found Detecting fraud in financial transaction The Federal Circuit held that financial transaction software for detecting fraud was directed to the abstract idea of collecting and analyzing data/information to detect fraud or errors. The fact that physical steps were involved in the method would not save the method from being abstract. Furthermore, there was no inventive step under step two of Alice in any of the individual method steps or in their ordered combination.
Electronic Communication Technologies, LLC v. Shopperschoice.com, 958 F.3d 1178 (Fed. Cir. 2020) 2020-05-14 Ineligible Abstract IC Not Found Advance notification of delivery The Federal Circuit found software ineligible for patent protection that was directed to the abstract idea of providing advance notification of a delivery. Similar to the situations in Alice and Bilski, the analyzed claims related to a longstanding commercial practice and therefore do not pass step one of Alice. The claims also failed step two, as the claim language was specified at a high level of generality, in functional terms, and merely invokes routine and conventional steps.
Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020) 2020-07-14 Eligible Not Abstract IC Not evaluated Identify disjointed network connection flow The court found that software which identified "disjointed connection flows" in a computer network was directed toward an improvement to computer technology and not mere use of a computer as a tool to implement an abstract concept. Like Finjan, Enfish, and SRI, the claims were not directed to an abstract idea and therefore were eligible under Section 101.
American Axle & Manufacturing Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) 2019-10-03 Ineligible Natural Phenomenon IC Not Found Method for creating a reduced vibration drive shaft Arguably, this panel decision holds that if a claim is to be eligible under Section 101, it must "go beyond stating a functional result; it must identify "how" that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim." Here, the Federal Circuit has found that a method for manufacturing a shaft assembly of a driveline is ineligible for patent protection because it is directed to a natural phenomenon. The claimed invention relates to an attenuation liner within a hollow drive shaft. While this is a known technique, it has only be used to attenuate a single type of vibration. Three types of vibration are known, and the claimed method includes tuning the attenuation liner to at least two types of vibration. Tuning is accomplished according to Hooke's law, and the claims only claimed the desired result, not a specific technique for obtaining that result.
In a dissenting opinion, Judge Moore argues that this decision creates a new test for Section 101 eligibility that goes beyond Supreme Court precedence. Judge Moore would find the claims eligible under both step one and step two of Alice, and argues that this new test is effectively "enablement on steriod" and argues that Section 101 now "can do everything Section 112 does and then some."
Illumina, Inc. v. Ariosa Diagnostics, Inc., 967 F.3d 1319 (Fed. Cir. 2020) 2020-08-03 Eligible Not Natural Phenomenon IC Not evaluated Separating fetal DNA from maternal DNA The Federal Circuit found that the patent at issue claimed the exploitation of a discovered natural phenomenon and therefore was eligible under Section 101. The majority clarified that this case was neither a diagnostic case nor a treatment case, but a "method of preparation case." The natural phenomenon was that "cell-free fetal DNA tends to be shorter than cell-free maternal DNA in a mother's bloodstream." An analysis of the claims indicated that this natural phenomenon was not being directly claimed, but rather they claimed only a new process that exploited the discovery of this phenomenon. The claims included physical process steps that changed the composition of the mixture, resulting in a DNA fraction that was different from the naturally occurring fraction in the mother's blood.
Judge Reyna wrote a dissenting opinion, arguing that the claims were ineligible as being directed toward a natural phenomenon. Reyna argues that the claimed advance was the surprising discovery that cff-DNA is shorter than cell-free maternal DNA. Like Athena and Cleveland Clinic, the claimed advance found in these claims is this discovery of a natural phenomenon, which is not patent eligible.
XY, LLC v. Trans Ova Genetics, LC, 968 F.3d 1323 (Fed. Cir. 2020) 2020-07-31 Eligible Not Abstract IC Not evaluated Improved lab technique for sorting particles The Federal Circuit reversed the trial court in this case, and found that an improved laboratory technique for detecting, classifying, and sorting particles was patent eligible. While the technique utilized a mathematical equation that permits the "rotating" data, this mathematics was implemented as part of a physical process of the type that the patent laws were designed to protect.
CardioNet, LLC v. InfoBionic, Inc., Fed. Cir. 2020 2020-04-17 Eligible Not Abstract IC Not evaluated Cardiac monitoring device After the trial judge determination on a rule 12(b)(6) motion that a medical device patent was ineligible for being directed to an abstract idea, the Federal Circuit reversed. The invention related to a cardiac monitoring device that analyzed beat-to-beat timings to distinguish atrial fibrillation and flutter from other types of arrhythmias. When the claims were read as a whole, they were directed to a medical device that improves the functionality of cardiac monitoring technology. The court rejected the trial court's conclusion that the device merely automated diagnostic processes that doctors have long used, or that the claims involved mere data manipulation steps. This rejection was done while remembering that all facts must be constructed in favor of the patent owner in this context. The majority also clarified that an analysis of the prior art does not form part of step one of Alice.
Judge Dyk wrote a partially dissenting opinion, arguing that the Section 101 issue was properly determined but that the court went beyond the arguments presented to hold that step one does not require an analysis of the prior art.
TecSEC, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020) 2020-10-23 Eligible Not Abstract IC Not evaluated Encryption method that improve network security The Federal Circuit agreed with the trial court's holding that a software patent was eligible under Section 101. In reaching this conclusion, the Federal Circuit emphasized the importance of determining the character of the claimed advance over the prior art. The defendant over-generalized the claim and did not consider the claim as a whole. Properly analyzed, the claims improved computer network security though a specifically identified solution.
Uniloc USA, Inc. v. LG Electronics USA, Inc., 2020-04-30 Eligible Not Abstract IC Not evaluated The court found a claim to a "primary station for use in a communication station" to be patent eligible. The claim was considered an improvement to computer functionality in the reduction of latency experienced by parked secondary stations in communication systems.
Athena Diagnostics, Inc. V. Mayo Collaborative Services, LLC, 927 F.3d 1333 (Fed. Cir. 2019) 2019-07-03 Ineligible Natural Phenomenon IC Not Found This is a denial of a request for rehearing in the main Athena case. The question that troubled most of the members of the Federal Circuit in this decision is whether the Supreme Court's holding in Mayo required that all diagnostic inventions be found ineligible for patent protection.
The numerous detailed dissents and concurring options all called out for clarity from the Supreme Court. Unfortunately (and somewhat surprisingly), the Supreme Court denied cert on the appeal of this case in January of 2020.
Gottschalk V. Benson, 409 U.S. 63 (1972) 1972-11-20 Ineligible Abstract Conversion to binary-coded decimal number In this case, the Supreme Court struggled with whether an algorithm to convert binary- coded decimal numbers into true binary numbers was considered patentable. The Court felt that a patent on this concept would pre-empt the entire mathematical algorithm. Since mathematics could be considered an abstract idea, and abstract ideas are not patentable, the Supreme Court held that the algorithm in question is not patentable.
Funk Bros. Seed Co. v. Kalo Co., 333 US 127 (1948) 1948-02-16 Ineligible Natural Phenomenon IC Not Found Inoculant for leguminous plants This case involves bacteria that form nodules on the roots of leguminous plants to allow the plants to fix nitrogen from the air. Before the invention by Mr. Bond, the species were considered mutually inhibited, so the bacteria were generally sold and distributed in inoculants of a single species. Mr. Bond’s invention was to identify particular strains of each bacteria that were not mutually inhibitive with each other. The Supreme Court held this patent invalid because the invention was considered trivial once the existence of the species was discovered that were not mutually inhibitive. The Court first affirmed that the inhibiting qualities of the bacteria were phenomena of nature and therefore unpatentable subject matter. Next, the Court looked to whether the claimed application of this phenomenon was inventive, or simply required standard skill in the art. Since there was no invention in the application of the discovered phenomenon, the invention was to unpatentable subject matter.
Parker v. Flook, 437 U.S. 584 (1978) 1978-06-22 Ineligible Method For Updating Alarm Limits Here, the Supreme Court examined whether a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was unpatentable. The only difference between the prior art and the invention was the algorithm that calculated the new alarm limit. The Court held that this was not patentable even though an additional step was included in the claim beyond merely the calculation step. The Court explicitly rejected the notion that "post-solution activity [alone]... can transform an unpatentable principle into a patentable process." Specifically, the court held that the invention could not be patented "not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."
Diamond v. Diehr, 450 U. S. 175 (1981) 1981-03-03 Eligible Not Abstract In this 1981 case, the U.S. Supreme Court ordered the P.T.O. to grant a patent on an invention even though computer software was utilized. The invention in this case relates to a method for determining how rubber should be heated in order to be best "cured." The invention utilizes a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer.
Simio, LLC v. FlexSim Software Products, Inc., 983 F.3d 1353 (Fed. Cir. 2020) 2020-12-29 Ineligible Abstract IC Not Found Graphical object simulation This case considered the eligibility of a simulation invention, where the simulation takes place using “objects” of the type defined by object-oriented programming. The invention related to the use of a graphical user interface (GUI) that allow the modification of an object using the GUI without requiring any programming knowledge from the user. The court focused in on what the patent itself claimed to be its key advance over the prior art. The court examined the specification, and found five specific instances that described the key advance over the prior art to be the use of a graphical interface instead of programming to created object-oriented simulations. But the specification itself also acknowledged that the use of graphical processes to simplify simulations had been done since the 1980s. The court concluded that the claims were "directed to the use of conventional ... technology in a ... well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” The patent owner argued that a specific claim limitation identified a new technology not found in the prior art, but the court declined to change its understanding of the character of the claim because the specification provided little discussion on the importance or functionality of this limitation.
cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F. 3c 1367 (Fed. Cir. 2021) 2021-02-08 Ineligible Abstract IC Not Found Purchases using loyalty program points The claimed invention in this case related to a system that interfaces between a loyalty program graphical user interface (GUI) and a vendor system that sells products or services. These products or services can then be purchased for loyalty points through the GUI. The invention related to the conversion of information between the vendor system and the GUI to allow for automated interactions that appear to the end-user to be point-based purchases, when actually the purchases are being made using a hidden cash-based account. The Federal Circuit agreed with the PTAB's CBM decision that the claims were directed to the abstract idea of using one form a value with a purchaser and another form of value with a vendor. The concept of hiding the cash-based account from the end user cannot create an inventive concept under step two of the Alice test because this concept merely forms part of the abstract idea.
In re: Board of Trustees of the Leland Stanford Junior University, 989 F.3d 1367 (Fed. Cir. 2021) 2021-03-11 Ineligible Abstract IC Not Found Data analysis to determine haplotype phase Stanford had created an improved method for determining Alleles' haplotype phase. This is information that helps determine from which parent a person inherited different versions of a gene. This determination leads to an improved ability to tailor medical care and health surveillance. However, the claims were written effectively as a means for receiving and analyzing data and then providing a calculated result from that data. The Federal Circuit followed a relatively long line of cases in determining that such an analysis of data is directed to an abstract idea of mathematical calculations. The court rejected an argument that creating more accurate predictions of haplotype constitutes a technological advance because this is just an improvement to a mathematically calculated statistical prediction. Furthermore, there is not inventive concept as the claim does not discuss any practical application of the mathematical algorithm other than providing the result in response to a request.
In re: Board of Trustees of the Leland Stanford Junior University, 991 F.3d 1245 (Fed. Cir. 2021) 2021-03-25 Ineligible Abstract IC Not Found Data analysis to determine haplotype phase As in Stanford I of March 11, 2021, this case involves an improved method for determining Alleles' haplotype phase. This is information that helps determine from which parent a person inherited different versions of a gene. This determination leads to an improved ability to tailor medical care and health surveillance. However, the claims were written effectively as a means for receiving and analyzing data and then providing a calculated result from that data. The Federal Circuit followed a relatively long line of cases in determining that such an analysis of data is directed to an abstract idea of mathematical calculations. The court rejected an argument that creating more accurate predictions of haplotype constitutes a technological advance because this is just an improvement to a mathematically calculated statistical prediction. Furthermore, there is not inventive concept as the claim does not discuss any practical application of the mathematical algorithm other than providing the result in response to a request.
Free Stream Media Corp. v. Alphonso Inc., (Fed Cir. 2021) 2021-05-11 Ineligible Abstract IC Not Found Advertising distribution in sandbox environment The inventors of this advertising distribution system argued that their patent claim was patent eligible because it overcame a technical issue in communicating between devices by overcoming the standard, security constraints of a sandboxed application. However, the claims did not specify how that result is achieved, but merely provided the context for that result. Although techniques were described in the specification, the court found that the "asserted claims do not incorporate any such methods." Thus, after finding that the asserted claims “do not at all describe how [the desired] result is achieved,” the claim was found to be directed to the abstract idea of targeted advertising.
Yu v. Apple Inc., (Fed. Cir., June 11, 2021) 2021-06-11 Ineligible Abstract IC Not Found Using two image sensors to improve image The invalidated patent in this case was an apparatus claim to a physical camera. The claim required the presence of two separate image sensors that were positioned on a common plane. Digital images could then be taken from each sensor, with one of the images being used to enhance the second image. The claim did not provide any explanation as to the type of enhancement or the process for creating the enhancement. The majority opinion found that the claim was directed to the abstract idea of using multiple pictures to enhance each other, and this idea has been known by photographers for over a century. Although the claim related to a specific configuration of the camera, the majority found that the individual components were well-known and conventional, and that they serve only their basic functions. In the words of the court, the claim elements identifying the camera, the image sensors, and the lenses were “simply a generic environment in which to carry out the abstract idea.” The dissent argued simply that “[t]his camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” In the dissent’s view, the question of whether the components of a new device are well-known and convention should impact only novelty and obviousness, not Section 101 eligibility.
PersonalWeb Technologies LLC v. Google LLC, 8 F.4th 1310 (Fed. Cir. 2021) 2021-08-12 Ineligible Abstract IC Not Found Use of hash as file identifier for data management The patents at issue all related to i) the automatic generation of a content-dependent identifier for an item of data (such as through a hash value), ii) comparing this identifier to something else, and iii) then using that comparison for data management. The Federal Circuit concluded the claim was directed to an abstract idea because each of these three elements were abstract. The generation of a content-dependent identifier was compared to the pen-and-paper analogy of a library indexing system based on an item's content. The comparing step is a mental process of data acquisition and analysis. The third data management step was also compared to activities that could be done by a human using pen and paper, such as in a library. In examining step two of Alice, the court found that the use of cryptographic hashes as part of this function was just a restatement of the abstract idea. This was true even though the hash function allowed verification of retrieved data by only examining the identifier (as the hash function that created the identifier accomplishes the verification) and even though the hash function ensured that at most one copy of a data item was stored. These improvements simply formed part of the abstract idea of the claim, and therefore could not constitute an inventive concept.
Universal Secure Registry LLC v. Apple Inc., (Fed. Cir. 2021) 2021-08-26 Ineligible Abstract IC Not Found One-time purchase code instead of credit card number The Federal Circuit held that a patent was directed to an abstract idea when it allowed a purchaser to use a one-time code instead of a credit card number to complete a transaction. The court rejected the patent owner's argument that the use of a time-varying multicharacter code was a specific technique to solve a computer-specific problem. The Court found the generation of a single use code was known and abstract. The court also found that there was no inventive concept, because the time- varying code generator was known, and because the addition of an intermediary to review the code was similar to the intermediary in the Alice decision, which the Supreme Court has determined was abstract and therefore it could not constitute an inventive concept.
American Axle & Manufacturing Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020) (Denial of Rehearing En Banc) 2020-07-31 Ineligible Natural Phenomenon IC Not Found Method for creating a reduced vibration drive shaft The Federal Circuit denied rehearing en banc of the panel decision in American Axle. Relying mostly on the 1853 case of O'Reilly v. Morse, the concurring opinions believe that American Axle's claim is ineligible because it merely states a result without providing specific detail as to the "how"—the means for achieving that result. While more recent cases are cited for being consistent with that rule, it is O'Reilly that most clearly sets for the reason for the claim to be ineligible for patent protection. The decision is consistent with Mayo and Alice as the decision effectively rules that the claim is to "nothing more" than a natural law.
Chen's concurrence specifically gives guidance to patent practitioners: "The lesson to patent drafters should now be clear: while not all functional claiming is the same, simply reciting a functional result at the point of novelty poses serious risks under section 101."
The dissenters argue that the majority and concurring opinions develop a new O'Reilly test for eligiblity that applies to claims that identify a natural law and "nothing more" to accomplish a desired result, and this test was created without briefing, argument, or without a consideration of whether relevant facts need to be established at the trial level.
O'Reilly v. Morse, 56 US 62 (S. Ct. 1853) 1853-01-01 Ineligible Telegraph inventions While other claims of Samuel Morse for his telegraph invention were affirmed as valid, the Supreme Court decided that a claim that covered the use of "electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances" was ineligible for patent protection. Many scholars have argued that the case stands for the fact that this invention was not described sufficiently so as to cover all means of transmitting characters using electro-magnetism. Others have stated that this was a subject matter eligibility case in the nature of Mayo and Alice.
Bot M8 LLC v. Sony Corporation of America, 4 F.4th 1342 (Fed. Cir. 2021) 2021-07-13 Ineligible Abstract IC Not Found Gaming System with Varying Difficulty The claims relates to gaming systems where a game's "conditions" (which determine difficulty) are based upon a specification value. The specification value can then change based upon the prior game results of a plurality of players. The trial court found the claim ineligible for being directed to the abstract idea of changing the difficulty of a multi-player game base upon previous aggregate results. The trial judge found that the patent claim defined a desired result, but the patent provided no explanation on how to accomplish the result. There was no inventive concept, as only generic computer parts are involved to perform the conventional computer tasks of gathering, manipulating, transmitting, and using data. The Federal Circuit simply agreed with the logic of the trial court, and held that the claim recites "result-oriented uses of conventional computer devices" and failed to articulate a technological problem that was solved by the patent.
CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, 15 F.4th 1091 (Fed. Cir. 2021) 2021-10-04 Eligible Abstract IC Found Authenticating users at a terminal The court found that claims relating to a new authentication technique included a patent eligible inventive concept that reduced the complexity of authenticating a user. The court distinguished Universal Secure Registry (related to combining "conventional authentication techniques" to achieve only the expected result of such a combination), and instead found the case more similar to Ancora Technology (where verification methods that departed from earlier approaches were directed to a "non- abstract, computer-functionality improvement"). The court did not specifically find the claim to be directed to an abstract idea, determining that the abstract determination under step one was irrelevant because the claim was eligible under step two as it included an inventive concept. In the concurrence, Judge Reyna would find the claim eligible under step one, and finds skipping step one to be inappropriate.
International Business Machines Corporation v. Zillow Group, Inc., (No. 2021-2350, October 17, 2022) 2022-10-17 Ineligible Abstract IC Not Found User Interface for Mapping This case is an important development in understanding when user interfaces are eligible under Section 101. The Federal Circuit found that claims to a coordinated map display in a first patent, and claims for managing a display of items through layers in a second patent, were both ineligible under Section 101. The first patent covered a coordinated map display and a list of features display. User input can select a sub-area shape on the map display, which causes list elements within the selected area to be selected in the list display. The second patent related to grouping objects presented for displayed into sets, placing a set into a layer, and visually distinguishing the objects in a layer from the other objects. In both patents, the Federal Circuit found that the claims were directed to the abstract idea of organizing and displaying visual information. The application of the abstract idea to computer interfaces was conventional and did not arise to an inventive concept under step two. The dissent argued that some claims were clearly limited to a specific computerized implementation of the user interface, and therefore should be eligible under the Core Wireless decision.
CareDx, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022) 2022-07-18 Ineligible Natural Phenomenon IC Not Found Medical Diagnostic using cfDNA The Federal Circuit rejected claims for using a link between cfDNA in the body and the likelihood of organ transplant rejection. The patent owner did not inventor or discover this relationship, and the specification itself describes the techniques used as conventional. As such, the claims were indistinguishable from other diagnostic method claims and were directed to a natural phenomenon. The patent owner argued that the conventionality of the gathering steps should not be relevant to step one under Alice, as novelty/conventionality should only be relevant to step two. The Federal Circuit directly rejected this argument, finding that the Federal Circuit has "repeatedly analyzed conventionality at step one." This definitive statement seems to contradict the court’s earlier decisions in CardioNet, Ultramercial, and ChargePoint. With only conventional steps, there was also no inventive concept.
In re: Jeffrey A. Killian, (No. 2021-2113, August 23, 2022) 2022-08-23 Ineligible Abstract IC Not Found Identifying eligibility for SSDI benefits A patent for identifying individuals eligible for SSDI benefits was found to be ineligible under Section 101. The claims were directed to an abstract idea, namely mental steps. In this case, the mental steps were the collecting information, understanding that information, and determining eligibility. While the facts of the case fall squarely within prior precedents of the court, the opinion is interesting in the response given by the court to arguments that section 101 jurisprudence is indefinite, arbitrary, and capricious under the Due Process clause. While the court dismissed this argument, the court did generalize some of its prior jurisprudence. For example, Judge Chen identifies and discusses three types of abstract ideas: i) mental processes: methods of organizing human activity (including fundamental economic practices), ii) mental processes (including those performed on a computer but could be performed in the mind), and iii) claims to results rather than a means of achieving the result. These three types differ from the types identified in the current MPEP.
Weisner v. Google LLC, (No. 2021-2228, October 13, 2022) 2022-10-13 Eligible Abstract IC Found Recording physical movements and using data for electronic searches The patents at issue in this case relate to recording the physical movements of a user. Users can check into physical locations through manual or automatic means. In some of the patents, the resulting movement data can then be used to improve search results. The court held that the claims that did not improve search results were abstract, being directed to the creation of a digital travel log. As such, this invention is merely the automation of a process that humans have previously accomplished manually. As for step two, the specification and arguments conceded that only existing technology was used, and therefore there was no inventive concept. However, the court found that claims in a second set of patents, related to the improvement of search results, have not been shown to be ineligible at this (Rule 12(b)(6)) stage. The issue under step one for these patents was closer (and not fully analyzed), but the majority felt that the claims included an inventive concept under step two. In effect, the court held that the improvement of the prioritizing of search results can constitute an inventive concept under step two. In dissent, Judge Hughes argues that, since the abstract idea is using location history to improve search results, use of this abstract cannot be the inventive concept under step two.
Cooperative Entertainment, Inc. v. Kollective Technology, Inc., 2022-09-28 Eligible Abstract IC Found Peer-to-peer file sharing The court did not address step one because it found the claim contained an inventive concept under step two. In particular, the court found that the claim limitation requiring that multiple peer nodes consume the same content and are configured to communicate outside of a content distribution network (CDN) was an inventive concept as a technical solution that improves the performance of a content delivery network. A second claim limitation relating to segmenting content using trace routes also identified an inventive concept related to a specific technique for improving computer network functioning.

Static Index

The following cases are presented by Bitlaw concerning Section 101. These cases are divided into the following sections:

Historical Cases through the 1980s

Mackay Radio & Telegraph Co. v. Radio Corp. of America (S. Ct. 1939)
In this case, a Mr. Carter had obtained a patent on a directional antenna system. This antenna was different from previous antennas solely in the fact that the arrangement of the wires was determined by the application of a mathematical formula that had been known for 30 years prior to the filing of the patent application. The case is relevant in this area for the following dicta: “[w]hile a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”
Funk Bros. Seed Co. v. Kalo Co. (S. Ct. 1948)
This case involves bacteria that form nodules on the roots of leguminous plants to allow the plants to fix nitrogen from the air. Before the invention by Mr. Bond, the species were considered mutually inhibited, so the bacteria were generally sold and distributed in inoculants of a single species. Mr. Bond’s invention was to identify particular strains of each bacteria that were not mutually inhibitive with each other. The Supreme Court held this patent invalid because the invention was considered trivial once the existence of the species was discovered that were not mutually inhibitive. The Court first affirmed that the inhibiting qualities of the bacteria were phenomena of nature and therefore unpatentable subject matter. Next, the Court looked to whether the claimed application of this phenomenon was inventive, or simply required standard skill in the art. Since there was no invention in the application of the discovered phenomenon, the invention was to unpatentable subject matter.
Gottschalk v. Benson (S. Ct. 1972)
In this case, the Supreme Court struggled with whether an algorithm to convert binary-coded decimal numbers into true binary numbers was considered patentable. The Court felt that a patent on this concept would pre-empt the entire mathematical algorithm. Since mathematics could be considered an abstract idea, and abstract ideas are not patentable, the Supreme Court held that the algorithm in question is not patentable.
Parker v. Flook (S. Ct. 1978)
Here, the Supreme Court examined whether a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was unpatentable. The only difference between the prior art and the invention was the algorithm that calculated the new alarm limit. The Court held that this was not patentable even though an additional step was included in the claim beyond merely the calculation step. The Court explicitly rejected the notion that "post-solution activity [alone]... can transform an unpatentable principle into a patentable process." Specifically, the court held that the invention could not be patented "not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."
Diamond v. Chakrabarty, 447 US 303 (1980
The invention in this case was to a new bacterium with markedly different characteristics from any found in nature. Because this bacterium was not a previously unknown natural phenomenon, but rather a nonnaturally occurring manufacture or composition of matter, the Supreme Court found that the invention qualifies as patentable subject matter. The Supreme Court emphasized that here, the invention was not nature's handiwork, but the handiwork of the inventor. The four Justice dissent argues that Congressional intent was that the Patent Act doesn't cover living organisms, which is made clear by acknowledging that Congress felt it needed new legislation to cover plants when it created plant patents.
Diamond v. Diehr (S. Ct. 1981)
In this 1981 case, the U.S. Supreme Court ordered the P.T.O. to grant a patent on an invention even though computer software was utilized. The invention in this case relates to a method for determining how rubber should be heated in order to be best "cured." The invention utilizes a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer.

State Street Bank Through Bilski

State Street Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 1998)
In this case, the Federal Circuit determined that software programs that transform data are patentable subject matter under Section 101 of the Patent Act even when there is no physical transformation of an article. The court emphasized that software or other processes that yield a useful, concrete and tangible result should be considered patentable. The court also "laid to rest" the business method exception. This means that while prior courts considered business methods inventions to be unpatentable, the State Street court found that these inventions are as patentable as any other inventions.
In re Bilski (Fed. Cir. 2008)
The analysis in this case was reviewed and refined by the Supreme Court's Bilski decision. This case analyzed the patentability of processes where the process steps are not not necessarily performed on a computer. The majority decision has set forth a single test for determining the patentability of processes. This test holds that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This machine-or-transformation test applies to process claims, but it is not clear whether the decision should alter the analysis of apparatus claims (such as computer implemented software claims).
Bilski v. Kappos (S. Ct. 2010)
The Supreme court rejected the Federal Circuit's holding in In re Bilski that the machine-or-transformation test is the sole test to determine whether a particular process constitutes patent-eligible subject mater. Instead the test should be viewed as "a clue" to this analysis. The majority decided that the Bilski invention was not patent-eligible subject matter because it was an attempt to preempt an abstract idea. In particular, the claims related to the basic concept of hedging, which the Supreme Court agreed was a "fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class." It is not clear from this decision what test or analysis should be used going forward to analyze whether a particular process is merely an abstract idea or not.
Research Corp. Technologies v. Microsoft Corp. (Fed. Cir. 2010)
The Federal Circuit determined that a a method of halftoning gray scale images was statutory subject matter under Section 101. The Federal Circuit declined to define the term "abstract idea," and then found that it "perceives nothing abstract in the subject matter of the [claimed] processes."
Cybersource Corp. v. Retail Decisions, Inc. (Fed. Cir. 2011)
Federal Circuit opinion applies the Supreme Court's Bilski v. Kappos decision to determine the patentability of a method for detecting fraud in a credit card transaction over the Internet. The Federal Circuit determined that the method did not pass the machine-or-transformation test as the method was not tied to any machine, including a computer or even the Internet itself. The court held that the process was an unpatentable mental process, which it found to be a subcategory of unpatentable abstract idea, and affirmed the decision in Benson that "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas."
Ultramercial, LLC v. Hulu, LLC (Fed Circ. 2011)
This decision was overturned by the 2014 Ultramercial decision. The Federal Circuit found that a patent which covered method for monetizing and distributing copyrighted products over the Internet was patentable subject matter under Section 101 of the Patent Act. The Federal Circuit emphasized that the Supreme Court in Bilski v. Kappos found that the Machine-or-Transformation test was not dispositive, and "has far less application to the inventions of the Information Age." The court then emphasized that there is no good definition of abstractness in the Bilski  opinion, and that the Federal Circuit refused to create its own definition in its  Research Corp. v. Microsoft decision. The court then confirmed that even if a claim encompasses an abstract idea, the claim is still patentable if it is limited to an application of that idea.
Dealertrack, Inc. v. Huber (Fed. Cir. 2012)
The Federal Circuit found that a "computer aided" method of receiving and sending data between "terminal devices" and data "entry and display devices" (which were defined by the district court to be "any device, e.g., personal computer or dumb terminal") was unpatentable as an abstract idea. The court summarized the claim as covering the "processing [of] information through a clearinghouse." The court noted that patent did "not specify how the computer hardware and database are specially programmed to perform the steps claimed in the patent." The court found the claims covered the abstract idea of a clearinghouse process, and "[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."
Fort Properties, Inc. v. American Master Lease LLC (Fed. Circ. 2012)
The Federal Circuit found that a patent related to claims in this case relate to a real estate business technique designed to produce certain tax saving to be unpatentable as an impermissible attempt to patent an abstract idea. Some of the claims were not tied to any computer system, but instead included steps of aggregating real estate into a portfolio, encumbering the property with an agreement, and "creating deedshares." Other claims only added a computer in the context of "using a computer to generate a plurality of deedshares." The Federal Circuit found that any ties in the patent claim to the real world were insufficient to allow this abstract concept to be patentable. The court noted that the invention in Bilski was also tied to the real world through commodities and money. Abstract concepts such as those disclosed in the present patent and in the Bilski patent cannot be transformed into patentable subject matter merely because of limited connections to the physical world such as written contract, deeds, or real property.

Mayo, Myriad, Alice Corp. (please see the above table for recent Federal Circuit Cases)

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.CT. 1289 (2012)
In this unanimous 2012 decision, the U.S. Supreme Court determined that a medical testing patent was unpatentable as nonstatutory subject matter under Section 101 of the Patent Act. The Court then recited the well-settled rule that laws of nature, like natural phenomena and abstract ideas, are not patentable. Nonetheless, the Court acknowledged that while laws of nature are not patentable, claims that contain a law of nature can be patentable as long as the claim applies the law of nature. The court was guided by two principles: that it is important that the claim does not preempt the entire use of the natural law, and that the additional elements added to the claim beyond the natural law must be significant in that they cannot merely involve steps that are well-understood, routine, and conventional. In this case, the Court found that the claim preempted the law of nature.
Association for Molecular Pathology v. Myriad Genetics, Inc., 132 S.Ct. 1794 (2013)
The Supreme Court analyzed the patentability of gene sequencing inventions under Section 101. The court found that isolating naturally occurring gene fragments did not result in the invention of anything that was not found in nature. This is true even though "isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule." Thus, these gene fragments were not patent eligible under section 101. In contrast, the creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. As a result, the cDNA sequence molecule was patent eligible subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. CT. 2347 (2014)
Relying on its Mayo v. Prometheus and Bilski v. Kappos decisions, the Supreme Court unanimously decided that the claims in this case were unpatentable under Section 101. The Court set forth a two-part test for analyzing whether or not a claim is unpatentable for claiming an abstract idea. First, it is necessary to determine whether or not the claim is "directed to" an abstract idea. While every claim may be considered to relate in some manner to an abstract concept, this decision appears to indicate that many such claims are not "directed to" an abstract idea, at least not to an "abstract idea" as the Court has used that term. Second, it is necessary to determine whether or not the claim contains an "inventive concept" outside the abstract idea, with the term "inventive concept" defined to mean "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.'"