|June 24, 2014|
Previously published on June 2014
The Supreme Court has tried to quiet the debate on what is patent eligible. They have now recognized that fundamental economic practices are not patent eligible if they are merely implemented on a computer without additional features as well as that computers are ubiquitous now so wholly generic computer implementation is not generally an additional feature.
On June 19, the Supreme Court issued a decision regarding patent eligibility under 35 U.S.C. §101, Alice Corp. Pty. Ltd. v. CLS Bank Intern., (13-298). The Justices, unanimously affirming the split en banc decision from the Federal Circuit holding that all claims of the patent at issue are directed at ineligible subject matter, held that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. The Court’s holding does not change any standards but clearly resolves the diverse opinions of the Federal Circuit judges.
The Court’s analysis relied on the two-step framework it set forth in Mayo Collaborative v. Prometheus Labs., 566 U.S. 10 (2012). First, the Court determined that the claims at issue are directed to an abstract idea. In doing so, the Court stated that Alice’s claims directed at intermediated settlement are no different than the claims in Bilski v. Kappos, 561 U.S. 593 (2010) directed at hedging against financial risk in that they are directed at a fundamental economic practice long prevalent in our system of commerce, and thus an abstract idea beyond the scope of §101.
In the second step of its analysis, the Court concluded that the method claims fail to transform the abstract idea into a patent-eligible invention by merely requiring generic computer implementation. That is, the introduction of a computer into the claims does not alter the analysis that the elements of the claim do not contain an inventive concept. In light of its precedents, the Court concluded that wholly generic computer implementation is not an additional feature and is merely a drafting effort designed to monopolize the abstract idea itself.
The Court’s analysis of the second Mayo step was additionally applied to the system and medium claims, both found to be ineligible subject matter because the recited hardware is purely functional and generic. The Court found that, analogous to the method claims, the system and medium claims merely recite a handful of generic computer components configured to implement the same abstract idea.
This decision will impact certain patent claims—including method, computer readable medium, apparatus, and system claims—that recite a computer as merely a token part of the invention. That is, only claiming an abstract idea and saying “apply it on a computer” is not enough to impart patent eligibility to otherwise ineligible subject matter. Something more, such as improving the functioning of the computer itself or an improvement in another technical field, would appear to satisfy §101.