Patent-Eligible Subject Matter (Sec. 101)

Patent-Eligible Subject Matter (Sec. 101)

• BASICS: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Sec. 101 “challenges constitute validity and patentability challenges.” Versata II (Fed. Cir. 07/09/15) (PTAB may cancel claims in CBM under Sec. 101). “The Court has long held that this provision contains an important implicit exception. ‘[L]aws of nature, natural phenomena, and abstract ideas’ are not patentable.” Mayo (U.S. 03/20/2012) (unanimous); Alice Corp. (U.S. 06/19/2014) (Thomas, J.) (unanimous). This exclusion includes mathematical formulas and algorithms, Bilski v. Kappos (U.S. 06/28/2010), and mental processes, Benson (U.S. 11/20/1972) (method “can be done mentally”). The abstract-ideas category is not confined to “preexisting, fundamental truth[s]” that “‘exis[t] in principle apart from any human action.’” Alice Corp. (U.S. 06/19/2014) (claims directed to “the abstract idea of intermediated settlement,” a fundamental economic practice). But see DDR Holdings (Fed. Cir. 12/05/14) (Chen, J.) (Mayer, J., Dissenting Op.) (2-1) (aff’g rejection of Sec. 101 invalidity defense, distinguishing Alice, Ultramercial III, buySAFE, Accenture, Bancorp: claims do not “recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations”).
• Sec. 101 Ineligibility Is A Defense To Patent Infringement: The defenses under 35 U.S.C. § 282 include Sec. 101. Dealertrack (Fed. Cir. 01/20/12). This is not undermined by SCA Hygiene III (U.S. 03/21/2017). Univ. of Fla. Research (Fed. Cir. 02/26/19) (Sec. 101 is a condition for patentability).
• “Process” Is An Act Or Series Of Acts Transforming Something To A Different State: Cochrane (U.S. 1876) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and  state or thing.”); Diehr (U.S. 03/03/1981) (quoting Cochrane’s above definition with approval); Kaneka (Fed. Cir. 06/10/15) (“A process is defined as ‘an act, or a series of acts.’ Here, because the claims affirmatively recite the step of “oxidizing,” “oxidizing” cannot be interpreted as doing nothing, or to simply allow oxidation to occur on its own.”). But see Bilski v. Kappos (U.S. 06/28/2010) (referring to quote from Cochrane as dictum; “The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”). See SG Brief (05/24/22) (urging cert. grant in American Axle; “The long-settled patent law meaning of ‘process’ requires not merely a ‘result,’ but also ‘a mode of treatment’ or ‘series of acts’ that will ‘produce’ it. Diehr, 450 U.S. at 183 (citation omitted). Section 101 thus does not permit, for example, a claim for illuminating dark rooms by any efficacious means, or for doing so in any way that involves electricity. Such claims identify a goal to be achieved, but do not recite a ‘process’ for achieving it.”).
• Alice Changed The Federal Circuit Governing Law: Ultramercial III (Lourie, J.) (Mayer, J., Concurring Op.) (Fed. Cir. 11/14/14) (aff’g motion to dismiss for ineligibility, despite previously finding claims eligible both pre-Mayo and again post-Mayo but pre-Alice); see Inventor Holdings (Fed. Cir. 12/08/17) (aff’g award of $931,903.45 in post-Alice attorney fees: “Alice was a significant change in the law as applied to the facts of this particular case. Prior to Alice, the state of the law for computer-implemented business transaction inventions was less than clear, given this court’s divided en banc opinion.”); Mortgage Grader (Fed. Cir. 01/20/16) (Stark, J.) (citing about-face in Ultramercial III as demonstrating “that a § 101 defense previously lacking in merit may be meritorious after Alice.”) But see Voter Verified (Fed. Cir. 04/20/18) (Alice did not change the law compared to Mayo; it “was merely applying the same test as it set out in Mayo, and did not materially change it.”).
• Sec. 101 Exclusions Are General Legal Rules Applicable To All Fields: Mayo (U.S. 03/20/2012) (unanimous) (declining to adopt increased protection for discoveries of diagnostic laws of nature). But see DDR Holdings (Fed. Cir. 12/05/14) (2-1) (claims different than earlier cases “because they 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 claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”).
• Benson–Flook–Diehr Are Guideposts For Policing Abstractness Exclusion: Bilski v. Kappos (U.S. 06/28/2010) (decision of court joined by five Justices, two concurring opinions) endorsed the analysis and holdings in its Benson–Flook–Diehr. Accord Mayo (U.S. 03/20/2012) (unanimous) (relying primarily on these three precedents); CLS Bank (Fed. Cir. 05/10/13) (en banc (two opinions collectively joined by 9 of 10 judges refer to S. Ct. rulings as “guideposts”), aff’d, Alice Corp. (U.S. 06/19/2014); Fort Prop. (Fed. Cir. 02/27/12) (“Four seminal Supreme Court precedents provide guidance regarding when an invention qualifies as a patent-eligible process as opposed to an abstract idea.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (rejecting patent owner argument that claims eligible because claim technique designed for use on computer and different than how human would perform same action, because that was true also in Benson); Bancorp (Fed. Cir. 07/26/12) (“for purposes of § 101 there is no material difference between the claims invalidated in Bilski and those at issue here”). See In re Killian (Fed. Cir. 08/23/22) (“Examination of earlier cases ‘is the classic common law methodology for creating law when a single governing definitional context is not available.’ Indeed, the Supreme Court has decided cases arising under § 101 through comparison to its prior opinions.”); Realtime Data I (Fed. Cir. 10/23/20) (non-precedential) (vacating R. 12 dismissal ivo insufficient analysis by D. Ct., “assessments of patent eligibility are best done by reference to our numerous cases engaging in those assessments and gleaning insight from the resolutions”); see Realtime Data II (Fed. Cir. 08/02/23) (2-1) (non-precedential) (aff’g R. 12 dismissal based on opinion on remand; “none of the claims at issue specifies any particular technique to carry out the compression of data— the particular rules for producing a smaller set of data out of a larger starting set”).
• “What Type Of Discovery” Is Patented Or Sought To Be Patented?: The Sec. 101 inquiry asks “what type of discovery is sought to be patented? Flook (U.S. 06/22/1978) (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”) This argues in favor of treating it as a question of law for the Court akin to claim construction.
• “Article Of Manufacture” Includes Components Made By Hand Or Machine, Of Multi-Component Product: In design patent damages provision (35 U.S.C. § 289 (“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, ….”), “article of manufacture” has a “broad meaning” of “simply a thing made by hand or machine” and “broad enough to encompass both a product sold to a con­sumer as well as a component of that product,” and “this reading is also consistent with 35 U.S.C. § 101.” Samsung (U.S. 12/06/2016) (rev’g Fed. Cir. restriction of term to article sold separately; quoting: “‘Manufacture,’ … is ‘the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’” Am. Fruit Growers (U.S. 03/02/1931).)
• Claim Encompassing Both Eligible And Ineligible Subject Matter Is Ineligible: If “a claim covers ‘both statutory and non-statutory embodiments,’ it is not eligible for patenting.” Mentor Graphics (Fed. Cir. 03/16/17) (citing M.P.E.P.). Cf.  Yu (Fed. Cir. 06/11/21) (2-1) (while Spec. disclosed a four-lens, four-image-sensor configuration as distinguishing the prior art, the claims required only two lens and image sensor and were directed to the abstract idea of “taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way”).
• Claim May Recite Physical Components Of Physical Machine And Be Ineligible Under Abstractness Exclusion: For example, claim reciting “An improved digital camera comprising: a first and a second image sensor …; two lenses, each being mounted in front of one of said two image sensors; …; an analog-to-digital converting circuitry coupled to said first and said second image sensor …; an image memory, …; and a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image,” was ruled patent ineligible for being directed to abstract idea of “taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way”. Yu (Fed. Cir. 06/11/21) (2-1) (aff’g R. 12(b)(6) dismissal; claims’ enhanced image is created by conventional digital camera components performing their basic functions and recited at high degree of generality, and what Spec. identifies as advance over prior art is not required by the claims). See Am. Axle (Fed. Cir. 07/31/20) (2-1) (claims directed to “method for manufacturing a shaft assembly of a driveline system” patent ineligible); SG Brief (05/24/22) (urging cert. grant and clarification of both steps of the Mayo/Alice framework).
• Proper To Consider Only Representative Claims Where Others Are Substantially Similar: Where the claims “‘are substantially similar and linked to the same’ law of nature, analyzing representative claims is proper.” The Cleveland Clinic I (Fed. Cir. 06/16/17) (aff’g grant of motion to dismiss for invalidity under Sec. 101); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“Addressing each of the asserted claims is unnecessary when ‘all the claims are substantially similar and linked to the same abstract idea.’”); Content Extraction (Fed. Cir. 12/23/14) (aff’g that claim is “representative, because all the claims are ‘substantially similar and linked to the same abstract idea’”). But see Berkheimer (Fed. Cir. 02/08/18) (improper to consider claim 1 representative where patent owner argued that limitations in dependent claims provided an inventive concept, but here district court considered dependent claims also).
• Fed. Cir. Precedent Controls Even If USPTO Guidance Is To Contrary: “The Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis.” In re Rudy (Fed. Cir. 04/24/20) (aff’g ex parte rejection of claims). “Especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.” The Cleveland Clinic II (Fed. Cir. 04/01/19) (non-precedential) (aff’g Sec. 101 invalidity on R. 12(b)(6) motion despite USPTO guidance example on point, because guidance example contrary to Fed. Cir. precedent). See MPEP 2106 (USPTO guidance on section 101).
• AIA: “No patent may issue on a claim directed to or encompassing a human organism.” (Sec. 33) {Effective for any patent application filed or after 09/16/11}. Consider using “directed to or encompassing” language rather than just “directed to.” Cf. Mayo (U.S. 03/20/2012) (“The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern.”).
• TIPS: Abstractness Exclusion In A Nutshell:
  
• TIPS: Apt Lingo For Claiming An Abstraction:
  
• TIPS: What Claims Including An Abstract Idea Have Best Chance of Surviving An Abstractness Exclusion Challenge?:
  

a) Alice step one

• First Step Of Mayo/Alice Analysis: Claim Directed To Or Embody An Abstract Idea, Etc.?: First, is the claim “directed to” a patent-ineligible concept, i.e., laws of nature, natural phenomena, and abstract ideas? Alice Corp. (U.S. 06/19/2014); Mayo (U.S. 03/20/2012) (“The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern”); see SAP Am. (Fed. Cir. 08/02/18) (“The first stage of the Alice inquiry looks at the ‘focus’ of the claims, their ‘character as a whole’; and the second stage of the inquiry (where reached) looks more precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms, they identify an ‘inventive concept’ in the application of the ineligible matter to which (by assumption at stage two) the claim is directed.”); Ariosa Diagnostics (Fed. Cir. 12/02/15) (Lourie, J., Concurring Op. denial of en banc rehearing) (disagreeing with Mayo) (“Abstract steps are, axiomatically, the opposite of tangible steps; that which is not tangible is abstract.” “abstract ideas are essentially mental steps; they are not tangible even if they are written down or programmed into a physical machine.”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g invalidity judgment on pleadings; “there is [no] single, succinct, usable definition or test” of “abstract idea” so decisions take common law approach of comparing claims to those in earlier decisions); Realtime (Fed. Cir. 10/23/20) (non-precedential) (“Assessments of patent eligibility are best done by reference to our numerous cases engaging in those assessments and gleaning insight from the resolutions.”); but see Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (Reyna, J., dissenting in part) (“inventive concept” need not be tangible: “A software program is a digital machine. Like a physical machine, a digital machine is made of specific parts that interact with one another to achieve a specific result in a specific way.”) “Under step one of Mayo / Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents (Fed. Cir. 06/23/15).
• TIPS:
  
• “Abstract” Means Not A Particular (Concrete) Way (How) In Physical Realm: Courts have deemed non-physical limitations as “abstract” and deemed functions performed or results achieved without specification of a particular way (how) it is performed or achieved, as “abstract.” See e.g., SAP Am. (Fed. Cir. 08/02/18)  (distinguishing claims directed at abstract ideas from McRO claims, describing latter as being directed to advance in something “physical” and as having “concrete” specificity, and Thales claims directed at “improved physical things and actions”).
• Claim Is “Directed To” The “Asserted Improvement” In The Claim Over The Prior Art: Interval Licensing (Fed. Cir. 07/20/18) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement ‘rooted in computer technology.’”); Uniloc (Fed. Cir. 04/30/20) (rev’g R. 12(b)(6) dismissal; claims (whose advance over conventional system was “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station”) are “directed to a specific asserted improvement to the functionality of the communication system itself.”); McRO (Fed. Cir. 09/13/16) (rev’g invalidity judgment on the pleadings; the claim “is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.”); Enfish (Fed. Cir. 05/12/16) (“the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a too”).
• Claim Is “Directed To” The Claimed (Asserted) Advance Over The Prior Art: “We determine if the claim’s character as a whole is directed to ineligible subject matter by considering the claim limitations that are purported to describe the claimed advance over the prior art. We recognize the focus of the claims without characterizing the claims at too high of a level of generality, untethered from the claim language itself. Finally, we consider the claims in light of the specification but avoid importing concepts from the specification into the claims.” AI Visualize (Fed. Cir. 04/04/24) (aff’g R. 12(b)(6) 101 invalidity); Uniloc (Fed. Cir. 05/24/19) (rev’g dismissal of complaint on two of four patents; identifying “focus” of the claims based in part on Spec.’s description of the advance and on what led to allowance of the claims); Trading Techs. (IBG) II (Fed. Cir. (04/30/19) (aff’g PTAB CBM unpatentability, court’s step one analysis for focus of claims looks to difference between claims and prior art); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (evaluate “‘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.”); Solutran (Fed. Cir. 07/30/19) (rev’g denial of Summ. J. of Sec. 101 invalidity; “the only advance recited in the asserted claims” is an abstract idea); TecSec (Fed. Cir. 10/23/20) (aff’g claims not directed to abstract idea; rejecting proposed abstract idea of “managing access to objects using multiple levels of encryption,” where claim “expressly requires, as well, accessing an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as encryption for the access management,” and Spec. describes how these elements improve over prior art); Illumina (Fed. Cir. 08/03/20) (2-1) (reissued op.) (Reyna, J., dissenting) (arguing that court did not consider the claimed advance in determining what the claims were directed to).
• Claim Directed To Ineligible Subject Matter If “Focus” Is On It Or “Begins And Ends” With It: In determining whether a claim is “directed to” an abstract claim (or law of nature), courts consider if claim’s “focus” is on the abstract idea. Uniloc (Fed. Cir. 05/24/19) (rev’g dismissal of complaint on two of four patents; identifying “focus” of the claims based in part on Spec.’s description of the advance and on what led to allowance of the claims); Trading Techs. (IBG) II (Fed. Cir. (04/30/19) (aff’g PTAB CBM unpatentability, court’s step one analysis for focus of claims looks to difference between claims and prior art); ChargePoint (Fed. Cir. 03/28/19) (aff’g R. 12(b)(6) invalidity; “in some cases the ‘directed to’ inquiry may require claim construction”); (Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (evaluate “‘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.”); Elec. Power (Fed. Cir. 08/01/16) (“the claims are clearly focused on the combination of those abstract-idea processes …. They are therefore directed to an abstract idea.”); BSG Tech. (Fed. Cir. 08/15/18) (“a claim is not patent eligible merely because it applies an abstract idea in a narrow way. For an application of an abstract idea to satisfy step one, the claim’s focus must be something other than the abstract idea itself.”), or “begins and ends” with the abstract idea, Ariosa (Fed. Cir. 06/12/15) (“The method therefore begins and ends with a natural phenomenon. Thus, the claims are directed to matter that is naturally occurring.”).

• • Directed to Abstract Idea:
    

    Abstract Idea Decision	“Abstract Idea” To Which Claims Directed	Ruling
    Impact Engine (Fed. Cir. 07/03/24) (non-precedential) (Taranto, J.)	“a system for generating customized or tailored computer communications based on user information” “processing information—turning user-provided input into user-tailored output”	aff’g R. 12(c) and 56 15 claims
    Esignature (Fed. Cir. 07/03/24) (non-precedential) (Prost, J.)	“method to apply a signature digitally, in a designated place, within a secure electronic document”	aff’g R. 12(c) at least 5 claims
    Beteiro (Fed. Cir. 06/21/24) (Stark, J.)	“exchanging information concerning a bet and allowing or disallowing the bet based on where the user is located”	aff’g R. 12(b)(6) at least 4 claims
    Caselas (Fed. Cir. 05/28/24) (non-precedential) (Linn, J.)	“underwriting”	aff’g R. 12(b)(6) at least 5 claims
    AI Visualize (Fed. Cir. 04/04/24) (Reyna, J.)	“converting data and using computers to collect, manipulate, and display the data”	aff’g R. 12(b)(6) 41 claims
    Bhagat (Fed. Cir. 04/03/24) (non-precedential) (per curiam)	“meal planning”	aff’g R. 56 1 claim
    Bluebonnet (Fed. Cir. 03/29/24) (non-precedential) (Stark, J.)	“customizing a product according to a customer’s likes and dislikes, applied to the somewhat narrower context of computer-based media playlists.”	aff’g R. 12(c) at least 1 claim
    Rady (Fed. Cir. 03/27/24) (non-precedential) (per curiam)	“gathering and storing data about the unique imperfections of a physical object”	aff’g R. 12(b)(6) at least 1 claim
    Brumfield (Fed. Cir. 03/27/24) (Taranto, J.)	“receipt and display of certain market information (bids and offers) in a manner that newly helps users see the information for use in making trades”	aff’g Summ. J. at least 2 claims
    Savvy Dog (Fed. Cir. 03/21/24) (non-precedential) (Stoll, J.)	“displaying the game field before the player commits to play the game”	aff’g Summ. J. at least 1 claim
    Chewy (Fed. Cir. 03/05/24) (Moore, J.)	“identifying advertisements based on search results”	aff’g Summ. J. 4 claims
    In re Zimmerman (Fed. Cir. 02/09/24) (non-precedential) (per curiam)	“matching combinations of financial instruments through steps of receiving data, storing data, processing data, and executing trades”	aff’g ex parte rejection 73 claims
    Eolas (Fed. Cir. 02/01/24) (non-precedential) (Stoll, J.)	“interacting with data objects on the World Wide Web”	aff’g Summ. J. 6 claims
    Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (Dyk, J.)	“changing the position of components in an image to create the appearance of movement, i.e., animation”	aff’g R. 12(b)(6) at least 5 claims
    Int’l Business Machines (Fed. Cir. 01/09/24) (non-precedential) (2-1) (Hughes, J.)	“[i]dentify[], analyz[e], and present[] certain data to a user” “displaying and organizing information”	aff’g R. 12(b)(6) at least 3 claims
    In re Elbaum (Fed. Cir. 12/20/23) (non-precedential) (per curiam)	“managing commercial and legal interactions”	aff’g ex parte rejection 14 claims
    In re Salwan II (Fed. Cir. 09/14/23) (non-precedential) (per curiam)	“receiving and storing patient information”	aff’g ex parte rejection at least 1 claim
    USC IP (Fed. Cir. 08/30/23) (non-precedential) (Newman, J.)	“collecting and using intent data”	aff’g Summ. J. 17 claims
    Ficep (Fed. Cir. 08/21/23) (non-precedential) (Chen, J.)	“extracting and transferring information from a design file to a manufacturing machine”	aff’g Summ. J. at least 1 claim
    Realtime Data II (Fed. Cir. 08/02/23) (non-precedential) (2-1) (Reyna, J.)	D. Ct.: “manipulating information using compression”	aff’g R. 12(b)(6) at least 7 claims
    Trinity Info Media (Fed. Cir. 07/14/23) (Cunningham, J.)	“matching based on questioning”	aff’g R. 12(b)(6) 17 claims
    In re Authwallet (Fed. Cir. 05/10/23) (non-precedential) (Cunningham, J.)	“method for processing financial transaction data that implements authorization requests and confers discounts and benefits upon the consumer”	aff’g R. 12(b)(6) 40 claims
    Sanderling (Fed. Cir. 04/12/23) (Stark, J.)	“providing information – in this case, a processing function – based on meeting a condition,’ e.g., matching a GPS location indication with a geographic location”	aff’g R. 12(b)(6) at least 3 claims
    People.ai (Fed. Cir. 04/07/23) (non-precedential) (Cunningham, J.)	“data processing by restricting certain data from further analysis based on various sets of generic rules”	aff’g R. 12(c) at least 12 claims
    Hawk Tech. (Fed. Cir. 02/17/23) (Reyna, J.)	“storing and displaying video”	aff’g R. 12(b)(6) 6 claims
    Riggs Tech. (Fed. Cir. 01/17/23) (non-precedential) (Chen, J.)	“managing training that was provided remotely”	aff’g R. 12(b)(6) at least one claim
    IBM (Zillow) (Fed. Cir. 10/17/22) (J. Hughes)	“limiting and coordinating the display of information based on a user selection” (1st pat.) “organizing and displaying visual information” (2nd pat.)	aff’g R. 12(c) 5 claims at least (2-1 on 2 of the claims)
    Weisner (Fed. Cir. 10/13/22) (Stoll, J.)	“collect[ing] information on a user’s movements and location history [and] electronically record[ing] that data,” i.e., “creating a digital travel log” “creating and using travel histories to improve computerized search results”	aff’g R. 12(b)(6) on two patents (on 1st idea) but rev’g on two patents on 2nd idea 3 claims at least
    In re Smith (Fed. Cir. 09/09/22) (non-precedential) (per curiam)	“collecting data …, analyzing data …, and displaying the results”	aff’g ex parte rejection 35 claims
    In re Killian (Fed. Cir. 08/23/22) (Chen, J.)	“a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving”	aff’g ex parte rejection 12 claims
    Repifi (Fed. Cir. 03/15/22) (non-precedential) (Stoll, J.)	“credentialing visitors and checking them in and out of an access-controlled environment”	aff’g R. 12(b)(6) at least 1 claim
    Travel Sentry (Fed. Cir. 02/14/22) (non-precedential) (per curiam), CVSG, SG Brief (04/05/23) (urging grant of cert. along with Interactive Wearables R. 36 decision) (petition denied)	D. Ct.: “using and marketing a dual-access lock for luggage inspection”	aff’g Summ. J. at least 6 claims
    CardioNet (Fed. Cir. 10/29/21) (non-precedential) (Lourie, J.)	“filtering patient heartbeat signals to increase accuracy”	rev’g denial R. 12(c) 7 claims
    In re Elbaum (Fed. Cir. 09/02/21) (non-precedential) (per curiam)	“a method of providing information and allowing customers to utilize that information to engage in a commercial transaction”	aff’g ex parte rejection at least 2 claims
    Universal Secure (Fed. Cir. 08/26/21) (Stoll, J.) Apple (Fed. Cir. 08/26/21) (non-precedential) (Stoll, J.) (amended claim in IPR of same patent)	“collecting and examining data to enable authentication”	aff’g 12(b)(6) 96 claims
    MyMail II (Fed. Cir.) (08/19/21) (non-precedential) (Moore, C.J.)	“updating toolbar software over a network without user intervention”	aff’g R. 12(c) at least two claims
    PersonalWeb (Fed. Cir. 08/12/21) (Prost, J.)	“the use of an algorithm-generated content-based identifier to perform the claimed data-management functions, which … include controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent)’”	aff’g R. 12(c) 10 claims
    Sensormatic (Fed. Cir. 07/14/21) (non-precedential) (Lourie, J.)	“wireless communication and remote surveillance”	aff’g R. 12(c) 25 claims
    Aftechmobile (Fed. Cir. 07/13/21) (non-precedential) (per curiam)	“enabling the creation of mobile applications without coding by combining pre-coded software components”	aff’g R. 12(b)(6) at least 2 claims
    Bot M8 (Fed. Cir. 07/13/21) (O’Malley, J.)	“increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results”	aff’g Summ. J. 1 claim
    Yu (Fed. Cir. 06/11/21) (Prost, J.) (2-1)	“taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way”	aff’g R. 12(b)(6) 3 claims
    In re Bongiorno (Fed. Cir. 05/19/21) (non-precedential) (Prost, C.J.)	“organizing human activity, including planning and executing a travel itinerary”	aff’g ex parte rejection at least 2 claims
    In re Gale (Fed. Cir. 05/18/21) (non-precedential) (Hughes, J.)	“(1) collecting information (here, receiving messages and reading their metadata), (2) analyzing the information (here, calculating a usage pattern and determining its compliance with a predetermined usage pattern), and (3) reporting the results”	aff’g ex parte rejection at least 1 claim
    Free Stream (Fed. Cir. 05/11/21) (Reyna, J.)	“targeted advertising”	rev’g denial R. 12(b)(6) 5 claims
    Gree (Fed. Cir. 05/10/21) (non-precedential) (per curiam)	“associating game objects and moving one or more of the objects”	aff’g PTAB in PGR
    Whitserve (Fed. Cir. 04/26/21) (non-precedential) (Reyna, J.)	“maintaining data records, including storing records at different sites for added protection”	aff’g R. 12(b)(6) 2 claims
    In re Board of Trustees (Stanford) (Fed. Cir. 03/25/21) (Reyna, J.)	“mathematical calculations and statistical modeling,” specifically, a “computerized method of inferring haplotype phase in a collection of unrelated individuals”	aff’g ex parte rejection 23 claims
    In re Board of Trustees (Stanford) (Fed. Cir. 03/11/21) (Reyna, J.)	“mathematically calculating alleles’ haplotype phase”	aff’g ex parte rejection 25 claims
    Enco (Fed. Cir. 03/08/21) (non-precedential) (Taranto, J.)	“automating the AV-captioning process”	aff’g R. 12(b)(6) 21 claims
    Veripath (Fed. Cir. 02/08/21) (non-precedential) (Lourie, J.)	“an improvement to the abstract notion of exchanging privacy for functionality that utilizes an API to achieve the desired result”	aff’g R. 12(b)(6) 17 claims
    cxLoyalty (Fed. Cir. 02/08/21) (Prost, C.J.)	“facilitating, or brokering, a commercial transaction (i.e., the sale and purchase of goods and services) between a purchaser using a first form of value (i.e., a rewards program participant using points in whole or in part) and a seller transacting in a second form of value (i.e., a vendor system which transacts purchases in currency)”	aff’g PTAB ineligibility and rev’g PTAB eligibility in CBM 23 claims
    In re Mohapatra (Fed. Cir. 02/05/21) (non-precedential) (Bryson, J.)	“enabling a credit card user to change the security code on the card by using a web application”	aff’g ex parte rejection 5 claims
    iLife Tech. (Fed. Cir. 01/13/21) (non-precedential) (Moore, J.)	“gathering, processing, and transmitting information”	aff’g post-trial JMOL 1 claim
    Boom! Payments (Fed. Cir. 01/13/21) (non-precedential) (Lourie, J.)	“payment escrow” “identity authentication”	aff’g R. 12(b)(6) 3 claims
    In re Sturgeon (Fed. Cir. 01/12/21) (non-precedential)	“simulating a floral arrangement by creating a digital collage”	aff’g ex parte rejection 12 claims
    Mortgage Application (Fed. Cir. 01/12/21) (non-precedential) (Clevenger, J.)	information exchange in an online loan application process” “exchanging information from XML to PDF format”	aff’g R. 12(c) 20 claims
    In re Abel (Fed. Cir. 01/07/21) (non-precedential) (Taranto, J.)	“generating a mailer defined by a set of rules for controlling the sender’s access to the receiver’s mailing address”	aff’g ex parte rejection 3 claims
    Netsoc (Fed. Cir. 12/31/20) (non-precedential) (Stoll, J.)	“automating the conventional establishment of social networks to allow humans to exchange information and form relationships”	aff’g R. 12(b)(6) [in two separate actions on related patents] at least 2 claims
    Simio (Fed. Cir. 12/29/20) (Prost, CJ)	“using graphics instead of programming to create object-oriented simulations”	aff’g R. 12(b)(6) at least 1 claim
    Adaptive Streaming (Fed. Cir. 12/14/20) (non-precedential) (Taranto, J.)	“collecting information and transcoding it into multiple formats” “format conversion, from an incoming signal’s format to a variety of formats suited to different destination devices”	aff’g R. 12(b)(6) 3 claims
    Fast 101 PTY (Fed. Cir. 11/25/20) (non-precedential) (Chen, J.)	“an intermediated settlement system that employs a discount for early payment”	aff’g R. 12(b)(6) 234 claims
    Gree (Fed. Cir. 11/19/20) (non-precedential) (Stoll, J.)	“creating and applying a template of positions of one or more game contents”	aff’g and rev’g PTAB PGR decision 17 claims (3 claims upheld under Step Two)
    Tenstreet (Fed. Cir. 10/19/20) (non-precedential) (Hughes, J.)	“collecting, organizing, and storing data on a conventional computer network”	aff’g R. 12(b)(6) 30 claims
    Salwan (Fed. Cir. 09/08/20) (non-precedential) (per curiam)	“organizing human activity with respect to medical information”	aff’g Summ. J. in § 145 action re ex parte app. claims 20 claims
    American Axle (Fed. Cir. 07/31/20) (2-1) (Dyk, J.) (reissued op.) SG Brief (05/24/22) (urging cert. grant).	“Hooke’s law”	aff’g Summ. J. 9 claims
    Western Express (Fed. Cir. 07/14/20) (non-precedential) (per curiam)	“method of funds transfer using a payment card”	aff’g R. 12(b)(6) 33 claims
    In re Zunshine (Fed. Cir. 07/08/20) (non-precedential) (per curiam)	“reducing food intake to achieve weight loss and snacking to curb hunger”	aff’g rejection ex parte appln. claims 3 claims
    Data Scape (Fed. Cir. 07/01/20) (non-precedential) (Chen, J.)	“selective data storage, transfer, and processing”	aff’g R. 12(b)(6) at least 3 claims
    Braemar (Fed. Cir. 07/01/20) (non-precedential) (Lourie, J.)	“collecting, classifying, and filtering data”	aff’g R. 12(c) at least 2 claims
    CardioNet II (Fed. Cir. 07/01/20) (non-precedential) (Lourie, J.)	“collecting, analyzing, and displaying data”	aff’g R. 12(c) at least 2 claims
    Dropbox (Fed. Cir. 06/19/20) (non-precedential) (Hughes, J.)	“access checker [which permits the apparatus to provide the resource only if the trust level for the mode of identification is sufficient for the sensitivity level of the resource]” “generating a single session ID for the two connections, which ID associates between the two connections” “synchronizer which synchronizes the operation of respective connections formed by the file upload connection server and by the interactive connection server” “‘a unified tag and data structure,’ including transmitting data with an accompanying user ID and ‘remote server synchronization for wirelessly backing up data’”	aff’g R. 12(b)(6) at least 7 claims
    Ubisoft (Fed. Cir. 06/11/20) (non-precedential) (Reyna, J.)	D. Ct.: “teaching guitar by evaluating a user’s performance and generating appropriate exercises to improve that performance”	aff’g R. 12(b)(6) 5 claims
    In re Rosenberg (Fed. Cir. 06/04/20) (non-precedential) (Chen, J.)	“deciding whether to fine-tune a given system (here, a clinical trial) based on reviewing the system’s performance data” “monitoring and managing a clinical trial”	aff’g rejection ex parte appln. claims 30 claims
    British Telecomms. (Fed. Cir. 06/03/20) (non-precedential) (Taranto, J.)	“providing lists of location-specific information sources to users based on their location”	aff’g R. 12(b)(6) 44 claims
    Electronic Commc’n I (Fed. Cir. 05/14/20) (Prost, C.J.)	“providing advance notification of the pickup or delivery of a mobile thing”	aff’g R. 12(c) 1 claim
    Cisco (Fed. Cir. 05/13/20) (non-precedential) (Moore, J.)	“ranking stations based on antenna performance characteristics and selecting the station with the highest rank to act as master in a network”	aff’g R. 12(c) 1 claim
    In re Jobin (Fed. Cir. 05/08/20) (non-precedential) (per curiam)	“collection, organization, grouping, and storage of data using techniques such as conducting a survey or crowdsourcing”	aff’g rejection ex parte appln. claims 4 claims
    In re Rudy (Fed. Cir. 04/24/20) (Prost, C.J.)	“selecting a fishing hook based on observed water conditions”	aff’g rejection ex parte appln. 10 claims
    Ericsson (Fed. Cir. 04/14/20) (2-1) (Prost, C.J.)	“controlling access to, or limiting permission to, resources” “controlling access to resources by receiving a request and determining if the request for access should be granted”	rev’g denial of Summ. J. 2 claims
    In re Gopalan (Fed. Cir. 04/13/20) (non-precedential) (Chen, J.)	“analyzing information using mathematical algorithms”	aff’g rejection ex parte appln. all claims
    Bozeman (Fed. Cir. 04/10/20) (Moore, J.)	“collecting and analyzing information for financial transaction fraud or error detection”	aff’g PTAB CBM FWD claims unpatentable 24 claims
    Whitserve II (Fed. Cir. 04/10/20) (non-precedential) (Taranto, J.)	“keeping track of deadlines for clients and carrying out two-way communications with clients relevant to meeting those deadlines”	aff’g R. 12(b)(6) 38 claims
    In re Morsa (Fed. Cir. 04/10/20) (non-precedential) (per curiam)	“organizing human activity,” specifically, “targeted advertising and bidding to display the advertising, which are both abstract ideas relating to customizing information based on the user and matching them to the advertiser”	aff’g rejection ex parte appln. all claims
    In re Thomas (Fed. Cir. 04/08/20) (non-precedential) (per curiam)	“alerting by notification message notice of a new publication indicated as relevant to the notifiee”	aff’g rejection ex parte appln. all claims
    Customedia (Fed. Cir. 03/06/20) (Moore, J.)	“using a computer to deliver targeted advertising to a user”	aff’g PTAB CBM FWD claims unpatentable 30 claims
    Ameranth (Fed. Cir. 11/01/19) (non-precedential) (Dyk, J.)	“configuring and transmitting hospitality menu related information using a system that is capable of synchronous communications and automatic formatting”	aff’g Summ. J. 12 claims
    In re Greenstein (Fed. Cir. 09/06/19) (non-precedential) (per curiam)	“‘[a]djusting the amount a person saves and choosing investments for the saved amounts, with the goal of saving enough for retirement.’”	aff’g rejection ex parte appln. 12 claims
    Chamberlain Group (Fed. Cir. 08/21/19) (Chen, J.)	“wirelessly communicating status information about a system”	rev’g denial of JMOL 3 claims
    Solutran (Fed. Cir. 07/30/19) (Chen, J.)	“crediting a merchant’s account as early as possible while electronically processing a check” “using data from a check to credit a merchant’s account before scanning the check”	rev’g denial of Summ. J. 5 claims
    In re Greenstein (Fed. Cir. 07/12/19 (non-precedential) (Chen, J.)	“providing recommendations for a purchaser or lessor”	aff’g rejection ex parte appln. 15 claims
    Bridge & Post (Fed. Cir. 07/05/19) (2-1) (non-precedential) (Prost, C.J.)	“using persistent identifiers to implement targeted marketing” “communicating information using a personalized marking”	aff’g R. 12(b)(6) 8 claims
    Innovation Sciences (Fed. Cir. 07/02/19) (non-precedential) (Moore, J.)	“securely processing a credit card transaction with a payment server”	aff’g Summ. J. 1 claim
    In re Gitlin (Fed. Cir. 06/13/19) (non-precedential) (per curiam)	“a mathematical concept”	aff’g rejection ex parte appln. 71 claims
    In re Greenstein (Fed. Cir. 06/10/19) (non-precedential) (Lourie, J.)	“allocating returns to different investors in an investment fund”	aff’g rejection ex parte appln. 11 claims
    Reese (Fed. Cir. 06/10/19) (non-precedential) (Reyna, J.)	“receiving information (a calling phone number flagged as private) and sending an indication (an audible tone) to a party already engaged in a call”	aff’g Summ. J. 2 claims
    Uniloc (Fed. Cir. 05/24/19) (non-precedential) (Linn, J.)	“using a desktop interface to access an application server” “‘provid[e] an unavailability indication . . . or an availability indication,’ based on ‘at least one of a user identity based policy, an administrator policy override definition or a user policy override definition’”	aff’g R. 12(b)(6) on two of four patents 33 claims
    Trading Techs. (IBG) II (Fed. Cir. 04/30/19) (Moore, J.) See Trading Techs. (IBG) III (Fed. Cir. 05/21/19) (non-precedential) (Hughes, J.) (controlled by precedential decisions on related patents)	“providing a trader with additional financial information to facilitate market trades” ”providing information to traders in a way that helps them process information more quickly”	aff’g PTAB CBM FWD claims unpatentable 22 claims
    In re: Morinville (Fed. Cir. 04/29/19) (non-precedential) (Newman, J.)	“the general concept of reorganizing an organization in conformity with function” “a business administration concept for management of a business, i.e., a conventional business practice long prevalent in our system of commerce”	aff’g rejection ex parte appln. 18 claims
    Trading Techs. (IBG) I (Fed. Cir. 04/18/19) (Moore, J.)	“graphing (or displaying) bids and offers to assist a trader to make an order” “receiving a user input to send a trade order”	aff’g R. 12(b)(6) 8 claims
    ChargePoint (Fed. Cir. 03/28/19) (Prost, C.J.)	“communicating over a network for device interaction”	aff’g PTAB CBM FWD claims unpatentable 89 claims
    Univ. of Fla. Research (Fed. Cir. 02/26/19) (Moore, J.)	“collecting, analyzing, manipulating, and displaying data”	aff’g R. 12(b)(6) 2 claims at least
    Voit Tech. (Fed. Cir. 02/08/19) (non-precedential) (Wallach, J.)	“entering, transmitting, locating, compressing, storing, and displaying data (including text and image data) to facilitate the buying and selling of items”	aff’g R. 12(b)(6) 17 claims
    In re Guldenaar Holding (Fed. Cir. 12/28/18) (Chen, J.)	“rules for playing a dice game”	aff’g rejection ex parte appln. 23 claims
    Glasswall (Fed. Cir. 12/20/18) (non-precedential) (Linn, J.)	“the filtering of electronic files and data by regenerating an electronic file without non-conforming data”	aff’g R. 12(b)(6) 18 claims
    In re Downing (Fed. Cir. 12/07/18) (non-precedential) (Lourie, J.)	“personal management, resource planning, or forecasting”	aff’g rejection ex parte appln. 4 claims
    Data Engine I (Fed. Cir. 10/09/18) (Stoll, J.)	“collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes” “identifying and storing electronic spreadsheet pages”	aff’g R. 12(c) 8 claims [but rev’g on most claims]
    In re Villena (Fed. Cir. 08/29/18) (Stoll, J.) (non-precedential)	“property valuation”	aff’g rejection ex parte appln. 3 claims
    BSG Tech. (Fed. Cir. 08/15/18) (Hughes, J.)	“considering historical usage information while inputting data”	aff’g Summ. J. 7 claims
    SAP Am. (Fed. Cir. 08/02/18) (Tarano, J.)	“selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis”	aff’g R. 12(c) 31 claims
    Interval Licensing (Fed. Cir. 07/20/18) (Chen, J.)	“the presentation of two sets of information, in a nonoverlapping way, on a display screen”	aff’g R. 12(c) 4 claims
    Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precendential)	“a mathematical methodology to convert geospatial coordinates into a single string of natural numbers”	aff’g R. 12(b)(6) 2 claims
    In Re: Eberra (Fed. Cir. 05/04/18) (per curiam) (non-precedential)	“promoting the purchase of a product with the incentive being a spot in a television program, i.e. product promotion”	aff’g PTAB rejection of ex parte appln. claims 14 claims
    Voter Verified (Fed. Cir. 04/20/18) (Lourie, J.)	“voting, verifying the vote, and submitting the vote for tabulation”	aff’g R. 12(b)(6) 92 claims
    Maxon (Fed. Cir. 04/09/18) (Hughes, J.) (non-precedential)	“decentralized delivery controlled by the owner of a plurality of devices”	aff’g R. 12(b)(6) 4 claims
    Intellectual Ventures (Symantec) (Fed. Cir. 03/15/18) (O’Malley, J.) (non-precedential)	“backing up data”	aff’g R. 56 2 claims
    Automated Tracking (Fed. Cir. 02/16/18) (Stoll, J.) (non-precedential)	D. Ct.: “collecting data, analyzing it, and determining the results based on the analysis of data”	aff’g R. 12(c) 4 claims
    Zuili (Fed. Cir. 02/09/18) (Wallach, J.) (non-precedential)	“collecting, transmitting, analyzing, and storing data to detect fraudulent and/or invalid clicks based on the time between two requests by the same device or client”	aff’g PTAB CBM FWD claims unpatentable 24 claims
    Berkheimer (Fed. Cir. 02/08/18) (Moore, J.)	“parsing and comparing data” “parsing, comparing, and storing data” “parsing, comparing, storing, and editing data”	aff’g R. 56 4 claims (vacating on 3 claims)
    Move, Inc. (Fed. Cir. 02/01/18) (Stoll, J.) (non-precedential)	“a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user”	aff’g R. 56 12 claims
    Inventor Holdings (Fed. Cir. 12/08/17) (Chen, J.)	“local processing of payments for remotely purchased goods”	aff’g post-Alice fees award (earlier aff’d R. 12(c)) 23 claims
    Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (Wallach, J.) (non-precedential)	“the identification of unwanted files in a particular field (i.e., a computer network) and otherwise concern data collection related to such identification”	aff’g R. 12(b)(6) 16 claims
    Two-Way Media (Fed. Cir. 11/01/17) (Reyna, J.)	“(1) sending information, (2) directing the sent information, (3) monitoring the receipt of the sent information, and (4) accumulating records about receipt of the sent information” “monitoring the delivery of real-time information to a user or users” “measuring the delivery of real-time information for commercial purposes”	aff’g R. 12(c) 223 claims
    Smart Sys. (Fed. Cir. 10/18/17) (Wallach, J.) (2-1, Linn, J., dissenting on two patents)	“the formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions”	aff’g R. 12(c) 87 claims
    Secured Mail (Fed. Cir. 10/16/17) (Reyna, J.)	“using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object”	aff’g R. 12(b)(6) 143 claims
    Audatex (Fed. Cir. 07/27/17) (Prost, C.J.) (non-precedential)	“‘providing a vehicle valuation through the collection and use of vehicle information’”	aff’g PTAB CBM FWD substitute claims unpatentable 60 claims
    Prism Tech. (Fed. Cir. 06/23/17) (Prost, C.J.) (non-precedential)	“‘providing restricted access to resources’”	rev’g denial of R. 50(b) invalidity 18 claims
    Credit Acceptance (Fed. Cir. 06/09/17) (Dyk, J.)	“processing an application for financing a purchase”	aff’g PTAB CBM FWD unpatentable 23 claims
    EasyWeb (Fed. Cir. 05/12/17) (Hughes, J.) (non-precedential)	“receiving, authenticating, and publishing data”	aff’g R. 56 invalidity 7 claims [at least]
    RecogniCorp (Fed. Cir. 04/28/17) (Reyna, J.)	“encoding and decoding image data” “Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end”	aff’g R. 12(c) 37 claims
    West View (Fed. Cir. 04/19/17) (Wallach, J.) (non-precedential)	“receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query”	aff’g R. 12(c) 81 claims
    Coffelt (Fed. Cir. 03/15/17) (per curiam) (non-precedential)	“calculating and comparing regions in space”	aff’g R. 12(b)(6) 6 claims
    Clarilogic (Fed. Cir. 03/15/17) (Reyna, J.) (non-precedential)	“gathering financial information of potential borrowers” “a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction”	aff’g R. 56 invalidity 18 claims
    In re Salwan (Fed. Cir. 03/13/17) (per curiam) (non-precedential)	“billing insurance companies and organizing patient health information”	aff’g PTAB rejection of ex parte appln. claims 42 claims
    Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (Prost, C.J.)	[first patent:] “‘creating an index and using that index to search for and retrieve data’” “using XML tags—as opposed to other kinds of tags—to build an index” [second patent:] “‘remotely accessing user specific information’”	aff’g R. 12(b)(6) 77 claims
    Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (Prost, C.J.)	“collecting, displaying, and manipulating data of particular documents”	aff’g R. 56 invalidity 29 claims
    Smartflash (Fed. Cir. 03/01/17) (Prost, C.J.) (non-precedential)	“‘conditioning and controlling access to data based on payment’”	rev’g denial R. 50(b) invalidity 4 claims
    Evolutionary Intelligence (Fed. Cir. 02/17/17) (Lourie, J.) (non-precedential)	“selecting and sorting information by user interest or subject matter, a longstanding activity of libraries and other human enterprises”	aff’g R. 12(b)(6) 39 claims
    Apple (Ameranth) (Fed. Cir. 11/29/16) (Reyna, J.)	“the ability to generate menus with certain features” “generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location” “taking orders from restaurant customers on a computer”	aff’g PTAB CBM unpatentability 27 claims; rev’g patentability 9 claims 36 claims
    Tranxition (Fed. Cir. 11/16/16) (Prost, C.J.) (non-precedential)	“migration, or transitioning, of settings” [claim recited automatic migration of computer settings from one computer to another]	aff’g R. 56 invalidity 81 claims
    Synopsys (Mentor) II (Fed. Cir. 10/17/16) (Chen, J.)	“translating a functional description of a logic circuit into a hardware component description of the logic circuit”	aff’g R. 56 invalidity 16 claims
    FairWarning (Fed. Cir. 10/11/16) (Stoll, J.)	“analyzing records of human activity to detect suspicious behavior”	aff’g R. 12(b)(6) 17 claims
    Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (Dyk, J.)	“receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization—in other words, filtering files/e-mail” “the screening of messages by corporate organizations—in the context of electronic communications” “virus screening”	aff’g R. 56 and R. 52(c) invalidity 12 claims; rev’g denial R. 52(c) invalidity 1 claim 13 claims
    Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (Bryson, J.)	“providing out-of-region access to regional broadcast content”	aff’g R. 12(b)(6) 21 claims
    Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (Bryson, J.)	“delivering user-selected media content to portable devices” “customizing a user interface”	aff’g R. 12(c) 20 claims
    TDE Petroleum (Fed. Cir. 08/15/16) (Hughes, J.) (non-precedential)	“storing, gathering, and analyzing data”	aff’g R. 12(b)(6) 115 claims
    Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.)	“collecting information, analyzing it, and displaying certain results of the collection and analysis”	aff’g R. 56 invalidity 16 claims
    LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential)	“a loan-application clearinghouse or, more simply, coordinating loans” [Note: one claim had 11 steps and 361 words]	rev’g denial R. 56 invalidity 11 claims
    Shortridge (Fed. Cir. 07/13/16) (non-precedential) (per curiam)	“‘cataloging labor data’”	aff’g R. 12(c) 24 claims
    TLI Commc’ns (Fed. Cir. 05/17/16) (Hughes, J.)	“classifying and storing digital images in an organized manner”	aff’g R. 12(b)(6) 5 claims [at least]
    In re Brown (Fed. Cir. 04/22/16) (per curiam) (non-precedential)	“assigning hair designs to balance head shape”	aff’g PTAB rejection ex parte appln. 13 claims
    In re Smith (Fed. Cir. 03/10/16) (Stoll, J.)	“rules for conducting a wagering game”	aff’g PTAB rejection ex parte appln. 18 claims
    Mortgage Grader (Fed. Cir. 01/20/16) (Stark, J.)	“‘anonymous loan shopping’”	aff’g R. 56 invalidity 4 claims
    Vehicle Intelligence (Fed. Cir. 12/28/15) (per curiam) (non-precedential)	“testing operators of any kind of moving equipment for any kind of physical or mental impairment” “using an unspecified ‘expert system’ running on equipment that already exists in various vehicles”	aff’g R. 12(c) 10 claims
    Versata II (Fed. Cir. 07/09/15) (Plager, J.)	“determining a price, using organizational and product group hierarchies” [method, system and CRM claims]	aff’g PTAB CBM FWD unpatentability 4 claims
    Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (Dyk, J.)	“tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)” “customizing information based on . . . information known about the user”	aff’g R. 56 invalidity 20 claims
    Internet Patents (Fed. Cir. 06/23/15) (Newman, J.)	“retaining information in the navigation of online forms”	aff’g R. 12(b)(6) 8 claims
    OIP Tech. (Fed. Cir. 06/11/15) (Hughes, J.) (Mayer, J., Concurring Op.)	“offer-based price optimization”	aff’g R. 12(b)(6) 4 claims [at least]
    Content Extraction (Fed. Cir. 12/23/14) (Chen, J.)	“1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory”	aff’g R. 12(b)(6) 242 claims
    In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (Dyk, J.)	“comparing BRCA sequences and determining the existence of alterations”	aff’g denial prelim. injunc. 2 claims
    Ultramercial III (Fed. Cir. 11/14/14) (Lourie, J.) (Mayer, J., Concurring Op.)	“receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad” “showing an advertisement before delivering free content”	aff’g R. 12(b)(6) [having previously held claims eligible pre-Mayo and again post-Mayo but pre-Alice 16 claims
    buySAFE (Fed. Cir. 09/03/14) (Taranto, J.)	“creating a contractual relationship—a ‘transaction performance guaranty’”	aff’g R. 12(c) invalidity 4 claims
    Planet Bingo (Fed. Cir. 08/26/14) (Hughes, J.) (non-precedential)	“managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions” “’solv[ing a] tampering problem and also minimiz[ing] other security risks’ during bingo ticket purchases”	aff’g R. 56 invalidity 52 claims
    Digitech (Fed. Cir. 07/11/14) (Reyna, J.)	“a process of organizing information through mathematical correlations and is not tied to a specific structure or machine”	aff’g R. 56 invalidity 19 claims
    Alice Corp. (U.S. 06/19/2014) (Thomas, J.)	“intermediated settlement”	aff’g R. 56 invalidity 208 claims

  • Directed To Natural Law: Mayo (U.S. 03/20/2012) (claims recite “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm” and “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field”); Chromadex (Fed. Cir. 02/13/23) (aff’g Summ. J. patent ineligibility of claims encompassing isolated vitamin that has same functions and structures as naturally occurring non-isolated vitamin: “Because the claims are broad enough to encompass a product of nature, it is invalid under § 101.”); CareDx (Fed. Cir. 07/18/22) (aff’g Summ. J. of invalidity; claims reciting “1. “obtaining” or “providing” a “sample” from the recipient that contains cfDNA; 2. “genotyping” the transplant donor and/or recipient to develop “polymorphism” or “SNP” “profiles”; 3. “sequencing” the cfDNA from the sample using “multiplex” or “high-throughput” sequencing; or performing “digital PCR”; and 4. “determining” or “quantifying” the amount of donor cfDNA.,” “apply conventional measurement techniques to detect a natural phenomenon—the level of donor cfDNA and the likelihood of organ transplant rejection); Am. Axle  (Fed. Cir. 07/31/20) (2-1) (aff’g Summ. J. invalidity of some claims on a “method for manufacturing a shaft assembly of a driveline system … wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations,” held to be directed to “Hooke’s law,” which “mathematically relates the mass and/or stiffness of an object to the frequency with which that object oscillates (vibrates)”; remanding on some claims)) [Op. declining to stay mandate, with Moore, J. concurring op. (Fed. Cir. 10/23/20); en banc rehearing denied (6-6), various Op. (Fed. Cir. 07/31/20)]; SG Brief (05/24/22) (urging cert. grant); Purecircle (Fed. Cir. 01/02/04) (non-precedential) (aff’g Sec. 101 invalidity; claim “simply states a result, conversion of Reb D to Reb X wherein the conversion is at least about 50% complete. The claim does not provide any steps or give guidance as to how to achieve a 50% conversion other than the direction to use a natural enzyme. Claim 14 is directed to subject matter that is a natural phenomenon.”); INO Therapeutics (Fed. Cir. 08/27/19) (2-1) (non-precedential) (“the claim is directed to detecting the presence of LVD in a patient and then doing nothing but leaving the natural processes taking place in the body alone for the group of LVD patients.” Claim “does no more than add an instruction to withhold iNO treatment from the identified patients; it does not recite giving any affirmative treatment for the iNO-excluded group, and so it covers a method in which, for the iNO-excluded patients, the body’s natural processes are simply allowed to take place.”); Genetic Veterinary (Fed. Cir. 08/09/19) (aff’g JMOL (pre verdict) of patent ineligibility; claims “are not directed to a new and useful method for discovery because they begin and end with the point discovery of the HNPK mutation in the SUV39H2 gene…. The mutation location itself and the fact that it is inherited through male and female dog carriers mating are both natural phenomena.”); The Cleveland Clinic II (Fed. Cir. 04/01/19) (non-precedential) (aff’g R. 12(b)(6) dismissal on Sec. 101 invalidity: “the claims are directed to the natural law that blood MPO levels correlate with atherosclerotic CVD”); The Cleveland Clinic I (Fed. Cir. 06/16/17) (aff’g grant of motion to dismiss for invalidity under Sec. 101 of parent patent to Cleveland Clinic II patent: “the method starts and ends with naturally occurring phenomena with no meaningful non-routine steps in between—the presence of MPO in a bodily sample is correlated to its relationship to cardiovascular disease”); Athena Diagnostics (Fed. Cir. 02/06/19) (2-1) (aff’g Rule 12(b)(6) dismissal for Sec. 101 invalidity; claims directed to natural law of “the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK related neurological diseases like MG”); Ariosa (Fed. Cir. 06/12/15) (aff’g Summ. J. of Sec. 101 invalidity; claims directed to a natural phenomenon, reciting “amplifying cffDNA contained in a sample of plasma or serum from a pregnant female, detecting paternally inherited cffDNA, and making diagnoses based thereon”).
  • Not Directed To Abstract Idea Or Law Of Nature: Adasa (Fed. Cir. 12/16/22) (aff’g Summ. J. that claims not directed to abstract idea, but “to a specific, hardware-based RFID serial number data structure designed to enable technological improvements to the commissioning process,” which “is not a mere mental process, but a hardware-based data structure focused on improvements to the technological process by which that data is encoded”); The California Institute (Fed. Cir. 02/04/22) (aff’g not invalid under Sec. 101; claims “directed to an efficient, improved method of encoding data that relies in part on irregular repetition,” despite relying on mathematical formula); Mentone (Fed. Cir. 11/15/21) (non-precedential) (rev’g R. 12(b)(6) dismissal; claims directed to “permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation,” not “the abstract idea of receiving a USF and transmitting data during the appropriate timeslots,” analogizing claims to those in Packet Intelligence); TecSec (Fed. Cir. 10/23/20) (aff’g claims not directed to abstract idea (of “managing access to objects using multiple levels of encryption”) where method improves security of network transmissions through multi-level encryptions technique, and “expressly requires, as well, accessing an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as encryption for the access management”); EcoServices (Fed. Cir. 10/08/20) (non-precedential) (2-1) (aff’g claims not directed to abstract idea but instead directed to “a specific combination of a type of washing unit, information detector, and control unit, configured in a certain way to create technical improvements to systems for washing jet engines”); Illumina (Fed. Cir. 08/03/20) (2-1) (reissued op.) (rev’g Summ. J. of Sec. 101 invalidity; distinguishing Ariosa; claims “are directed to methods for preparing a fraction of cell-free DNA that is enriched in fetal DNA,” not the natural phenomenon “that cell-free fetal DNA tends to be shorter than cell-free maternal DNA in a mother’s bloodstream”); XY (Fed. Cir. 07/31/20) (rev’g R. 12(c) judgment of ineligibility; claims not directed to a “mathematical equation that permits rotating multi-dimensional data,” but rather directed to “a purportedly improved method of operating a flow cytometry apparatus to classify and sort particles into at least two populations in real time, wherein first and second detectors detect signals from individual particles and a processor converts the signals to n-dimensional parameter data and rotationally alters that data to increase spatial separation among the data, thereby facilitating classification and sorting of each individual particle”); Packet Intelligence (Fed. Cir. 07/14/20) (aff’g bench trial judgment that claims are directed to technological solution of technological problem “unique to computer networks, identifying disjointed connection flows in a network environment … by identifying and refining a conversational flow such that different connection flows can be associated with each other and ultimately with an underlying application or protocol, [and the] claims detail how this is achieved in several steps”); Uniloc (Fed. Cir. 04/30/20) (rev’g dismissal of complaint: claims directed to “the reduction of latency experienced by parked secondary stations in communication systems,” rather than the abstract idea of “additional polling in a wireless communication system”); CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of complaint: patent “directed to improved cardiac monitoring device,” not abstract idea about how to distinguish atrial flutter and fibrillation by monitoring heartbeat); Boehringer (Fed. Cir. 03/16/20) (non-precedential) (rev’g partial R. 12(c) judgment of ineligibility; “claims are directed to a particular method of treatment,” not a natural law regarding how certain compounds were metabolized. Claim: “A method of treating and/or preventing metabolic diseases in a patient for whom metformin therapy is inappropriate due to at least one contra-indication against metformin comprising orally administering to the patient a DPP-IV inhibitor wherein the contraindication is selected from the group consisting of: renal disease, ….”); Koninklijke KPN (Fed. Cir. 11/15/19) (rev’g Rule 12(c) judgment of ineligibility; claims are directed not to data manipulation operations, such as “reordering data and generating additional data manipulation,” but to “an improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not…. By varying the original data supplied to the check data generator in different ways, the device of the appealed claims significantly decreases the likelihood that defective check data will be generated for successive data blocks such that a given systematic error would continue to escape detection.”); Uniloc (Fed. Cir. 05/24/19) (non-precedential) (rev’g dismissal of complaint on two of four patents: (1) claims are “directed to the use of file packets with segments configured to initiate centralized registration of an application from an application server, and … this is not an abstract idea.” Not directed to mere function, rather “the patent claims a particular improvement in how this is done—i.e. by use of a file packet to enable the further functionality of initiating on-demand registration of the application”; (2) “this is not just a functional claim using conventional technological components. Instead, the claim is directed to a particular way of using a conventional application server to nevertheless allow on-demand installation of an application incorporating preferences from two different sources by adding the application manager and configuration manager as additions to each application. This is not an abstract idea.”); SRI Int’l (Fed. Cir. 03/20/19) (2-1) (aff’g Summ. J. of patent eligibility; “claims are directed to using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors—to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network”); Natural Alternatives (Fed. Cir. 03/15/19) (rev’g R. 12(c) judgment of invalidity; “these are treatment claims and as such they are patent eligible”); Ancora Tech. (Fed. Cir. 11/16/18) (rev’g R. 12(b)(6) dismissal; “improving security—here, against a computer’s unauthorized use of a program—can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem”); Data Engine I (Fed. Cir. 10/09/18) (rev’g R. 12(c) judgment of invalidity on most claims; considering claims as a whole in light of the Spec., claims are directed to implementing “a notebook-tabbed interface, which allows users to easily navigate through three-dimensional electronic spreadsheets,” and recite “specific steps detailing the method of navigating through spreadsheet pages within a three-dimensional spreadsheet environment using notebook tabs”); Vanda Pharm. (Fed. Cir. 04/13/18) (Lourie, J.) (2-1) (rev’g judgment of patent invalidity; claims “are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from Mayo. They recite more than the natural relationship between CYP2D6 metabolizer genotype and the risk of QTc prolongation. Instead, they recite a method of treating patients based on this relationship that makes iloperidone safer by lowering the risk of QTc prolongation.”) (SG brief (12/06/19) recommending denial of cert., despite Bilski, Mayo and Alice causing uncertainty, because Fed. Cir. reached correct result); Core Wireless (Fed. Cir. 01/25/18) (Moore, J.) (aff’g Summ. J. of no Sec. 101 invalidity; claims are “directed to an improved user interface for computing devices, not to the abstract idea of an index.”); Finjan (Fed. Cir. 01/10/18) (Dyk, J.) (aff’g post-trial judgment that claims not invalid; claims “directed to a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile,’” which security profile has “information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims are directed to “an improved computer memory system,” i.e., “configuring the memory system based on the type of processor connected to the memory system” and “the use of programmable operational characteristics that are configurable based on the type of processor,” which is a technology improvement, and are not directed to the abstract idea identified by the trial court and dissent, “categorical data storage.”); Thales Visionix (Fed. Cir. 03/08/17) (Moore, J.) (rev’g Sec. 101 invalidity judgment on the pleadings: “claims are not merely directed to the abstract idea of using ‘mathematical equations for determining the relative position of a moving object to a moving reference frame,’ [but rather] to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.”); Trading Techs. (Fed. Cir. 01/18/17) (Newman, J.) (non-precedential) (aff’g denial of JMOL; representative claim directed to “a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art,” and had no “pre-electronic trading analog,” and recites more than “‘setting, displaying, and selecting’ data or information that is visible on the [graphical user interface].”); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims … are directed to a new and useful laboratory technique for preserving hepatocytes. This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting.” We have “found claims ‘directed to’ a patent-ineligible concept when they amounted to nothing more than observing or identifying the ineligible concept itself.”); Enfish (Fed. Cir. 05/12/16) (Hughes, J.) (rev’g Summ. J. of patent-ineligibility: claims not directed to an abstract idea; “directed to an improvement in the functioning of a computer,” a self-referential table for a database) [see Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (“The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities.”)]; McRO (Fed. Cir. 09/13/16) (reframing Step One as: “look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”) See generally Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g invalidity judgment on pleadings; “there is [no] single, succinct, usable definition or test” of “abstract idea” so decisions take common law approach of comparing claims to those in earlier decisions). But see iLife Tech. (Fed. Cir. 01/13/21) (non-precedential) (aff’g post-trial JMOL of ineligibility, distinguishing Thales and CardioNet: claim “not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors. It merely recites a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.”).
  • “Directed To” Requires More Than “Involves”: “The first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept.” Instead consider whether “‘their character as a whole is directed to excluded subject matter’” or consider “‘the focus of the claimed advance over the prior art.’” Enfish (Fed. Cir. 05/12/16); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims directed to technological improvement even though an abstract idea “underlies” the claims); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (evaluate “‘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.”); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: claims are directed to “new and improved technique, for producing a tangible and useful result,” “not simply an observation or detection of the ability of hepatocytes to survive multiple freeze-thaw cycles.”)
  • Limitations Inherent To Idea Are Part Of The Idea: Claim limitations “inherent” in the abstract idea are treated as part of the abstract idea. Versata II (Fed. Cir. 07/09/15) (“The limitations are either inherent in the abstract idea of determining a price using organization and product group hierarchies—e.g., arranging the hierarchies—or conventional and well-known limitations involving a computer—e.g., storing pricing information.”); see Ultramercial III (Fed. Cir. 11/14/14) (aff’g R. 12(b)(6) dismissal; “this ordered combination of [eleven] steps recites an abstraction—an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application…. the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.”)
  • A Combination Of Abstract Ideas Is An Abstract Idea: PersonalWeb (Fed. Cir. 08/12/21) (“Stringing together the claimed steps by “[a]dding one abstract idea . . . to another,” amounts merely to the abstract idea of using a content-based identifier to perform an abstract data-management function—whether controlling access to data, retrieving data, or marking data for deletion.”); RecogniCorp (Fed. Cir. 04/28/17) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim nonabstract.”); Elec. Power (Fed. Cir. 08/01/16) (“the claims are clearly focused on the combination of those abstract-idea processes …. They are therefore directed to an abstract idea.”); ChargePoint (Fed. Cir. 03/28/19) (claim “merely adds one abstract concept to another”); Boom! Payments (Fed. Cir. 01/13/21) (non-precedential) (“at most, the use of an identification code does nothing more than overlay a second layer of abstraction—specifically, identity authentication—on the escrow procedure described by the claims”); In re Morsa (Fed. Cir. 04/10/20) (non-precedential) (“the claim recites both targeted advertising and bidding to display the advertising, which are both abstract ideas”).
  • Step One Must Be Tethered To Language Of The Claims: First step must be tethered to the language of the claims and not over-generalize the claims. Enfish (Fed. Cir. 05/12/16) (rejecting challenger’s alleged abstract idea theory: “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.”); Am. Axle (Fed. Cir. 07/31/20) (2-1) (aff’g Summ. J. invalidity; “The Supreme Court’s cases focus on the claims, not the specification, to determine section 101 eligibility.” “Features that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.”); SG Brief (05/24/22) (urging cert. grant); McRO (Fed. Cir. 09/13/16) (“the claims are limited to rules with specific characteristics” not just any rules as held by district court). May look to how Spec. describes the “present invention” in identifying what the claims focus on. Id.; Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (in addition to the approved claim constructions, “we examine the claims in light of the written description.”; relying on elements recited in Spec. “necessarily” incorporated by claims.); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; descriptions in Spec. of advantages over prior art “clearly indicates that the claims are directed to an improvement in the functioning of computers”); Eolas (Fed. Cir. 02/01/24) (non-precedential) (changing D. Ct.’s “abstract concept of enabling interactivity with remote objects on a client computer browser using distributed computing” to “interacting with data objects on the World Wide Web” because “client computer” is over-generalized and distributed computing is implementation better analyzed at step two); People.ai (Fed. Cir. 04/07/23) (non-precedential) (rejecting argument that claims’ data structure solved technical problem with some CRM systems because claims not limited to CRMs so “there is no evidence of a technological problem with the claimed systems of record”); Automated Tracking (Fed. Cir. 02/16/18) (non-precedential) (aff’g R. 12(c) Sec. 101 invalidity; the agreed representative claims do not require the elements asserted by patent owner to satisfy Alice).
  • Claims Not Spec. Are Measured For Patent Eligibility: Ericsson (Fed. Cir. 04/14/20) (2-1) (rev’g denial of Summ. J. of patent ineligibility that amounted to grant of Summ. J. of patent eligibility, despite no Rule 50 JMOL at trial; trial court erred in determining what patents are directed to based on features described in Spec. but not claimed); Smart Sys. (Fed. Cir. 10/18/17) (2-1) (“Our mandate from the Supreme Court under Alice step one is to ascertain what the claims are ‘directed to,’ not the ‘thrust,’ ‘heart,’ or ‘focus’ of the invention, as the dissent argues.”) “While the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus.” ChargePoint (Fed. Cir. 03/28/19) (aff’g R. 12(b)(6) invalidity: “Even a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims, thus preempting all use of that law or idea.”). But see Mentone (Fed. Cir. 11/15/21) (non-precedential) (rev’g R. 12(b)(6) dismissal on Step One; “the specification also provides important details on the technological problem and how the claimed invention solves that problem”).
  • Failure Of Spec. To Describe Element In Detail Suggests Element Not Focus Of Claims: That Spec. “says nothing about how to construct a database structure that is not modified by the addition of new parameters … suggests that this feature of the claimed system is not [the claim’s] focus.” BSG Tech. (Fed. Cir. 08/15/18).
  • Spec.’s Description Of Problem And/Or Invention May Support Determination Of Focus Of The Claims: How Spec. describes the alleged advance may support or refute that claimed invention is directed to a natural law, not an improvement in underlying technology. Simio (Fed. Cir. 12/29/20) (contrasts Spec.’s detailed and long discussion of purported advance over prior art, which is focus of the claim, with relatively short discussion of another claim element that the patent owner argued was the claim’s focus); CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of complaint: determining whether claims are directed to abstract idea by considering claims “in light of the written description” and accepting as true assertions of benefits therein); Athena Diagnostics (Fed. Cir. 02/06/19) (2-1) (aff’g Rule 12(b)(6) dismissal for Sec. 101 invalidity). ChargePoint (Fed. Cir. 03/28/19) (aff’g R. 12(b)(6) invalidity; looking to how Spec. describes the problem and the solution, in concluding that the claims are directed to abstract idea: “the specification never suggests that the charging station itself is improved from a technical perspective, or that it would operate differently than it otherwise could. Nor does the specification suggest that the invention involved overcoming some sort of technical difficulty in adding networking capability to the charging stations.”); Am. Axle (Fed. Cir. 07/31/20) (2-1) (aff’g Summ. J. some claims directed to natural law, Spec. “describes tuning in terms of the result achieved, rather than the particular process by which the result is accomplished”); SG Brief (05/24/22) (urging cert. grant).
  • Generic Tangible Elements And Conventional Elements Do Not Defeat Claim Being Directed To An Abstract Idea Or Natural Law: “We have repeatedly analyzed conventionality at step one as well.” CareDx (Fed. Cir. 07/18/22) (aff’g Summ. J. ineligible; claims directed to natural law in part because Spec. repeatedly describes measurement and other steps in claims as being conventional: “claims applying conventional methods ‘directed to’ natural phenomena satisfy Alice/Mayo step one”); Weisner (Fed. Cir. 10/13/22) (aff’g R. 12(b)(6) for two patents but rev’g on two others: “that the claims recite a number of generic elements—including a processing system, an application, and a handheld mobile communication device— does not shift their focus away from the core idea of creating a digital travel log”); Ericsson (Fed. Cir. 04/14/20) (2-1) (where “the bulk of the claim provides an abstract idea, and the remaining limitations provide only necessary antecedent and subsequent components, the claim’s character as a whole is directed to that abstract idea”); The Cleveland Clinic I (Fed. Cir. 06/16/17) (step one analysis: Specs. “confirm that known testing methods could be used to detect MPO, and that there were commercially available testing kits for MPO detection.”); McRO (Fed. Cir. 09/13/16) (reframing Step One as: “look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”); TLI Commc’ns (Fed. Cir. 05/17/16) (Spec. “makes clear that the recited physical components [“telephone unit,” “server”] merely provide a generic environment in which to carry out the abstract idea”); LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential) (rev’g denial of SJ of invalidity; claims “merely provide a generic, technological environment (i.e., computers and the Internet) in which to carry out the abstract idea”); Zuili (Fed. Cir. 02/09/18) (aff’g CBM Sec. 101 unpatentability FWD: “generic computer components performing conventional activities”: “web page,” “computing device,” conventional “code” without explaining further, “communication network,” “search engine,” “plurality of links associated with a plurality of websites,” “client side” and “server side” devices); Gree (Fed. Cir. 05/10/21) (non-precedential) (aff’g PTAB that claims reciting “input face configured to detect a touch operation,” and moving objects in game in direction of detected touch, is directed to abstract idea of “associating game objects and moving one or more of the object.” “The touch interface claimed is merely the mechanism by which the focus of the invention—the movement-based rules comprised of the remaining steps in the claims—is executed. This is made clear by the patent’s wholly generic claiming and description of the touch interface, and the claiming of wholly generic touch-screen functionality.”)
  • LendingTree (Fed. Cir. 07/25/16) (Schall, J.) (non-precedential) (rev’g denial of Summ. J. of invalidity; claims “merely provide a generic, technological environment (i.e., computers and the Internet) in which to carry out the abstract idea”). See also Bozeman (Fed. Cir. 04/10/20) (“recording or extracting data from physical documents, such as paper checks, is not alone sufficient to render claims not abstract”).
  • Nor Do Generic Tangible Elements Show That Claim Is Not Directed To An Abstract Idea Or Natural Law: That claim recites some routine and conventional techniques is not relevant to Step One. Illumina (Fed. Cir. 08/03/20) (2-1) (reissued op.) (rev’g Summ. J. of Sec. 101 invalidity).
  • If Step One Determination Of What Claims Are “Directed To” Is A “Close Call,” Defer Consideration Of Narrowing Limitations To Step Two: Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (Where case “presents a ‘close call[ ] about how to characterize what the claims are directed to,’ and “the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea,” we “defer our consideration of the specific claim limitations’ narrowing effect for step two.”).

b) Athena Diagnostics En Banc Rehearing Denial

• Athena Diagnostics (Fed. Cir. 07/03/19) (denial rehearing en banc) (7-5):
  

  Primary Disagreements	Should “inventiveness” of discovery of previously unknown natural law or phenomenon support eligibility? Should specific / narrow / concrete additional steps support eligibility? Does current law create bright-line rule that all diagnostic claims are ineligible? Need the additional steps be non-obvious or merely unconventional, under current law?
  Current State of S. Ct. / Fed. Cir. Law	“Claims focused on detecting new and useful natural laws with conventional steps” are ineligible even if “specific yet purely conventional detection steps.” (Lourie, Reyna, Chen). “New method of treatment” and “unconventional arrangements of laboratory techniques” are eligible. (Lourie, Reyna, Chen). “Cannot premise eligibility solely on the natural law’s novelty.” (Lourie, Reyna, Chen). Under Mayo, claim must “have an inventive concept apart from the recitation of a natural law.” (Chen). “A natural phenomenon itself, no matter how narrow and specific, cannot supply the requisite ‘inventive concept.’” (Dyk, Hughes, Chen). Under Mayo, detecting a law of nature “by using data gathering steps or devices that can be said to be basic, conventional, or obvious, fails § 101.” “Diagnostic claims grounded in novel, non-obvious techniques that render a given diagnosis possess an inventive concept continue to be granted.” (Chen). In Mayo, the “relationship was not a new discovery” and the conventional steps were “‘specified at a high level of generality’”; Mayo suggests “we should consider the level of specificity in the claims.” (Moore, O’Malley, Wallach, Stoll). “I do not understand Mayo to render ineligible a claim which covers a specific, concrete application of a natural law simply because such a claim is diagnostic as opposed to therapeutic.” (Moore, O’Malley, Wallach, Stoll).
  Problems w/ Current Law	“The problem with § 101 arises not in implementing the abstract idea approach of Alice, but rather in implementing the natural law approach of Mayo…. The Mayo test … should leave room for sufficiently specific diagnostic patents.” (Dyk, Hughes). In tension w/ Mayo, “Myriad … recognized that an inventive concept can sometimes come from the discovery of an unknown natural phenomenon and its application for a diagnostic purpose.” (Dyk, Hughes, Chen). The “inventive concept/point of novelty” and “claim dissection’ approach of Flook, Mayo, and Alice (discounting the formula as “assumed to be within the prior art” in Flook and “exclud[ing] the law of nature” from step two’s “ordered combination” in Mayo)) is “largely incompatible” with, and “considerably harder to apply consistently … and more aggressive in its reach” than Diehr’s “‘claim as a whole’ principle, which does not divide the claim into new versus old elements” and in which the novelty of any element is irrelevant. (Chen). Cir. mistakenly has “turned Mayo into a per se rule that diagnostic kits and techniques are ineligible.” (Moore, O’Malley, Wallach, Stoll). “We have established a bright-line rule of ineligibility for all diagnostic claims.” (Stoll, Wallach). Fed. Cir. mistakenly has expanded Mayo. (Newman, Wallach). “The Supreme Court has instructed federal courts to read into Section 101 an ‘inventive concept’ requirement—a baffling standard that Congress removed when it amended the Patent Act in 1952.” (O’Malley).
  What’s Right w/ Current Law	102, 103 and 112 “cannot adequately guard against the dangers of overclaiming” (Dyk, Hughes). There is “a risk that granting overbroad patents could reward a mere concept rather than the work subsequently done by the actual inventor.” (Dyk, Hughes, Chen).
  Wished-For Law	“Uses or detections of natural laws” are eligible. (Lourie, Reyna, Chen). “Differentiate between overly broad patents claiming natural laws and truly worthy specific applications” to permit patenting of “essential life saving inventions based on natural laws.” (Hughes, Prost, Taranto). “There must be a “discover[y]” … and the claims must recite a specific application of that ‘discovery’ with established utility.” (Dyk, Hughes, Chen). Follow Diehr not Flook such that “a practical application of [a] discovered law of nature” is patent eligible. (Chen) “Claims to specific, narrow processes, even if those processes involve natural laws, are not directed to the natural law.” [asserting this is current law] (Moore, O’Malley, Wallach, Stoll). “Concreteness and specificity of the claims … moves them from reciting a law of nature to a particular application of a law of nature.” (Moore, O’Malley, Wallach, Stoll). “Certain diagnostic claims … are so narrowly tailored that preemption is not a reasonable concern.” (Stoll, Wallach). While claim on the discovery of law of nature or natural phenomenon itself should not be eligible, “the inventiveness of the claimed discovery in the process steps should also be considered.” (Moore, O’Malley, Wallach, Stoll). “A discovery can be the basis for a patentable invention.” [asserting this is current law] (Moore, O’Malley, Wallach, Stoll). Must consider the invention as a whole [asserting this is current law] (Newman, Wallach). No “distinction between diagnostic methods and therapeutic methods.” (Newman, Wallach).

c) improvement to computer or machine functionality

• Relevant To Step One (And Step Two) Whether Claim Directed To Improvement To Computer Functionality: Under Enfish (Fed. Cir. 05/12/16), “a relevant inquiry at step one is ‘to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’ We contrasted claims ‘directed to an improvement in the functioning of a computer” with claims ‘simply adding conventional computer components to well-known business practices,’ or claims reciting ‘use of an abstract mathematical formula on any general purpose computer,’ or ‘a purely conventional computer implementation of a mathematical formula,’ or ‘generalized steps to be performed on a computer using conventional computer activity.’” See Adasa (Fed. Cir. 12/16/22) (aff’g Summ. J. that claims not directed to abstract idea, but “to a specific, hardware-based RFID serial number data structure designed to enable technological improvements to the commissioning process,” which “is not a mere mental process, but a hardware-based data structure focused on improvements to the technological process by which that data is encoded,” citing Enfish and Uniloc); Mentone (Fed. Cir. 11/15/21) (non-precedential) (rev’g R. 12(b)(6) dismissal; finding claims recited method for improving operation of computer by using a “shifted USF operation,” so it “improves the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks,’” despite arguable lack of specificity in the claim regarding how USF was shifted, where specification described one specific shifting and claim used coined term); XY (Fed. Cir. 07/31/20) (“the Thales claims and the asserted … claims both recite methods in which at least two sensors or detectors gather data about an object before mathematical operations are applied to the gathered data to generate more accurate information about the object than was previously possible in the art…. Though the asserted claims employ formulas to improve classification and separation of individual particles, the formulas operate to achieve the improved result of the claimed method only when combined with the specific detectors and other flow cytometry limitations in the claims.”); Uniloc (Fed. Cir. 04/30/20) (rev’g R. 12(b)(6) dismissal; claims (whose advance over conventional system was “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station”) are “directed to a specific asserted improvement to the functionality of the communication system itself.” “Claims need not articulate the advantages of the claimed combinations to be eligible.”); CellSpin (Fed. Cir. 06/26/19) (rev’g R. 12(b)(6) dismissal on Step Two, after agreeing claims directed to “idea of capturing and transmitting data from one device to another,” not “improving Internet-incapable data capture devices and mobile networks”); Ancora Tech. (Fed. Cir. 11/16/18) (rev’g R. 12(b)(6) dismissal; “the claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security, and this claimed improvement in computer functionality is eligible for patenting.” “Computers are improved not only through changes in hardware”; “[s]oftware can make non-abstract improvements to computer technology.”); SRI Int’l (Fed. Cir. 03/20/19) (2-1) (aff’g Summ. J. of patent eligibility; “claims are directed to an improvement in computer network technology;” “improves the technical functioning of the computer and computer networks by reciting a specific technique for improving computer network security;” distinguishing Elec. Power Grp. and analogizing to DDR); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer), rehearing denied (Fed. Cir. 05/31/18) (2 concurring Op., 1 dissenting); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; “like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.”); Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment that claims not invalid; claims “employ[] a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; claims “directed to an improved computer memory system” that outperforms and is more efficient than prior memories as described in the Spec.; “we must articulate with specificity what the claims are directed to, and ‘ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’”); McRO (Fed. Cir. 09/13/16) (under Step One holding claims directed to “specific means or method that improves the relevant technology”); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (aff’g denial of JMOL of patent invalidity under Sec. 101: methods and system of displaying information were patent eligible; the claims did not “simply claim displaying information on a graphical user interface” but instead “require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.” “Ineligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology.”); Tranxition (Fed. Cir. 11/16/16) (non-precedential) (aff’g Summ. J. of Sec. 101 invalidity: “For claims solely implemented on a computer, we have previously found it ‘relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.’”; claim recited automating the migration of settings and configuration data between two computers; “the claim is not directed to an improvement to computer functionality. There is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient.”); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (rev’g dismissal order, under step two: “claiming a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems. By taking a prior art filter solution (one-size fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’.”) See Thales Visionix (Fed. Cir. 03/08/17) (rev’g Sec. 101 invalidity judgment on the pleadings: “In terms of the modern day Alice test, the Diehr claims were directed to an improvement in the rubber curing process, not a mathematical formula.”).
• Idea Using Computer Or Other Technology As A Tool Is Not Same As Improving A Basic Function Of  The Computer Or Technology: TecSec (Fed. Cir. 10/23/20) (aff’g Summ. J. claims not directed to abstract idea; “claims are directed to improving a basic function of a computer data-distribution network, namely, network security”); Customedia (Fed. Cir. 03/06/20) (aff’g PTAB FWD ineligible; “by dedicating a section of the computer’s memory to advertising data, the claimed invention ensures memory is available for at least some advertising data. This does not, however, improve the functionality of the computer itself.” Even if invention improved ability to store and transfer data and prevent system inoperability due to insufficient storage, “the claimed invention merely improves the abstract concept of delivering targeted advertising using a computer only as a tool.” Distinguishing 8 Fed. Cir. decisions.); BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “claims are not saved from abstraction [at step one] merely because they recite components more specific than a generic computer”); SAP Am. (Fed. Cir. 08/02/18) (“the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results”);  Secured Mail (Fed. Cir. 10/16/17) (here, “the claims are not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality;” in Enfish, “the claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (2-1 on this issue) (filtering e-mail abstract; distinguishing Bascom)]; cf. Synopsys (Mentor) II (Fed. Cir. 10/17/16) (claims “cannot be characterized as an improvement in a computer as a tool” because “the claims do not call for the involvement of a computer”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“unlike the claims at issue in Enfish, which involved a ‘specific type of data structure designed to improve the way a computer stores and retrieves data in memory,’ [the claim here] does not improve or change the way a computer functions”); TLI Commc’ns (Fed. Cir. 05/17/16) (aff’g mtn. to dismiss: “the focus” of the Spec. “and of the claims was not on an improved telephone unit or an improved server,” rather, the telephone unit is “merely a conduit for the abstract idea”); Elec. Power (Fed. Cir. 08/01/16) (aff’g Summ. J. of invalidity; distinguishing “computer-functionality improvements” from “uses of existing computers as tools in aid of processes focused on ‘abstract ideas’” “In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data.” “the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.”); MyMail II (Fed. Cir.) (08/19/21) (non-precedential) (“conclusory statements” that computer functionality is improved “fail to provide the level of detail our case law requires to establish an improvement in computer functionality”); Smartflash (Fed. Cir. 03/01/17) (non-precedential) (“claims here invoke computers merely as tools to execute fundamental economic practices.”); Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (“there is a distinct difference between software designed to root out malware, a concept the USPTO notes is ‘inextricably tied to computer technology,’ and software designed to automate processes of file categorization and extraction”); Berkheimer (Fed. Cir. 02/08/18) (“That the parser transforms data from source to object code does not demonstrate non-abstractness without evidence that this transformation improves computer functionality in some way.”); see Realtime Data I (Fed. Cir. 10/23/20) (Taranto, J., concurring op.) (“the key doctrinal distinction—derived from Alice, 573 U.S. at 225—between using unimproved computers and networks as tools and improving computers or networks as tools, i.e., improving basic computer or network functions themselves (e.g., processing, memory, input/output, transmission) in specific ways”).
• Providing Useful Information Using A Computer Does Not Improve The Computer: “Arranging information along an axis does not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.” Trading Techs. (IBG) II (Fed. Cir. (04/30/19); Interval Licensing (Fed. Cir. 07/20/18) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement ‘rooted in computer technology.’”).
• Merely Automating What Before Was Done Manually Is Insufficient: “Mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance (Fed. Cir. 06/09/17) (“merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting”); Weisner (Fed. Cir. 10/13/22) (aff’g R. 12(b)(6) dismissal for 2 pats. (rev’g as to two others): “Automation or digitization of a conventional method of organizing human activity like the creation of a travel log on a computer does not bring the claims out of the realm of abstractness.”); OIP Tech. (Fed. Cir. 06/11/15) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”); Univ. of Fla. Research (Fed. Cir. 02/26/19) (patent “seeks to automate ‘pen and paper methodologies’ to conserve human resources and minimize errors. This is a quintessential ‘do it on a computer’ patent: it acknowledges that data from bedside machines was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas.”); In re Morinville (Fed. Cir. 04/29/19) (distinguishing McRO in affirming abstract idea determination by noting that claimed concept was previously implemented manually and stating that “computer-based efficiency” due to automation “does not save an otherwise abstract method”); Ficep (Fed. Cir. 08/21/23) (non-precedential) (aff’g Summ. J. ineligibility: “Automating a previously manual process is not sufficient for patent eligibility.”). But see EcoServices (Fed. Cir. 10/08/20) (non-precedential) (2-1) (relying on McRO and distinguishing OIP Tech. as discussing Step Two; “processes that automate tasks that humans are capable of performing are patent eligible if properly claimed”).
• Step One Can Be Decided Based On The Intrinsic Evidence Alone: “If the extrinsic evidence is overwhelming to the point of being indisputable, then a court could take notice of that and find the claims directed to the abstract idea of automating a fundamental practice—but the court is not required to engage in such an inquiry in every case.” CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of complaint: rejecting argument that court should remand for consideration whether claims were drawn to automating basic diagnostic processes that doctors have long used; “The analysis under Alice step one is whether the claims as a whole are ‘directed to’ an abstract idea, regardless of whether the prior art demonstrates that the idea or other aspects of the claim are known, unknown, conventional, unconventional, routine, or not routine.” “The court need not consult the prior art to see if, in fact, the assertions of improvement in the patent’s written description are true.” “[W]e reserve for §§ 102 and 103 purposes our comparison of the prior art and the claims to determine if the claims are, in fact, an improvement over the prior art.” “[S]tep one of the Alice framework does not require an evaluation of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention.”).
• A Mere Function Is Not An Improvement To How Computers Operate: Univ. of Fla. Research (Fed. Cir. 02/26/19) (software drivers are described [in the Spec.] “in purely functional terms: they … ‘convert received data streams to a format independent of any particular bedside machine.’ “The mere function of converting is not a ‘specific improvement to the way computers operate.’”).
• Improving A User’s Experience Or Efficiency Is Not Itself An Improvement In Computer Functionality: Simio (Fed. Cir. 12/29/20) (dismissing argument that using graphical process instead of conventional programming that is beyond ability of many users, constituted an improvement to computer’s functionality); Customedia (Fed. Cir. 03/06/20) (“improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality”); Trading Techs. (IBG) I (Fed. Cir. 04/18/19) (claims “do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists traders in processing information more quickly.”).
• A Memory Comprising Data Structures That Improve A Computer’s Use Of Information Stored In The Memory May Be Patent Eligible: Claims requiring “specific electronic structural elements which impart a physical organization on the information stored in memory” which “data structures provide increased computing efficiency,” are not mere information content and therefore are not analogous to printed matter. In re Lowry (Fed. Cir. 08/26/94) (rev’g ex parte rejection under Sec. 103 based on giving data structures no patentable weight. Claim: “1. A memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, said data structure including information resident in a database used by said application program and including: a plurality of attribute data objects stored in said memory, ….” Board had reversed Sec. 101 rejection.) Cf. Adasa (Fed. Cir. 12/16/22) (aff’g Summ. J. that claims not directed to abstract idea, but “to a specific, hardware-based RFID serial number data structure designed to enable technological improvements to the commissioning process,” which “is not a mere mental process, but a hardware-based data structure focused on improvements to the technological process by which that data is encoded,” citing Enfish and Uniloc); In re Beauregard (Fed. Cir. 05/12/95) (granting parties’ requested dismissal of ex parte appeal where “the Commissioner now states ‘that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.’ The Commissioner states that he agrees with Beauregard’s position on appeal that the printed matter doctrine is not applicable.”).

d) categories of patent-ineligible subject matter

• 2019 USPTO Eligibility Guidance Recognizes Only Three Of The Court-Recognized Categories Of Abstract Idea: The Patent Office’s 2019 Revised Patent Subject Matter Eligibility Guidance, both original (01/07/19) and amended (10/17/19), recognizes only three of the categories of abstract idea recognized by the Federal Circuit: “mathematical concepts, certain methods of organizing human activities [“fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people”], and mental processes.” This, facially at least, omits two fundamental categories: “1. Collecting, analyzing, classifying, organizing, filtering, storing, manipulating and/or displaying information. 2. Results achieved and functions performed without reciting particular ways (i.e., particular structures and acts) to achieve or perform them.” See Vandenberg Comments (03/04/19). But the Guidance states that it is not substantive rulemaking, does not purport to apply USPTO expertise to correctly interpret the statute, and Fed. Cir. is not bound by the Guidance. In re Rudy (Fed. Cir. 04/24/20) (aff’g ex parte rejection of claims); The Cleveland Clinic II (Fed. Cir. 04/01/19) (non-precedential) (aff’g Sec. 101 invalidity on R. 12(b)(6) motion despite USPTO guidance example on point, because guidance example contrary to Fed. Cir. precedent).
• Intangible Information Is Abstract: “Information, whether displayed in the form of price values or P&L values, is abstract.” Trading Techs. (IBG) II (Fed. Cir. (04/30/19). Information in non-tangible form (“data in its ethereal, non-physical form”) does not fall under any of the categories of eligible subject matter is not patent eligible. Digitech (Fed. Cir. 07/11/14) (Reyna, J.) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information); Allvoice (Fed. Cir. 05/22/15) (O’Malley, J.) (non-precedential) (aff’g Summ. J. of invalidity; claims reciting “speech-recognition interface” comprising various “means” elements “do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter” because, as construed by the patent owner, they “merely claim software instructions without any hardware limitations” and court refuses to imply any tangible medium into claims that recite none). See AT&T (U.S. 04/30/2007) (in context of Sec. 271(f): “Until it is expressed as a computer-readable ‘copy,’ software … remains uncombinable. … Abstract software code is an idea without physical embodiment, and as such, it does not match §271(f)’s categorization: ‘components’ amenable to ‘combination.’”). But see Uniloc (Fed. Cir. 04/30/20) (rev’g R. 12(b)(6) dismissal; claims (whose advance over conventional system was “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station”) are “directed to a specific asserted improvement to the functionality of the communication system itself”).
• Collecting, Analyzing, Classifying, Organizing, Filtering, Storing, Distributing, Manipulating, Displaying Or Otherwise Processing Information (Data) Are Abstract, Regardless Of Information’s Content: “Information as such is an intangible. Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea.” Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.) (aff’g Summ. J. of invalidity); Beteiro (Fed. Cir. 06/21/24) (“The claims … exhibit several features that are well-settled indicators of abstractness. First, the claims broadly recite generic steps of a kind we have frequently held are abstract: detecting information, generating and transmitting a notification based on the information, receiving a message (bet request), determining (whether the bet is allowed based on location data), and processing information (allowing or disallowing the bet).”); Sanderling (Fed. Cir. 04/12/23) (aff’g R. 12(b)(6); “Even though the information being distributed is of a particular variety – here, digital imaging processing based on a distribution rule that determines when a condition is met – distribution of information is an abstract idea.”); IBM (Zillow) (Fed. Cir. 10/17/22) (aff’g R. 12(c) where claim recited “presenting a map, having a user select a portion of that map, and then synchronizing the map and its corresponding list to display a more limited data set to the user”: “Identifying, analyzing, and presenting certain data to a user is not an improvement specific to computing.”); In re Killian (Fed. Cir. 08/23/21) (aff’g ex parte rejection of claims “directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner … [which steps] could be performed by a person reading and comprehending the meaning of the recited information”); Electronic Commc’n I (Fed. Cir. 05/14/20) (aff’g R. 12(c) ineligibility judgment; these claimed functions are abstract: “added measures that purport to increase security—namely, enabling a first party to input authentication information, storing the authentication information, and providing the authentication information along with the advance notice of arrival to help ensure the customer that the notice was initiated by an authorized source,” because longstanding commercial practice, and “amounts to nothing more than gathering, storing, and transmitting information”); Impact Engine (Fed. Cir. 07/03/24) (non-precedential) (“claims recite systems comprising an unordered list of generically named elements (i.e., ‘project builder,’ ‘media repository,’ ‘[formatting/compiling/distribution] engine’) each associated with high-level, broadly articulated, result-defined information-processing functionality”); MyMail II (Fed. Cir. 08/19/21) (non-precedential) (“updating toolbar software over a network without user intervention … amounts to no more than invoking computers as a tool to perform the abstract ideas of collecting information, analyzing information, and presenting the results of the analysis in the software update context.”); Uniloc (Fed. Cir. 05/24/19) (non-precedential) (aff’g dismissal on two patents and rev’g on two: “This is not an improvement in network architecture—it is the use of a computer as a tool to process information.”); Berkheimer (Fed. Cir. 02/08/18) (claims directed to “abstract idea of parsing, comparing, storing, and editing data” similar to claims in TLI Commc’ns and Content Extraction); Univ. of Fla. Research (Fed. Cir. 02/26/19) (claims directed to “collecting, analyzing, manipulating, and displaying data”); Voit Tech. (Fed. Cir. 02/08/19) (non-precedential) (directed to abstract idea of “entering, transmitting, locating, compressing, storing, and displaying data (including text and image data) to facilitate the buying and selling of items”); Glasswall (Fed. Cir. 12/20/18) (non-precedential) (“The claims merely require the conventional manipulation of information by a computer. We have often held similar conventional data manipulation to be abstract.”); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (“while we do not suggest that every claim involving the collection, organization, manipulation, or display of data is necessarily directed to an abstract idea, claim 1 is not meaningfully distinct from claims we have held were directed to abstract ideas in previous cases”); Smart Sys. (Fed. Cir. 10/18/17) (“collection, storage, and recognition of data” is abstract); Credit Acceptance (Fed. Cir. 06/09/17) (“data processing to facilitate financing is a patent-ineligible abstract concept”); West View (Fed. Cir. 04/19/17) (non-precedential) (aff’g judgment on pleadings of Sec. 101 invalidity of 81 claims in 7 pats.; claims directed to an abstract idea because they “do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query,” and not improvement to computer functionality itself); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (“We have previously held other patent claims ineligible for reciting similar abstract concepts that merely collect, classify, or otherwise filter data….[T]he claimed creation of an index used to search and retrieve information stored in a database is similarly abstract.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (“claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data.”); FairWarning (Fed. Cir. 10/11/16) (patent “is directed to or drawn to the concept of analyzing records of human activity to detect suspicious behavior”; “the practices of collecting, analyzing, and displaying data, with nothing more, are practices “‘whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas’”); TDE Petroleum (Fed. Cir. 08/15/16) (non-precedential) (claims directed to “the abstract idea of storing, gathering, and analyzing data”); TLI Commc’ns (Fed. Cir. 05/17/16) (Hughes, J.) (aff’g mtn. to dismiss: “claims are directed to the abstract idea of classifying and storing digital images in an organized manner”); Content Extraction (Fed. Cir. 12/23/14) (Chen, J.) (claims “drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory”); Digitech (Fed. Cir. 07/11/14) (“claims an abstract idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine”); cf. Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; without discussing this line of decisions but approving claims by holding that “these claims are directed to a particular manner of summarizing and presenting information in electronic devices,” and “a specific manner of displaying a limited set of information to the user”).
• Improved Information And Printed Matter Are Patent Ineligible: “An improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.” BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible); Interval Licensing (Fed. Cir. 07/20/18) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information-based improvement is not an improvement ‘rooted in computer technology.’”). “This court has generally found printed matter to fall outside the scope of § 101.” In re Guldenaar Holding (Fed. Cir. 12/28/18) (aff’g Sec. 101 rejection of ex parte appln. claims; markings on dice are printed matter (information) having no functional relationship with the substrate and thus have no patentable weight in a claimed method for playing a dice game and do not constitute “inventive concept” for purposes of Step Two of Alice). “Printed matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is ‘functionally related’ to its ‘substrate,’ which encompasses the structural elements of the claimed invention…. [A] claim may be found patent ineligible under § 101 on the grounds that it is directed solely to non-functional printed matter and the claim contains no additional inventive concept.” C.R. Bard (Fed. Cir. 11/10/20) (rev’g Summ. J. of ineligibility; while “the content of the information conveyed by the claimed markers—i.e. that the claimed access ports are suitable for injection at the claimed pressure and flow rate—is printed matter not entitled to patentable weight”), they are not directed solely to content of the information conveyed but also to radiographic marker used to convey the information during CT imaging); C.R. Bard II (Fed. Cir. 02/17/23) (non-precedential) (rev’g Summ. J. patent ineligibility; bound by C.R. Bard I); In re McKee (CCPA 03/25/35) (“Where the printed matter, irrespective of the material upon which it is printed, is the sole feature of alleged novelty, it does not come within the purview of the statute, as it is merely an abstract idea, and, as such, not patentable.”).
• “Mental Process” Is Ineligible “Abstract Idea”: A “mental process” (all steps can be performed in mind or with aid of pencil of paper) is an abstract idea. “‘Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.’ And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Mayo (U.S. 03/20/2012) (unanimous). In Benson, “the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas.” CyberSource (Fed. Cir. 08/16/11) (invalidating “method” and “computer readable medium” claims (including CRM claim reciting a processor) as being directed to a “mental process” “which can be performed entirely in the human mind,” “or by a human using a pen and paper,” without use of a computer); accord In re Killian (Fed. Cir. 08/23/22) (aff’g ex parte rejection of claims directed to mental process; “The Supreme Court has long held that mental steps fall within the patent-ineligible category of abstract ideas…. We are bound by our precedential decisions holding that steps capable of performance in the human mind are, without more, patent-ineligible abstract ideas.”);  PersonalWeb (Fed. Cir. 08/12/21) (“controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent) … are mental processes that ‘can be performed in the human mind’ or ‘using a pencil and paper’”);     In re Rudy (Fed. Cir. 04/24/20) (aff’g rejection ex parte claims; “this mental process of hook color selection based on a provided chart demonstrates” that claim is directed to an abstract idea); Ericsson (Fed. Cir. 04/14/20) (2-1) (“Controlling access to resources is exactly the sort of process that ‘can be performed in the human mind, or by a human using a pen and paper,’ which we have repeatedly found unpatentable.”); Praxair (Fed. Cir. 05/16/18) (2-1) (“mental steps or processes are not patent eligible subject matter”); Voter Verified (Fed. Cir. 04/20/18) (“human cognitive actions” are patent ineligible); Coffelt (Fed. Cir. 03/15/17) (non-precedential) (aff’g dismissal of complaint: “calculating a particular steradian region of space” “is a purely arithmetic exercise” and “nothing more than a mathematical algorithm that could be implemented using a pen and paper”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (aff’g Summ. J. of invalidity; “claims are directed to an abstract mental process and contain no inventive concept. The claims are therefore invalid.” “the method can be performed mentally or with pencil and paper”); Mortgage Grader (Fed. Cir. 01/20/16) (“The series of steps covered by the asserted claims … could all be performed by humans without a computer.”); Versata II (Fed. Cir. 07/09/15) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“the budgeting calculations at issue here are unpatentable because they ‘could still be made using a pencil and paper’ with a simple notification device, even in real time as expenditures were being made”); Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (aff’g Summ. J. of invalidity; “methods that can be performed in the human mind alone are not eligible for patent protection,” citing CyberSource); Smartgene (Fed. Cir. 01/24/14) (non-precedential) (aff’g Summ. J. of invalidity; CyberSource rested on “Supreme Court decisions indicating that section 101 covers neither “mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps.”); Ass’n for Molecular II (Fed. Cir. 08/16/12) (the S. Ct. has considered the exceptions to patent eligibility as “precluding the patenting of mental processes”), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims). Mental process “untied to another category of statutory subject matter” not eligible for patenting “even when a practical application [is] claimed.” In re Comiskey (Fed. Cir. 01/13/09) (arbitration method) (replacing earlier 09/20/07 decision); Planet Bingo (Fed. Cir. 08/26/14) (non-precedential) (“managing the game of bingo ‘consists solely of mental steps which can be carried out by a human using pen and paper.’ … Like the claims at issue in Benson, not only can these steps be ‘carried out in existing computers long in use,’ but they also can be ‘done mentally.’”; aff’g invalidity under Alice framework); accord In re Bilski (Fed. Cir. 10/30/08), aff’d on other grounds, Bilski v. Kappos (U.S. 06/28/2010). But including a mental step does not make patentable method unpatentable. CyberSource (Fed. Cir. 08/16/11).
  • Claimed “Mental Process” Method Need Not Duplicate How Human Would Perform Steps Mentally: In Benson (U.S. 11/20/1972), the claimed programmed conversion of BCD numerals to pure binary numerals “can be done mentally” and the claimed method “varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation.” See Synopsys (Mentor) II (Fed. Cir. 10/17/16) (Benson recognized that claimed method “had been designed for use on a computer” and “varie[d] the ordinary arithmetic steps a human would use” but nonetheless held the claimed method, which “c[ould] be performed without a computer,” patent-ineligible.); Ficep (Fed. Cir. 08/21/23) (non-precedential) (aff’g Summ. J. ineligibility: “Even accepting Ficep’s argument that that the manual process and claimed automated process differ because the intersection parameters can be extracted directly from the design model, this difference alone does not make the claims non-abstract,” in part because steps still could be performed by a human, and distinguishing McRO claims); Tranxition (Fed. Cir. 11/16/16) (non-precedential) (no “inventive concept”; “it is not relevant that a human may perform a task differently from a computer”).
  • Comparing And Analyzing DNA Sequences Not Patent Eligible: “This claim thus recites nothing more than the abstract mental steps necessary to compare two different nucleotide sequences: one looks at the first position in a first sequence; determines the nucleotide sequence at that first position; looks at the first position in a second sequence; determines the nucleotide sequence at that first position; determines if the nucleotide at the first position in the first sequence and the first position in the second sequence are the same or different, wherein the latter indicates an alteration; and repeats the process for the next position.” Ass’n for Molecular II (Fed. Cir. 08/16/12), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (methods patent-ineligible: comparison of wildtype genetic sequences “correspond to the first step of Alice” in view of breadth of comparisons they cover; and specific recited comparison techniques “were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.”) (addressing other claims from same patent as Ass’n for Molecular II); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of method claims for being directed to naturally occurring phenomena, namely that detecting a signature nucleotide from a sample indicates that the sample contains MTB). But see Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “claims are like thousands of others that recite processes to achieve a desired outcome, e.g., methods of producing things, or methods of treating disease”).
• Mathematical Algorithms Are Abstract Ideas: Methods of calculation and other mathematical algorithms are unpatentable abstract ideas. Benson (U.S. 11/20/1972) (“A procedure for solving a given type of mathematical problem is known as an ‘algorithm.’ The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another.”); Flook (U.S. 06/22/1978) (the “application simply provides a new and presumably better method for calculating alarm limit values. If we assume that that method was also known, as we must under the reasoning in Morse, then respondent’s claim is, in effect, comparable to a claim that the formula 2 r can be usefully applied in determining the circumference of a wheel. . . . ‘[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.’” “Respondent argues that the inventiveness of his process must be determined as of ‘the time the invention is made’ under § 103, and that, therefore, it is improper to judge the obviousness of his process by assessing the application of the formula as though the formula were part of the prior art. This argument confuses the issue of patentable subject matter under § 101 with that of obviousness under § 103. Whether or not respondent’s formula can be characterized as ‘obvious,’ his process patent rests solely on the claim that his mathematical algorithm, when related to a computer program, will improve the existing process for updating alarm units. Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.” “the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.”); Diehr (U.S. 03/03/1981) (Flook “made it clear that an improved method of calculation, even when employed as part of a physical process, is not patentable subject matter under § 101.”); Bilski v. Kappos (U.S. 06/28/2010); “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.”); In re Board of Trustees (Stanford) (Fed. Cir. 03/25/21) (aff’g ex parte rejection: “That a specific or different combination of mathematical steps yields more accurate haplotype predictions than previously achievable under the prior art is not enough to transform the abstract idea in claim 1 into a patent eligible application.”); In re Board of Trustees (Stanford) (Fed. Cir. 03/11/21) (aff’g ex parte rejection: “The alleged innovation accomplished in [claim] is in the mathematical analysis itself, namely, in the receipt of data, executing mathematical calculations, and storing the resulting data.”); SAP Am. (Fed. Cir. 08/02/18)  (“the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.”); Digitech (Fed. Cir. 07/11/14) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”);  CardioNet (Fed. Cir. 10/29/21) (non-precedential) (claims require “only basic mathematical calculations, such as ‘decompos[ing] a T wave into its constituent frequencies and multipl[ying] them by a filter frequency response.’ And such calculations, even if ‘[g]roundbreaking,’ are still directed to an abstract idea.”); Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precedential) (claims “apply a mathematical methodology to convert geospatial coordinates into a single string of natural numbers.”). “It is of no moment that the algorithm is not expressed in terms of a mathematical formula. Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams (Fed. Cir. 11/03/89) (“mathematical algorithms join the list of non-patentable subject matter not within the scope of section 101;” most steps in claim “analyze that data to ascertain the existence and identity of an abnormality, and possible causes thereof. In that regard, [they] are in essence a mathematical algorithm, in that they represent ‘[a] procedure for solving a given type of mathematical problem.’”); In re Walter (CCPA 03/27/80) (“The calculations are the beginning and end of the claims. Thus, this case falls squarely within the holding in Flook, and the claims must be held to be nonstatutory.”); In re Gelnovatch (CCPA 03/08/79) (rejecting claims to “an iterative method for arithmetically determining a set of process outputs which provide the calculated response most nearly equivalent to a goal response for a mathematical model of a microwave circuit.”); In re Sarkar (CCPA 12/07/78) (aff’g rejection of claims on a “technique for mathematically modeling an open channel, e. g., a natural stream or artificial waterway” having obstructions such as dams or bridges, and other complexities, including claim reciting construction of such obstruction; “No mathematical equation can be used, as a practical matter, without establishing and substituting values for the variables expressed therein. Substitution of values dictated by the formula has thus been viewed as a form of mathematical step. If the steps of gathering and substituting values were alone sufficient, every mathematical equation, formula, or algorithm having any practical use would be per se subject to patenting as a “process” under § 101.”); But see XY (Fed. Cir. 07/31/20) (“Diehr’s claims and the asserted claims … each represent a purported improvement to otherwise known industrial or laboratory processes through specific application of mathematical algorithms.”); McRO (Fed. Cir. 09/13/16) (approving under Step One claimed method gathering mathematical rules and other abstract information and using them to calculate other abstract information for use in an automated character animation process, without analyzing whether claims directed to a mathematical algorithm as argued by the defendants).
• Logical Structures And Processes Provided By Software—Not Defined By Reference to Physical Components—Not Necessarily Abstract: “Software can make non-abstract improvements to computer technology.” “That the improvement is not defined by reference to ‘physical’ components does not doom the claims. To hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents. Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or Alice, or our cases, an exclusion to patenting this large field of technological progress.” Enfish (Fed. Cir. 05/12/16) (rev’g Summ. J. of patent-ineligibility).  See In re Warmerdam (Fed. Cir. 08/11/94) (application claim reciting a “data structure” formed by manipulation of mathematical constructs patent ineligible where per its dictionary meaning, “data structure is defined as ‘[a] physical or logical relationship among data elements, designed to support specific data manipulation functions’”).
• Contractual Relations Are Abstract Ideas: Arrangements involving contractual relations, which are intangible entities, are an abstract idea, under Bilski and Alice. buySAFE (Fed. Cir. 09/03/14) (2-0) (aff’g judgment on the pleadings).
• Results, Effects And Functions—Without Reciting How (“A Particular Way”) They Are Achieved Or Performed—Are Abstract Ideas: There are “two different ‘how’ requirements in patent law. The first such requirement, that of eligibility, is that the claim itself (whether by its own words or by statutory incorporation of specification details under section 112(f)) 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.” Am. Axle (Fed. Cir. 07/31/20) (2-1) (aff’g Summ. J. some method-of-manufacturing claims directed to a natural law; claims like Flook but unlike Diehr. “What is missing is any physical structure or steps for achieving the claimed result. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work.”); SG Brief (05/24/22) (urging cert. grant in American Axle; “The long-settled patent law meaning of ‘process’ requires not merely a ‘result,’ but also ‘a mode of treatment’ or ‘series of acts’ that will ‘produce’ it. Diehr, 450 U.S. at 183 (citation omitted). Section 101 thus does not permit, for example, a claim for illuminating dark rooms by any efficacious means, or for doing so in any way that involves electricity. Such claims identify a goal to be achieved, but do not recite a ‘process’ for achieving it.”). See Rubber-Tip (U.S. 1874) (“An idea of itself is not patentable, but a new device by which it may be made practically useful is.”); IBM (Zillow) (Fed. Cir. 10/17/22) (patent “is result-oriented, describing required functions (presenting, receiving, selecting, synchronizing), without explaining how to accomplish any of the tasks”); Hawk Tech. (Fed. Cir. 02/17/23) (aff’g R. 12(b)(6); claims “require the functional results of “receiving video images,” “digitizing any of the images not already in digital form,” “displaying one or more of the digitized images,” “converting one or more of the video source images into a selected video format,” “storing at least a subset of the converted images,” “providing a communications link,” “receiving . . . a request to receive one or more specific streams of the video images,” “transmitting . . . a version of one or more of the video images,” and “displaying only the one or more requested specific streams of the video images”); Free Stream (Fed. Cir. 05/11/21) (rev’g denial of R. 12(b)(6) dismissal; the “claims provide for how that is achieved only by stating that the mechanism used to achieve this communication is by piercing or otherwise overcoming a mobile device’s security sandbox. But the asserted claims do not at all describe how that result is achieved”); Ericsson (Fed. Cir. 04/14/20) (2-1) (rev’g Summ. J. denial; claims silent as to how recited result actually achieved); Int’l Business Machines (Fed. Cir. 01/09/24) (non-precedential) (2-1) (claim “uses results-oriented language, such as ‘receiving a resource response set of results,’ ‘receiving a user context vector,’ ‘mapping the user context vector,’ and ‘controlling the presentation of the resource response set,’ without any explanation for how these steps are carried out”); Purecircle (Fed. Cir. 01/02/04) (non-precedential) (aff’g Sec. 101 invalidity; claim “simply states a result, conversion of Reb D to Reb X wherein the conversion is at least about 50% complete. The claim does not provide any steps or give guidance as to how to achieve a 50% conversion other than the direction to use a natural enzyme. Claim 14 is directed to subject matter that is a natural phenomenon.”); Realtime Data II (Fed. Cir. 08/02/23) (non-precedential) (aff’g R. 12 dismissal: the claims “are ‘data manipulation’ claims that are recited at a high ‘level of result-oriented generality’ and that lack ‘sufficient recitation of how the purported invention[s]’ accomplish the results”); Aftechmobile (Fed. Cir. 07/13/21) (non-precedential) (aff’g R. 12(b)(6) dismissal; “the recitation of desired functions without corresponding recitations on how to achieve or implement those functions leaves the claims devoid of anything but the abstract idea.”); In re Gopalan (Fed. Cir. 04/13/20) (non-precedential) (aff’g rejection ex parte appln; claims recited generic variables without defining or concretely limiting them, so the claims recited only the desired result). The “distinction between results and means is fundamental to the step 1 eligibility analysis, including in law-of-nature cases, not just abstract-idea cases.” “A patent is not good for an effect, or the result of a certain process” because such patents “would prohibit all other persons from making the same thing by any means whatsoever.” Le Roy v. Tatham, 55 U.S. 156, 175 (1853); Corning v. Burden, 56 U.S. 252, 268 (1853) (patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”). “A claimed invention must embody a concrete solution to a problem having ‘the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.’” Interval Licensing (Fed. Cir. 07/20/18) (aff’g R. 12(c) invalidity of CRM claims; “the claimed ‘attention manager,’ broadly construed as any ‘system’ for producing that result [“our function-based construction of ‘attention manager’”; the “result-centric construction”; “defining that term by the result it yields, not by its structural design or any mode for producing the result”], is not limited to a means of locating space on the screen unused by a first set of displayed information and then displaying the second set of information in that space. The claim limitations for accessing, scheduling, and then displaying the second information set are conventional functions stated in general terms and do not further define how the attention manager segregates the display of two sets of data on a display screen.”); Univ. of Fla. Research (Fed. Cir. 02/26/19) (“Neither the … patent, nor its claims, explains how the drivers do the conversion …. [T]he drivers are described [in the Spec.] in purely functional terms: they ‘facilitate data exchanges,’ ‘convert received data streams to a format independent of any particular bedside machine,’ ‘translate the data stream,’ ‘interpret data streams,’ ‘facilitate communications with the bedside machine,’ and ‘interpret [discrete] segments’ in a ‘data stream for the machine.’ [In claim, the driver is] recited in purely functional language: ‘at least one bedside machine configured for particular ones of said bedside machines to facilitate data exchanges between said bedside machines and said bedside computing device.’ The mere function of converting is not a ‘specific improvement to the way computers operate.’”); Dropbox (Fed. Cir. 06/19/20) (non-precedential) (aff’g dismissal of all three asserted patents in part for claims being directed to functional results not technological solutions, including an “access checker” “black box”); Cisco (Fed. Cir. 05/13/20) (non-precedential) (aff’g R. 12(c) judgment of ineligibility; claim “broadly claims solving the problem of master stations potentially having inefficient antennas by choosing the station with the best antenna. The claim does not specify any particular metric or method for ranking.”); Ameranth (Fed. Cir. 11/01/19) (non-precedential) (“the claims do not describe the software other than results sought to be achieved”); In re Greenstein (Fed. Cir. 07/12/19) (non-precedential) (“the claims do not provide any concrete solution. Instead, they provide functional, results-oriented limitations like others we have held to be directed to abstract ideas.”); Innovation Sciences (Fed. Cir. 07/02/19) (non-precedential) (“The claim seeks to capture the broad concept of switching to a more secure server, rather than a specific way to do so.”); Glasswall (Fed. Cir. 12/20/18) (non-precedential) (“The claims at issue in both patents do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data. Instead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.”);  SAP Am. (Fed. Cir. 08/02/18)  (The claims in McRO “had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.”); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (claim “is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to something other than the abstract idea…. While the claim limitations provide steps for using the computer to perform the search, they contain no technical details or explanation of how to implement the claimed abstract idea using the computer…. Instead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.”); Two-Way Media (Fed. Cir. 11/01/17) (aff’g R. 12(c) invalidity; claim “recites a method for routing information using result-based functional language. The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way,” even under the patent owner’s proposed constructions); Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability determination and rev’g Sec. 101 patentability on some claims: “the claims in these patents are directed to an abstract idea. The patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems. Essentially, the claims are directed to certain functionality—here, the ability to generate menus with certain features.”; relying on absence of disclosure in the Spec. as to how result achieved: “the linked orders claim limitation calls for the desired result of associating a customer’s order with said customer, and does not attempt to claim any method for achieving that result” and Spec. “refers to the use of handwriting and voice capture technologies without providing how these elements were to be technologically implemented”); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“The patent, however, does not disclose any particular mechanism for wirelessly streaming content to a handheld device. … The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (“There is nothing in claim 1 that is directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.”); Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) (aff’g mtn. to dismiss and Sec. 101 invalidity: “the character of the claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms”; “IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon.” “The end result of ‘maintaining the state’ is described as the innovation over the prior art,” but “claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation.”); Uniloc (Fed. Cir. 05/24/19) (non-precedential) (aff’g dismissal of complaint on two patents and rev’g on two; “the claim is wholly functional and does not include the ‘specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.’”); Bridge & Post (Fed. Cir. 07/05/19) (2-1) (Bryson, J., dissenting in part) (“The distinction between claims that recite functions or results (the “what it does” aspect of the invention) and those that recite concrete means for achieving particular functions or results (the “how it does it” aspect of the invention) is an important indicator of whether a claim is directed to an abstract idea.”); Cf. Credit Acceptance (Fed. Cir. 06/09/17) (“the claims do not provide details as to any non-conventional software for enhancing the financing process”). But see Koninklijke KPN (Fed. Cir. 11/15/19) (rev’g Rule 12(c) judgment of ineligibility; “by requiring that the permutation applied to original data be modified ‘in time,’ [the claim] recites 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.” Distinguishing “data manipulation” precedents: “Absent sufficient recitation of how the purported invention improved the functionality of a computer, the ‘improvement’ captured by those claims was recited at such a level of result-oriented generality that those claims amounted to a mere implementation of an abstract idea on a computer, not the specific way to improve the functionality of a computer.”); Data Engine I (Fed. Cir. 10/09/18) (rev’g R. 12(c) invalidity; patents “solved this known technological problem in computers in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment;” claims “recite 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).”); Core Wireless (Fed. Cir. 01/25/18) (aff’g Summ. J. of no Sec. 101 invalidity; “these claims are directed to a particular manner of summarizing and presenting information in electronic devices,” “a specific manner of displaying a limited set of information to the user.”); Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment of no Sec. 101 invalidity; although “even an innovative result, is not itself patent eligible,” claims “recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result.”); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; rejecting dissent’s position that claims directed to a result without specifying how achieved: “both the specification and the claims expressly state that this improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (Reyna, J., dissenting in part) (long discussion; arguing that the specific means may be software and need not be tangible).
• Transitory, Propagating Signal Not Patent Eligible, If Not Limited To Particular Physical Form: Although physical, a transitory, propagating signal does not fall within one of the four statutory classes of patentable subject matter under Sec. 101, if a particular physical form is not specified. In re Nuijten (Fed. Cir. 09/20/07) (“A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.”); Mentor Graphics (Fed. Cir. 03/16/17) (aff’g indefiniteness; Spec. defined a “machine-readable medium” as including “carrier waves”); Sequoia (Fed. Cir. 04/12/23) (rev’g 101 invalidity and construction that that “computer-readable recording medium storing instructions” encompassed transitory signals based on claim language and because no embodiment in Spec. was transitory); Ex parte Mewherter (PTAB 05/08/13) (precedential in part) (rejecting “machine readable storage medium” claim under Sec. 101 because Spec. did not exclude transitory carrier waves and “storage” (under broadest reasonable interpretation) does not exclude such transitory signals because “data can be copied and held by a transitory recording medium, albeit temporarily, for future recovery”). See Allvoice (Fed. Cir. 05/22/15) (non-precedential) (claims reciting “speech-recognition interface” comprising various “means” elements “do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter” because, as construed by the patent owner, they “merely claim software instructions without any hardware limitations” and court refuses to imply any tangible medium into claims that recite none).
• Applying Old Practice To New Environment Is Abstract Idea: Simio (Fed. Cir. 12/29/20) (“Simply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.”); FairWarning (Fed. Cir. 10/11/16) (in holding claims directed to an abstract idea, noting: “claims merely implement an old practice in a new environment”).
• Business Model Not Patent Eligible: claimed “business model for an intangible marketing company” is not a machine or other category of patentable subject matter. In re Ferguson (Fed. Cir. 03/06/09).
• Certain Methods of Organizing Human Activity Such As Longstanding Business Practices Not Patent Eligible: Alice Corp. (U.S. 06/19/2014) (noting that the abstract idea of hedging in Bilski is “a method of organizing human activity, not a ‘truth’ about the natural world ‘that has always existed’”); Enfish (Fed. Cir. 05/12/16) (“We contrasted claims ‘directed to an improvement in the functioning of a computer’ with claims ‘simply adding conventional computer components to well-known business practices’”); TLI Commc’ns (Fed. Cir. 05/17/16) (“we have applied the ‘abstract idea’ exception to encompass inventions pertaining to methods of organizing human activity.”); Esignature (Fed. Cir. 07/03/24) (non-precedential) (“The district court did not conclude that applying digital signatures in an electronic document was, itself, a longstanding business practice. Nor did it need to. Instead, it concluded that applying signatures in designated places on documents was a longstanding business practice—and that claim 1, due to its purely functional and generic implementation, amounts to little more than saying: do that on a computer.”); Netsoc (Fed. Cir. 12/31/20) (non-precedential) (aff’g R. 12(b)(6) dismissal; ““maintaining” a list of participants, “presenting” a user with selectable categories, “displaying” participant information based on the selected category, “shielding” contact information, “enabling” the user to send a message to participants, “tracking” a response time of participants, and “updating” participant ratings are all human activities that the claims more efficiently organize by applying them to a “network computer system.””); In re: Morinville (Fed. Cir. 04/29/19) (non-precedential) (claims directed to an abstract idea of “a business administration concept for management of a business, i.e., a conventional business practice long prevalent in our system of commerce”).
• Non-Method Claims Must Recite Something Physical Or Tangible; But Must Method Claim Recite Something Physical Or Tangible?: “For all categories except process claims, the eligible subject matter must exist in some physical or tangible form.” Digitech (Fed. Cir. 07/11/14) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information); In re Wang (Fed. Cir. 06/20/18) (non-precedential) (aff’g rejection of claims under section 101: “Because the phonetic symbol system that is the subject of Mr. Wang’s claimed invention is not a ‘concrete thing,’ a ‘tangible article,’ or ‘a combination of two or more substances,’ it plainly does not meet the ‘physical or tangible form’ requirement of section 101.”) But see Cochrane (U.S. 1876) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery.”); buySAFE (Fed. Cir. 09/03/14) (2-0) (“the provision also excludes the subject matter of certain claims that by their terms read on a human-made physical thing (‘machine, manufacture, or composition of matter’) or a human-controlled series of physical acts (‘process’) …. Such a claim falls outside section 101 if (a) it is ‘directed to’ matter in one of the three excluded categories and (b) ‘the additional elements’ do not supply an ‘inventive concept’ in the physical realm of things and acts—a ‘new and useful application’ of the ineligible matter in the physical realm—that ensures that the patent is on something ‘significantly more than’ the ineligible matter itself.”).
• TIPS:
  
  
  
• Composition Or Manufacture Made From Natural Product But With Different Characteristics And With Utility, Is Patent Eligible: “A claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and ‘the potential for significant utility.’” Natural Alternatives (Fed. Cir. 03/15/19) (rev’g R. 12(c) judgment of invalidity; product claims are “directed to specific treatment formulations that incorporate natural products, but they have different characteristics and can be used in a manner that beta-ala-nine as it appears in nature cannot”).
• Natural Cause Of An Ailment Is Patent Ineligible; New Treatment Is Patent Eligible: Precedents “insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo (U.S. 03/20/2012) (claims recite “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm” and “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field”). “Claiming a natural cause of an ailment and well-known means of observing it is not eligible for patent because such a claim in effect only encompasses the natural law itself. But claiming a new treatment for an ailment, albeit using a natural law, is not claiming the natural law.” Athena Diagnostics (Fed. Cir. 02/06/19) (2-1) (aff’g Rule 12(b)(6) dismissal for Sec. 101 invalidity; claim reciting “(1) contacting MuSK or an epitope thereof having a 125I label, with bodily fluid; (2) immunoprecipitating any antibody/MuSK complex; and (3) monitoring for the label on the complex, wherein the presence of the label indicates the presence of a MuSK-related disorder,” is directed to natural law of “the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK related neurological diseases like MG,” because “the additional recited steps only apply conventional techniques to detect that natural law”). See Illumina (Fed. Cir. 08/03/20) (2-1) (reissued op.) (rev’g Summ. J. of patent ineligibility; “This is not a diagnostic case. And it is not a method of treatment case. It is a method of preparation case.” Claimed method “remove[s] some maternal DNA in blood to produce a mixture enriched in fetal DNA.”).
• Isolated DNA Molecules Are Not Patent Eligible, But Synthetic cDNA Are: “Genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” “It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” “Myriad did not create anything. . . . separating that gene from its surrounding genetic material is not an act of invention.” That isolated DNA gene is a non naturally occurring molecule does not save claims because claims focus on the genetic information encoded rather than being “expressed in terms of chemical composition.” Others therefore cannot avoid claims by, e.g., adding one additional nucleotide pair. Ass’n for Molecular (Myriad) (U.S. 06/13/2013), rev’g in part, Ass’n for Molecular II (Fed. Cir. 08/16/12) (“the claims cover molecules that are markedly different—have a distinctive chemical structure and identity—from those found in nature.” Isolated DNA is not “purified” natural DNA; rather it “has been cleaved (e., had covalent bonds in its backbone chemically severed)). “A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature.” In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (patent-ineligible: claims directed to unmutated “primers, which are ‘short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].’” “it makes no difference that the identified gene sequences are synthetically replicated.”); accord Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of primer claims for being directed to naturally occurring phenomena; claimed unmutated primers “have the identical nucleotide sequences as naturally occurring DNA” (despite their 3-prime end and a 3-prime hydroxyl group) [O’Malley, J., concurring, suggests full court should revisit precedent on such primers]). “Where claims of a method patent are directed to an application that starts and ends with a naturally occurring phenomenon, the patent fails to disclose patent eligible subject matter if the methods themselves are conventional, routine and well understood applications in the art.” Ariosa (Fed. Cir. 06/12/15) (aff’g Summ. J. of Sec. 101 invalidity; claims recited “amplifying cffDNA contained in a sample of plasma or serum from a pregnant female, detecting paternally inherited cffDNA, and making diagnoses based thereon”).
• Isolated Product Structurally And Functionally Same As Product Of Nature In Non-Isolated Form, Not Patent Eligible: Chromadex (Fed. Cir. 02/13/23) (aff’g Summ. J. patent ineligibility under Chakrabarty, Myriad, and Natural Alternatives where only difference between at least one claimed embodiment of dietary supplement containing “NR” and natural milk is that the nicotinamide riboside (“NR”), a form of vitamin B3 naturally present in trace amounts in non-isolated form in natural milk, is isolated in claimed embodiment, because “the isolated NR is no different structurally or functionally from its natural counterpart in milk”). But see Chakrabarty (U.S. 06/16/1980) (approving as patent eligible application claims to a genetically engineered bacterium “capable of breaking down multiple components of crude oil,” a property no naturally occurring bacteria possessed, making it “a product of human ingenuity having a distinctive name, character [and] use” and “markedly different characteristics from any found in nature and one having the potential for significant utility”).
• Genetically Identical Clone Not Patent Eligible: In re Roslin Institute (Fed. Cir. 05/08/14) (Dyk, J.) (genetic clone not patent eligible: “Dolly’s genetic identity to her donor parent renders her unpatentable;” “the claims do not describe clones that have markedly different characteristics from the donor animals of which they are copies”).
• But cDNA Molecules Are Patent Eligible: “Creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring.” “The lab technician unquestionably creates something new when cDNA is made,” and it therefore is not a product of nature. Ass’n for Molecular (Myriad) (U.S. 06/13/2013), aff’g in part, Ass’n for Molecular II (Fed. Cir. 08/16/12).
• Screening Using Transformed Cells Is Patent Eligible: “Claim 20 recites a method that comprises the steps of (1) growing host cells transformed with an altered BRCA1 gene in the presence or absence of a potential cancer therapeutic, (2) determining the growth rate of the host cells with or without the potential therapeutic, and (3) comparing the growth rate of the host cells. Claim 20 thus recites a screening method premised on the use of “transformed” host cells” that are not naturally occurring. Ass’n for Molecular II (Fed. Cir. 08/16/12), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims); but see Mayo (U.S. 03/20/2012) (unanimous).
• Method Of Treating Patient More Likely To Be Patent Eligible Than Method Of Diagnosing Patient: Compare Endo Pharma. (Fed. Cir. 03/28/19) (Stoll, J.) (rev’g R. 12(b)(6) dismissal; “claims are directed to a patent-eligible method of using oxymorphone or a pharmaceutically acceptable salt thereof to treat pain in a renally impaired patient,” based in part on Spec. describing invention as method of treating pain; not directed to natural law; analogizing to Vanda and distinguishing Mayo); Natural Alternatives (Fed. Cir. 03/15/19) (rev’g R. 12(c) judgment of invalidity; method claims “are treatment claims and as such they are patent eligible;” they “cover using a natural product in unnatural quantities to alter a patient’s natural state, to treat a patient with specific dosages;” and the Patent Act “expressly permits patenting a new use of an existing product”) and Vanda Pharm. (Fed. Cir. 04/13/18) (Lourie, J.) (2-1) (aff’g judgment of patent eligibility under Step One and distinguishing Mayo as addressing claims directed to method of diagnosis with conventional treatment step: claims “require a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay. [Spec. explains] how certain ranges of administered iloperidone correlate with the risk of QTc prolongation. Thus, the ’610 patent claims are ‘a new way of using an existing drug’ that is safer for patients because it reduces the risk of QTc prolongation.’”) with Mayo (U.S. 03/20/2012) (invalid under Sec. 101: “A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising: (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder, wherein the level of 6-thioguanine less than about 230 pmol per 8×10⁸ red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and wherein the level of 6-thioguanine greater than about 400 pmol per 8×10⁸ red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.”).

e) McRO

• The McRO Decision: McRO (Fed. Cir. 09/13/16) (rev’g invalidity judgment on the pleadings) upheld claimed methods “automatically animating lip synchronization and facial expression of three-dimensional characters comprising” obtaining certain rules and information and generating output information in part by “evaluating” the input information against the rules, and then “applying” the output data “to produce lip synchronization and facial expression control of said animated characters.” Previously, human animators, using computers, would create that output data without using rules. The panel construed the claims as limited to “specific, limited mathematical rules” having a specific characteristic and ruled that this particular type of “unconventional rules” allegedly improved both the speed and the reliability of the animation process. The court held that the claim “is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.” The decision upheld the claims under Step One, that the special rules were not used previously by animators, automated tasks not previously performed by animators, provided an improvement to the existing technological process, and did not preempt “all processes for achieving automated lip-synchronization of 3-D characters” or “all techniques for automating 3-D animation that rely on rules.” While the resulting “sequence of synchronized, animated characters … may not be tangible, there is nothing that requires a method ‘be tied to a machine or transform an article’ to be patentable.” The concern underlying the exceptions to § 101 is not tangibility, but preemption.” “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. [The claim], therefore, is not directed to an abstract idea.” Accord Secured Mail (Fed. Cir. 10/16/17) (Reyna, J.) (“The claims of the three sets of patents are not limited by rules or steps that establish how the focus of the methods is achieved.”); FairWarning (Fed. Cir. 10/11/16) (“The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers.” “[T]he traditional process and newly claimed method stood in contrast: while both produced a similar result, i.e., realistic animations of facial movements accompanying speech, the two practices produced those results in fundamentally different ways.”); Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (distinguishing McRO “where the claims incorporated an in-depth, extensive set of rules that enabled computers to automate phenomes in 3-D animation, eliminating the previous need for human-intermediated judgment and steps”).
• TIPS: Responding To McRO (Fed. Cir. 09/13/16)
  

f) Alice step two

• Second Step of Mayo/Alice Analysis: Additional (Non-Abstract) Elements (Features) = Inventive Concept In Application Of The Idea?: Second, “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application. We have described step two of this analysis as a search for an ‘inventive concept’—e., 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.’” Alice Corp. (U.S. 06/19/2014) (citations omitted) (using a computer “to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping — one of the most basic functions of a computer.” “The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry.”); Mayo (U.S. 03/20/2012) (discussing Flook: the other claim limitations “were all ‘well known,’ to the point where, putting the formula to the side, there was no ‘inventive concept’ in the claimed application of the formula.”); Flook (U.S. 06/22/1978) (“Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.”); “The introduction of a computer into the claims does not alter the analysis at Mayo step two.” Alice Corp. (U.S. 06/19/2014). “In applying step two of the Mayo/Alice analysis, our task is to ‘determine whether the claims do significantly more than simply describe [the] abstract method’ and thus transform the abstract idea into patentable subject matter.” Affinity Labs (Direct TV) (Fed. Cir. 09/23/16). See Two-Way Media (Fed. Cir. 11/01/17) (“no saving inventive concept”). “Step two of the Alice inquiry is a lifeline by which claims that are deemed to be directed to patent ineligible subject matter may be saved.” Whitserve (Fed. Cir. 04/26/21) (non-precedential) (aff’g R. 12(b)(6) dismissal). But see Chromadex (Fed. Cir. 02/13/23) (noting that Court need not reach Step Two because Myriad, decided after Mayo, did not proceed to step two after determining under Chakrabarty that claims covered an embodiment without “markedly different characteristics” from natural product).
  • No “Inventive Concept” In Application: Chewy (Fed. Cir. 03/05/24) (aff’g Summ. J. patent ineligibility despite expert declaring (for different claims) that “claimed method of identifying advertisements based on search results [not search queries] allows for the use of off-line batch processing to increase processing efficiency,” and “assigning a session value at the time a user submits a search query, rather than attempting to recreate a user’s session after it has ended, requires ‘less processing . . . on the backend’”); Electronic Commc’n I (Fed. Cir. 05/14/20) (aff’g R. 12(c) ineligibility judgment; claim fails Step Two because “is specified at a high level of generality, is specified in functional terms, and merely invokes well-understood, routine, conventional components and activity to apply the abstract idea”); Ericsson (Fed. Cir. 04/14/20) (2-1) (rev’g Summ. J. denial; alleged inventive concepts neither recited in claims nor required through claim construction); In re Gopalan (Fed. Cir. 04/13/20) (aff’g rejection ex parte appln.; limitation regarding implementing strategy was not an inventive concept because it was recited at “a high level of generality” and how to implement it was “well known”); Customedia (Fed. Cir. 03/06/20) (aff’g PTAB in CBM; “the claims recite only generic computer components, including a programmable receiver unit, a storage device, a remote server and a processor.”); Am. Axle (Fed. Cir. 07/31/20) (2-1) (aff’g Summ. J. some claims directed to natural law and not saved by an “inventive concept;” a mere “desired result” cannot be the “inventive concept”); SG Brief (05/24/22) (urging cert. grant; “the Court [in Mayo and Alice] did not intend to endorse a categorical rule that conventional claim elements should be disregarded in determining whether particular claims reflect an ‘inventive concept,’ or ‘add enough’ to natural laws or phenomena, so as to warrant patent protection”); CardioNet (Fed. Cir. 10/29/21) (non-precedential) (rev’g denial of R. 12(c), where all but the abstract idea was conventional); Sensormatic (Fed. Cir. 07/14/21) (non-precedential) (“Providing generic devices that communicate with each other, however, is a conventional application of an abstract idea.”); Bridge & Post (Fed. Cir. 07/05/19) (non-precedential) (Prost, C.J.) (“Where a claim’s ‘essential advance’ is abstract, a novel method of performing that advance ‘does not avoid the problem of abstractness.’”); SAP Am. (Fed. Cir. 08/02/18)  (“all of the claim details identified by InvestPic fall into one or both of two categories: they are themselves abstract; or there are no factual allegations from which one could plausibly infer that they are inventive. In these circumstances, judgment on the pleadings that the claims recite no “inventive concept” is proper.”); Move, Inc. (Fed. Cir. 02/01/18) (non-precedential) (Spec. statement that “the present invention may be implemented on an IBM or compatible personal computer system,” supports no inventive concept); Smart Sys. (Fed. Cir. 10/18/17) (processor, hash identifier, identifying token, writeable memory, etc. are generic computer implementation); Secured Mail (Fed. Cir. 10/16/17) (claims “are non-specific and lack technical detail. Rather than citing a specific way to solve a specific problem as in DDR, the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology,” as shown in part in Spec.); Audatex (Fed. Cir. 07/27/17) (non-precedential) (aff’g PTAB decision substitute claims unpatentable under Sec. 101; “no more than … ‘perfectly conventional’ generic computer components employed in a customary manner: “a web site,” “web pages,” “a client computer,” “an electronic communication network,” “a database,” “a web server,” “a valuation server” and “active server pages” (ASPs).); Prism Tech. (Fed. Cir. 06/23/17) (non-precedential) (rev’g denial of JMOL of invalidity under step two; patents “themselves demonstrate the conventional nature of these hardware identifiers.”); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (“While limiting the index to XML tags certainly narrows the scope of the claims, in this instance, it is simply akin to limiting an abstract idea to one field of use or adding token post solution components that do not convert the otherwise ineligible concept into an inventive concept.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (aff’g Summ. J. of Sec. 101 invalidity; “merely describe the functions of the abstract idea itself, without particularity.”); Smartflash (Fed. Cir. 03/01/17) (non-precedential) (rev’g trial court denial of JMOL: “‘storing payment data on the data carrier,’ ‘transmitting payment validation data to the data access terminal and having the terminal retrieve the digital content from the data supplier in response,’ and ‘writing on the data carrier ‘access rules’ that are dependent on the amount of payment,’” are routine computer activities: “merely storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not ‘transform the nature of the claim’ into a patent-eligible application.”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (“given that the claims are for a mental process, assignment conditions, which merely aid in mental translation as opposed to computer efficacy, are not an inventive concept”); TDE Petroleum (Fed. Cir. 08/15/16) (non-precedential) (no inventive concept in “storing state values, receiving sensor data, validating sensor data, or determining a state based on sensor data” (collected from an oil well drill); claims “recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application”); Elec. Power (Fed. Cir. 08/01/16) (no “inventive concept in application of that abstract idea”: claims “specify what information in the power-grid field it is desirable to gather, analyze, and display, including in “real time”; but they do not include any requirement for performing the claimed functions … by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept in the realm of application of the information-based abstract ideas.”); Shortridge (Fed. Cir. 07/13/16) (non-precedential) (aff’g R. 12(c) judgment; relational database conventional); TLI Commc’ns (Fed. Cir. 05/17/16) (Spec. “limits its discussion of these components to abstract functional descriptions devoid of technical explanation as to how to implement the invention;” in view of Spec.’s “abstract functional descriptions” of these tangible components, “the recited physical components behave exactly as expected according to their ordinary use,” and thus “recitation of a ‘telephone unit,’ a ‘server’, an ‘image analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability”); In re Smith (Fed. Cir. 03/10/16) (aff’g PTAB Sec. 101 rejection of app. claims; “shuffling and dealing a standard deck of cards are ‘purely conventional’ activities”); Versata II (Fed. Cir. 07/09/15) (“The steps in Versata’s claims (e.g., arranging, storing, retrieving, sorting, eliminating, determining) are conventional, routine, and well-known.”); Internet Patents (Fed. Cir. 06/23/15) (“Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice.”; relying on admission in Spec. of elements being conventional); OIP Tech. (Fed. Cir. 06/11/15) (aff’g motion to dismiss; invalid because “claims no more than an abstract idea coupled with routine data-gathering steps and conventional computer activity”); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (Dyk, J.) (“we next ask whether the remaining elements, either in isolation or combination with the other non-patent-ineligible elements, are sufficient to ‘transform the nature of the claim’ into a patent-eligible application’”); Ultramercial III (Fed. Cir. 11/14/14) (“Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter.”; claims recited “providing the media product for sale at an Internet website”); Content Extraction (Fed. Cir. 12/23/14) (aff’g grant of motion to dismiss: “no ‘inventive concept’ in [claim’s] use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry”); Affinity Labs (Direct TV) (Fed. Cir. 09/23/16) (claims invalid: “The specificity of the technical solution provided by the claims in BASCOM stands in sharp contrast to the absence of any such specific technical solution in the claims” here.)
  • “Inventive Concept” In Application: Weisner (Fed. Cir. 10/13/22) (2-1) (rev’g R. 12(b)(6) on two patents (but aff’g on two others): Complaint plausibly alleged that claims recite “a specific implementation of the abstract idea that purports to solve a problem unique to the Internet [‘generic Web search results’] and that, accordingly, these claims should not have been held ineligible under step two at this stage.” Analogous to DDR Holdings claims.); Cooperative Ent. (Fed. Cir. 09/28/22) (rev’g 12(b)(6) dismissal, based on two alleged inventive concepts: “the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs” and requiring “trace routes be used in content segmentation.” where Spec. and Complaint explain how claimed network structure differs from and improves on prior art. “Claim 1 recites a specific network structure, the patent’s written description explains how it is arranged, and the written description and amended complaint explain the alleged benefits of sharing content using a P2P network outside the control of a CDN using peer nodes. Determining whether the claimed network is well-understood, routine, or conventional is a question of fact that cannot be resolved at the Rule 12(b)(6) stage, and the district court erred in resolving this factual issue against Cooperative.”); CosmoKey (Fed. Cir. 10/04/21) (rev’g R. 12(c); claim recites user sending authentication info. to remote site and at same time activating mobile device’s authentication function (by activating a phone or an app.), user is authenticated only if remote site over separate channel confirms mobile device’s authentication function is activated; even if accept trial court’s characterization of claim’s focus, there is inventive concept because no showing last four claim steps conventional, Spec. touts advantages over prior art methods, and claims and Spec. “recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity”); CellSpin (Fed. Cir. 06/26/19) (rev’g R. 12(b)(6) dismissal; allegations that “it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection,” and unconventional to have “two-step, two-device structure requiring a connection before data is transmitted,” and that this arrangement had benefits over prior art, and was inventive compared to prior art; hence “they recite a specific, plausibly inventive way of arranging devices and using protocols rather than the general idea of capturing, transferring, and publishing data”); Uniloc (Fed. Cir. 05/24/19) (non-precedential) (rev’g dismissal of complaint on step one and in alternative step two: “the positioning of these components on the application server together with the application launcher on the client computer allows customization by both the administrator and the user in such a way as the installation can proceed on-demand with both sets of preferences. There has been no showing or determination that such a network architecture was conventional.”); Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility; “the patent is directed to the measurement of a natural phenomenon (core body temperature). Even if the concept of such measurement is directed to a natural phenomenon and is abstract at step one, the measurement method here was not conventional, routine, and well-understood.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer and was not routine or conventional); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (aff’g district court’s identification of “static price index as an inventive concept that allows traders to more efficiently and accurately place trades using this electronic trading system”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (rev’g Sec. 101 invalidity judgment on the pleadings; claims reciting correlating two network accounting records to enhance the first record “are much closer to those in BASCOM and DDR Holdings than those in Digitech, Content Extraction, and In re TLI Commc’ns.” Because “enhance” construed to require processing of the records close to their sources which improves operation by distributing load); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: even though freezing and thawing were well known, “a process of preserving hepatocytes by repeating those steps was itself far from routine and conventional.” “Repeating a step that the art taught should be performed only once can hardly be considered routine or conventional. This is true even though it was the inventor’s discovery of something natural that led them to do so.”); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating R. 12 dismissal: claimed “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces;” here, this cannot be said as a matter of law to have been conventional or generic: “the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user”); DDR Holdings (Fed. Cir. 12/05/14) (2-1) (distinguishing Ultramercial; claims recite steps altering conventional behavior when link clicked).
  • Second Step Is Distinct From First Step  But They Overlap: “The dissent also conflates its Alice step one analysis with Alice step two’s inventive concept analysis, ignoring the Supreme Court directive that the Alice test is a two step inquiry.” Smart Sys. (Fed. Cir. 10/18/17). But see CareDx (Fed. Cir. 07/18/22) (“our precedent rejects CareDx’s effort to draw a bright line between the two steps”).
  • “Inventive Concept” In Application Cannot Be The Abstract Idea, And Must Be Outside Abstract Realm And In Physical Realm: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer and Aatrix leave untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Aatrix Software Order Denying En Banc Rehearing (Fed. Cir. 05/31/18) (Moore, J. concurring Op. (joined by Dyk, O’Malley, Taranto, Stoll, J.). The “inventive concept” must be “in the physical realm of things and acts—a ‘new and useful application’ of the ineligible matter in the physical realm….” buySAFE (Fed. Cir. 09/03/14); see Chamberlain Grp. (Fed. Cir. 08/21/19) (rev’g denial of JMOL of patent ineligibility; “the appropriate question is not whether the entire claim as a whole was ‘well-understood, routine [and] conventional’ to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of ‘the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,’ and (2) whether all of the steps ‘as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately.’” “Wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.”); Solutran (Fed. Cir. 07/30/19) (rev’g denial of Summ. J. of Sec. 101 invalidity; “reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.”); Trading Techs. (IBG) I (Fed. Cir. 04/18/19) (“the abstract idea itself cannot supply the inventive concept, ‘no matter how groundbreaking the advance.’”); SAP Am. (Fed. Cir. 08/02/18)  (Step Two requires an “innovation in the non-abstract application realm.” “Because bootstrap, jackknife, and cross-validation methods are all ‘particular methods of resampling,’ those features simply provide further narrowing of what are still mathematical operations. They add nothing outside the abstract realm.”); BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept…. As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”); Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (asserted features inadequate under Step Two because each “appears to be a feature inherent in nonautomated computer animation”); Realtime Data II (Fed. Cir. 08/02/23) (non-precedential) (“analyzing the data to identify one or more parameters or attributes and performing compression with a plurality of different encoders based on that analysis” are themselves abstract ideas and therefore cannot be the inventive concept); People.ai (Fed. Cir. 04/07/23) (non-precedential) (“Those steps are all necessary parts of the abstract idea …. They cannot supply the inventive concept.”); Repifi (Fed. Cir. 03/15/22) (non-precedential) (aff’g R. 12(b)(6); “automation of a long-standing human process cannot be the inventive concept because such automation is itself an abstract idea”); In re Zunshine (Fed. Cir. 07/08/20) (non-precedential) (“As we have often explained, the abstract idea to which a claim is directed is not an inventive concept.”); In re Rosenberg (Fed. Cir. 06/04/20) (non-precedential) (“Our inquiry at step 2 asks whether, considering the elements of each claim individually and as an ordered combination, the additional elements, excluding the abstract idea, transform the nature of the claim into a patent eligible application.”); Cisco (Fed. Cir. 05/13/20) (non-precedential) (aff’g R. 12(c) judgment of ineligibility; “Uniloc’s only alleged inventive concept is coincident with the abstract idea itself. Thus, there are not ‘additional elements,’ which ‘transform the nature of the claim into a patent-eligible application.’”); INO Therapeutics (Fed. Cir. 08/27/19) (2-1) (non-precedential) (any steps beyond the natural law “are either necessary to manifest the natural law or are undisputedly routine and conventional.”); In re Greenstein (Fed. Cir. 06/10/19) (non-precedential) (aff’g rejection of claims; “[applicant] contends that the Board failed to find that the claimed method of rebalancing an investment fund was entirely conventional. We note that this argument confuses eligibility with novelty. Here, the alleged novelty of Greenstein’s investment strategy—an abstract idea—is immaterial to the claims’ eligibility for patenting under § 101.”); Uniloc (Fed. Cir. 05/24/19) (non-precedential) (aff’g dismissal of two patents and rev’g on two patents: “even if a ‘user identify based policy’ is a new source or type of information, it is still abstract information that, as such, does not contribute to any inventive concept”); ChargePoint (Fed. Cir. 03/28/19) (rejecting various claim elements as being “inventive concept” because they merely mirrored the abstract idea itself); In re Guldenaar Holding (Fed. Cir. 12/28/18) (“Because the only arguably unconventional aspect of the recited method of playing a dice game is printed matter, which falls outside the scope of § 101, the rejected claims do not recite an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent eligible application of the abstract idea.”); Genetic Tech. (Fed. Cir. 04/08/16) (“The term ‘to detect the allele’ … is a mental process step, one that provides claim 1 with a purpose but does not create the requisite inventive concept, because it merely sets forth a routine comparison that can be performed by the human mind.”); Athena Diagnostics (Fed. Cir. 02/06/19) (2-1) (in Step Two “we ask whether the limitations of the claim apart from the law of nature, considered individually and as an ordered combination, ‘transform the nature of the claim’ into a patent-eligible application’”); Bridge & Post (Fed. Cir. 07/05/19) (non-precedential) (Prost, C.J.) (alleged inventive concept was not an inventive concept because it was itself an abstract idea). But see CosmoKey (Fed. Cir. 10/04/21) (part of inventive concept and not an abstract idea as they are specific and improve security: “using a second communication channel in a timing mechanism and an authentication function that is normally inactive, activated only preliminarily, and automatically deactivated”); Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (in step two analysis, crediting discovery of a coefficient to convert skin temperature and ambient temperature to a core temperature under the skin: “Following years and millions of dollars of testing and development, the inventor determined for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature and incorporated that discovery into an unconventional method of temperature measurement. As a result, the method is patent eligible, similar to the method of curing rubber held eligible in Diehr.”); cf. Exergen (Fed. Cir. 03/08/18) (non-precedential) (Hughes, J., dissenting op.) (“the district court legally erred by using a law of nature to supply an inventive concept.” “Clearly, a patent-ineligible law of nature cannot be the inventive concept that ensures the claimed invention amounts to significantly more than a patent upon that law of nature. Yet the majority argues exactly that, reasoning that Exergen’s temperature detector is ‘unconventional’ at step two because it uses ‘for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature.’”).
  • “Inventive Concept” In Application Must Be Recited In Claims Not Just Spec.: “To save a patent at step two, an inventive concept must be evident in the claims.” RecogniCorp (Fed. Cir. 04/28/17) (no inventive concept). Details in Spec. but not in claim are irrelevant to this analysis. Accenture (Fed. Cir. 09/05/13) (2-1); Two-Way Media (Fed. Cir. 11/01/17) (“the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“district court erred in relying on technological details set forth in the patent’s specification and not set forth in the claims to find an inventive concept.”) Berkheimer (Fed. Cir. 02/08/18) (some of the claims do not recite any of the purportedly unconventional activities disclosed in the Spec., while other claims “contain limitations directed to the arguably unconventional inventive concept described in the” Spec. creating a genuine dispute of material fact); but see Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (relying on distributed architecture described in Spec. but not recited in claims or any claim construction, concluding claims necessarily depend on it); Ariosa (Fed. Cir. 06/12/15) (relying on Spec.’s description of invention to bolster conclusion that claims are directed to a natural phenomenon, and on Spec. and prosecution history as showing that method steps were conventional, routine steps).
  • Technological Environment/Data Gathering/Insignificant Post-Solution Activities Are Inadequate: Prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant postsolution activity.” Alice Corp. (U.S. 06/19/2014) (“Stating an abstract idea while adding the words ‘apply it with a computer’” simply limits claim to a particular technological environment); accord Mayo (U.S. 03/20/2012) (unanimous) (step of “administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder” “simply refers to the relevant [pre-existing] audience” of doctors, and the abstractness exclusion cannot be circumvented by limiting claim to “‘a particular technological environment.’”); Flook (U.S. 06/22/1978) (rejecting argument that “specific ‘post-solution’ activity—the adjustment of the alarm limit to the figure computed according to the formula” saves the claim: “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (“recitation of XML documents specifically, does little more than restrict the invention’s field of use. Such limitations do not render an otherwise abstract concept any less abstract.”); Apple (Ameranth) (Fed. Cir. 11/29/16) (rev’g part of PTAB CBM Sec. 101 patentability determination: insignificant post-solution activity: linking of orders to customers); Elec. Power (Fed. Cir. 08/01/16) (“merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes”); TLI Commc’ns (Fed. Cir. 05/17/16) (“although the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis”); In re Brown (Fed. Cir. 04/22/16) (non-precedential) (using scissors to cut hair according to determined pattern is insignificant post-solution activity; “amounts to ‘apply it’ [the abstract idea of determining a hair style]”); Vehicle Intelligence (Fed. Cir. 12/28/15) (non-precedential) (aff’g invalidity renewed R. 12(c) motion, post claim construction, because “claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity.”); Internet Patents (Fed. Cir. 06/23/15) (dependent claims “do not add an inventive concept, for they represent merely generic data collection steps or siting the ineligible concept in a particular technological environment.”); Ultramercial III (Fed. Cir. 11/14/14) (“steps of consulting and updating an activity log represent insignificant ‘data-gathering steps,’ and thus add nothing of practical significance to the underlying abstract idea.”); Ass’n for Molecular II (Fed. Cir. 08/16/12) (“Limiting the comparison to just the BRCA genes or … to just the identification of particular alterations, fails to render the claimed process patent-eligible.”), rev’d in part on other grounds, Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (addressing only composition claims). Cf. In re Abele, 684 F.2d 902 (CCPA 1982) (applying since-rejected standard; the claim-recited steps were part of a conventional CAT-scan process and thus are not merely “data gathering steps … dictated by the algorithm”).
  • Elements Inherent In Abstract Idea Do Not Satisfy Step Two: “The use of metafiles to build the claimed index is yet another natural consequence of carrying out the abstract idea in a computing environment and is, therefore, also insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention.” Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17); Versata II (Fed. Cir. 07/09/15) (“The limitations are either inherent in the abstract idea of determining a price using organization and product group hierarchies—e.g., arranging the hierarchies—or conventional and well-known limitations involving a computer—e.g., storing pricing information.”).
  • Novelty Of Algorithm Does Not Satisfy Step Two: Coffelt (Fed. Cir. 03/15/17) (non-precedential) (“The novelty of the algorithm, however, does not determine whether the claim recites an inventive concept. Instead, the inventive concept must ‘transform’ the patent ineligible algorithm into a ‘patent-eligible application’ of the algorithm, and do so by more than merely implementing the algorithm on a generic computer.”); cf. Ericsson (Fed. Cir. 04/14/20) (2-1) (Newman, J., dissenting) (arguing that PTAB’s ruling of non-obviousness should estop the Federal Circuit from determining under step two that claims lack an inventive step).
  • The Second Step Is Not Reached If Claim Has No Additional Elements (Additional Features): Digitech (Fed. Cir. 07/11/14) (aff’g Summ. J. of invalidity under Sec. 101 of claims directed to a collection of information; didn’t need to reach Alice/Mayo second step because claim not limited to an image processor: “We therefore need not decide whether tying the method to an image processor would lead us to conclude that the claims are directed to patent eligible subject matter in accordance with the Supreme Court’s Mayo ”).
  • Second Step Of Test Is Not Whether Elements Are Narrow Or Concrete: “The operative test here does not require concreteness and narrowness.” Smart Sys. (Fed. Cir. 10/18/17) (hash identifier is generic and routine).
• Combining Law Of Nature, Abstract Idea, Etc. With Conventional Steps Or Functions Is Not Patent Eligible: Claims reciting an “abstract idea” or specific law of nature invalid because the additional steps recited in claim (implementing on a generic computer (Alice); administering drug and determining result (Mayo)) merely limit claim to particular technological environment, or require “well-understood, routine, conventional activity previously engaged in by scientists who work in the field” (Mayo), i.e., “conventional” (Alice), or “conventional or obvious” (Mayo) activity or function. Mayo (U.S. 03/20/2012) (unanimous); Alice Corp. (U.S. 06/19/2014) (unanimous). Thus, there is no “inventive concept” in the remainder of the claim. Mayo (U.S. 03/20/2012); accord Alice Corp. (U.S. 06/19/2014). Such a claim would effectively claim the law of nature or abstract idea itself and improperly tie up (preempt) its future use. Alice Corp. (U.S. 06/19/2014); Mayo (U.S. 03/20/2012). CareDx (Fed. Cir. 07/18/22) (aff’g Summ. J. ineligibility; “The specification admits that each step in the purported invention requires only conventional techniques and commercially available technology,” and was conventional in other contexts to combine them as combined in the claims); See SAP Am. (Fed. Cir. 08/02/18)  (“these limitations require no improved computer resources InvestPic claims to have invented, just already available computers, with their already available basic functions, to use as tools in executing the claimed process”); Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability: citing admissions in specification to support finding that elements cited under step two are merely conventional computer elements and insignificant post-solution activities); Elec. Power (Fed. Cir. 08/01/16) (Taranto, J.) (aff’g Summ. J. of invalidity: “Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101.”); The Cleveland Clinic II (Fed. Cir. 04/01/19) (non-precedential) (argument “that using a known technique in a standard way to observe a natural law can confer an inventive concept—has been consistently rejected by this court”). But see McRO (Fed. Cir. 09/13/16) (Reyna, J.) (rev’g Sec. 101 invalidity judgment on pleadings: claimed method “using unconventional rules” not directed to an abstract idea, in part because doesn’t preempt all techniques in the field and thus is not “directed to a result or effect”).
• Results, Effects And Functions (Without Reciting How (A Particular Way) They Are Achieved Or Performed) Are Not “Inventive Concept In Application” Of Idea: IBM (Zillow) (Fed. Cir. 10/17/22) (2-1 on two dependent claims) (Step Two not satisfied by adding “generic computer components” and “merely restat[ing] their individual functions—i.e., selecting, identifying, matching, re-matching, applying, determining, displaying, receiving, and rearranging—without describing how any of those functions are performed.”); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (step two analysis: [first patent:] “merely using XML tags—as opposed to other kinds of tags—to build an index is still abstract. The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in the technology of computer databases, as in Enfish.”; [second patent:] “The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve”). “Without an explanation of the ‘mechanism’ for ‘how the result is accomplished,’ this purported feature of the invention cannot supply an inventive concept.”); Intellectual Ventures (Capital One) (Fed. Cir. 03/07/17) (aff’g 101 invalidity; step two analysis: “the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”); cf. Alice Corp. (U.S. 06/19/2014) (in step two analysis: claim elements “data processing system,” “communications controller,” and “data storage unit,” are “purely functional and generic.”); Reese (Fed. Cir. 06/10/19) (non-precedential) (aff’g Summ. J.; “the claims recite functional language lacking ‘any requirements for how the desired result is achieved’”).
• To Lack “Inventive Concept” In Application Must Additional Elements Be Well-Understood, Routine And Conventional; Or Merely Be Known, Obvious, Or Non-Inventive?: S. Ct. precedents appear to equate “inventive” in “inventive concept” with being novel and non-obvious, but often describe additional elements (additional features) as being well-understood, routine and conventional.
  • Additional Elements Need Only Be Unconventional or Non-Routine: Some Fed. Cir. panels have taken that latter phrasing as the definition of “inventive concept” for step two. “Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer (Fed. Cir. 02/08/18) (vacating Summ. J. of Sec. 101 invalidity on four claims, due to genuine dispute of material fact on whether elements conventional—without discussing whether additional elements non-abstract or constitute a particular way); C.R. Bard (Fed. Cir. 11/10/20) (rev’g JMOL of ineligibility; even if combination of additional elements “would have been obvious [that] does not establish that radiographic marking was routine and conventional under Alice step two”); Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “something is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference. There are many obscure references that nonetheless qualify as prior art.”); accord USPTO Berkheimer Memo. (04/19/18).
  •  Additional Elements Must Be New and Non-Obvious: See Flook (U.S. 06/22/1978) (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.” “Respondent’s process is unpatentable under § 101, 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. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application…. Here it is absolutely clear that respondent’s application contains no claim of patentable invention. The chemical processes involved in catalytic conversion of hydrocarbons are well known…. ”); Mayo (U.S. 03/20/2012) (stating that “any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community,” and that “simply appending conventional steps, specified at a high level of generality” cannot make the claim patent eligible, but also quoting Flook: “‘purely “conventional or obvious” ‘[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law;” and explaining Diehr: “it nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.” “And, they transformed the process into an inventive application of the formula.”); Alice Corp. (U.S. 06/19/2014) (in step two analysis, explaining Benson: “Because the algorithm was an abstract idea, the claim had to supply a “‘new and useful’” application of the idea in order to be patent eligible. But the computer implementation did not supply the necessary inventive concept; the process could be carried out in existing computers long in use;’” and explaining Flook: “implementation was purely conventional.”); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of method claims for being directed to naturally occurring phenomena; Alice/Mayo step two’s requirement of “additional features that must be new and useful” is simply not met in this case because the asserted method claims recite standard PCR methods applied to a naturally occurring phenomenon; there is no additional innovation.”); Ariosa (Fed. Cir. 06/12/15) (“for process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful.”); SAP Am. (Fed. Cir. 08/02/18) (parallel processing was “not even asserted to be an invention” of the applicants in the Spec.; “we think it fair to say that an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is ‘well-understood, routine, [and] conventional.’”); Internet Patents (Fed. Cir. 06/23/15) (“Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice.”; relying on admission in Spec. of elements being conventional). See HP En Banc Petition in Berkheimer (03/12/18) (arguing that step two of test is “whether the limitations ‘transform a patent-ineligible abstract idea into a patent-eligible invention,’” but conflating steps one and two).
• Generic Computer Implementation Of An Abstract Idea Is Not Patent Eligible: Whether drafted as method, system or medium claim, implementing an abstract idea on a “generic computer to perform generic computer functions” is not patent eligible. Alice Corp. (U.S. 06/19/2014) (unanimous) (hold “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”; not enough to use “some unspecified, generic computer.”); Weisner (Fed. Cir. 10/13/22) (aff’g R. 12(b)(6) dismissal for 2 pats. (rev’g as to two others): Spec. “describes the components and features listed in the claims generically, supporting the conclusion that these components and features are conventional, not inventive concepts in the patents.”); “If a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View (Fed. Cir. 04/19/17) (non-precedential) (a claim recited “’a microphone,’ ‘one or more processors,’ a ‘touch-screen input and display device,’ a ‘speech synthesis apparatus’ with ‘at least one speaker,’ an ‘input apparatus,’ and a ‘computer program’ that receives the user’s input and generates an audible or visual result.”); Voter Verified (Fed. Cir. 04/20/18) (standard computer equipment such as laser printer, scanner and keyboard do not satisfy Step Two).
  • Generic/Conventional Includes “Basic” Functions/Steps And Preexisting Computers: Computer elements are “conventional” (or generic) if function performed is a basic function of the computer, such as electronic recordkeeping, obtaining data, adjusting account balances, and issuing automated instructions. Alice Corp. (U.S. 06/19/2014). Also “conventional” if, per Benson (U.S. 11/20/1972), “the process could be ‘carried out in existing computers long in use.’” Id. This applies equally to generic, functional “hardware” in system claims: “what petitioner characterizes as specific hardware—a ‘data processing system’ with a ‘communications controller’ and ‘data storage unit,’ …—is purely functional and generic” that nearly every computer will include. Id. “That a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm, is beside the point.” Id. (citation omitted). Accord Mayo (U.S. 03/20/2012) (unanimous) (summarizing Flook: “Moreover, ‘[t]he chemical processes involved in catalytic conversion of hydrocarbons[,] . . . the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for ‘automatic monitoring-alarming’” were all ‘well known,’ to the point where, putting the formula to the side, there was no ‘inventive concept’ in the claimed application of the formula.”); In re Killian (Fed. Cir. 08/23/22) (claim requirements “that a generic computer perform steps of ‘creating an electronic data record,’ ‘indicating in the electronic data record whether the person is receiving SSDI adult child benefits,’ ‘providing a caseworker display system,’ ‘generating a data collection input screen,’ ‘indicating in the electronic data record whether the person is eligible for SSDI adult child benefits,’ and similar generic data tasks are not a transformative inventive concept”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (“But the inquiry is not whether conventional computers already apply, for example, well-known business concepts like hedging or intermediated settlement. Rather, we determine whether ‘each step does no more than require a generic computer to perform generic computer functions.’”); Elec. Power (Fed. Cir. 08/01/16) (“nothing in the patent contains any suggestion that the displays needed for that purpose are anything but readily available.”); Mortgage Grader (Fed. Cir. 01/20/16) (“the claims ‘add’ only generic computer components such as an ‘interface, ‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement.”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (database, user profile, and communication “are all generic computer elements”; “interactive interface” is generic element as broadly construed by patentee; “the fact that the web site returns the pre-designed ad more quickly than a newspaper could send the user a location-specific advertisement insert does not confer patent eligibility”); OIP Tech. (Fed. Cir. 06/11/15) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”); buySAFE (Fed. Cir. 09/03/14) (2-0) (applying Alice to affirm judgment on the pleadings of Sec. 101 invalidity, of claimed computerized method for guaranteeing a party’s performance of its online transaction); Ficep (Fed. Cir. 08/21/23) (non-precedential) (aff’g Summ. J. ineligibility: step two not satisfied by “generic, conventional elements of a computing device, a programmable logic controller, a receiver, a database unit, a processor, a transmitter, and a manufacturing machine”); Planet Bingo (Fed. Cir. 08/26/14) (Hughes, J.) (non-precedential) (aff’g Summ. J. of invalidity; claims recited “a generic computer implementation of the covered abstract idea” where they recited a computer with a CPU, a memory, input and output terminal, a printer, video screen, and a program enabling steps of managing a game of bingo).
  • That A Computer Is Necessary To Performing The Method Does Not Matter: “As stipulated, the claimed method requires the use of a computer to create electronic records, track multiple transactions, and issue simultaneous in­structions; in other words, ‘[t]he computer is itself the intermediary.’” Alice Corp. (U.S. 06/19/2014).
  • That The Idea Has No Practical Use Outside A Computer Implementation Does Not Matter: Mayo (U.S. 03/20/2012) (unanimous) (Benson “held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had ‘no substantial practical application except in connection with a digital computer.’ Hence the claim (like the claims before us) was overly broad; it did not differ significantly from a claim that just said ‘apply the algorithm.’”).
  • Invention’s Ability To Run On A General-Purpose Computer Is Not Dispositive: Claims directed to an improvement in functioning of a computer are patent-eligible, unlike claims “adding conventional computer components to well-known business practices,” or “use of an abstract mathematical formula on any general purpose computer,” or “generalized steps to be performed on a computer using conventional computer activity.” Enfish (Fed. Cir. 05/12/16).
  • “Technical Effect” Test? Must Improve Functioning Of Computer Or Another Technology?: S. Ct. gave just two examples of where adding a computer to an abstract idea might satisfy Sec. 101: “The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.” Alice Corp. (U.S. 06/19/2014) (unanimous) (citing to Diehr (U.S. 03/03/1981) and U.S. Amicus Brief). “The claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” Id. See CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of complaint based on 101: claims were “directed to a specific technological improvement”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision; had second amended complaint been permitted it would have sufficiently alleged facts to show an “inventive concept;” such as showing that claimed “data file” improved operation of computer and was not routine or conventional); Amdocs II (Openet) (Fed. Cir. 11/01/16) (claims “an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)”); McRO (Fed. Cir. 09/13/16) (approving claim under Step One: “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice” and “therefore, is not directed to an abstract idea.”); Enfish (Fed. Cir. 05/12/16) (rev’g Summ. J. of patent ineligibility based on Alice step One; claims “directed to an improvement in the functioning of a computer” and “a specific improvement to the way computers operate” and “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” and “a specific implementation of a solution to a problem in the software arts,” i.e., a self-referential table for a database, which Spec. says provides faster searching, more effective storage and smaller memory requirements, and more flexible configuring than the conventional relational database); TLI Commc’ns (Fed. Cir. 05/17/16) (aff’g mtn. to dismiss: “the focus” of the Spec. “and of the claims was not on an improved telephone unit or an improved server,” rather, the telephone unit is “merely a conduit for the abstract idea.”); Carnegie Mellon (Fed. Cir. 08/04/15) (Taranto, J.) (dictum: no authority cited “finding ineligibility of an unconventional method, like CMU’s, for improving a physical process by overcoming limitations in physical devices—discerning more accurately what is on a physical recording medium from what a read head has sensed.”); Versata II (Fed. Cir. 07/09/15) (“Examination of the claims—as a whole and in terms of each claim’s limitations—reveals that the claims are not directed to improving computer performance and do not recite any such benefit. The claims are directed to price determination and merely use a computer to improve the performance of that determination—not the performance of a computer.”); buySAFE (Fed. Cir. 09/03/14) (2-0) (quoting this portion of Alice); I/P Engine (Fed. Cir. 08/15/14) (Mayer, J., Concurring Op., Chen, J., Dissenting Op.) (Alice adopted a “technological effects” test).
  • Advantage Over Alternatives Is Not Test For An “Inventive Concept”: “‘Provid[ing] a distinct advantage over alternatives’ is not the test for eligibility.” Smartflash (Fed. Cir. 03/01/17) (non-precedential) (generic computer components do not transform the claim into a patent-eligible invention); In re Greenstein (Fed. Cir. 07/12/19) (non-precedential) (aff’g unpatentable; “we have found that software-based claims may include an inventive concept where they provide a technological solution to a technological problem.” “The problem of trustworthy recommendations is a business problem, not a technical one.”).
  • Alleged Technological Improvement Must Be Recited In Claim: Supposed improvement to technology must be recited in the claim. Apple (Ameranth) (Fed. Cir. 11/29/16) (aff’g PTAB CBM Sec. 101 unpatentability: “The difficulty of the programming details for this functionality is immaterial because these details are not recited in the actual claims.”); Versata II (Fed. Cir. 07/09/15) (“these supposed benefits are not recited in the claims at issue”; “the claims at issue do not recite any improvement in computer technology”); Planet Bingo (Fed. Cir. 08/26/14) (non-precedential) (rejecting argument that computer program handled millions of numbers because claimed invention did not require that).
  • TIPS:
    

g) idea’s breadth immaterial

• Ct.: Sec. 101 Exclusions Are A “Bright-Line Prohibition” Applying To Specific And Narrow Laws Of Nature, Etc. As Well As Broad Ones: The abstract idea, mental process, mathematical formula, etc. might be quite specific and narrow, as in the Benson, Flook and Bilski claims. “The particular laws of nature that its patent claims embody are narrow and specific” “but the patent claims that embody them nonetheless implicate this concern” that patent laws not inhibit future innovation. Mayo (U.S. 03/20/2012) (unanimous) (“our cases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow. See, e.g., Flook, 437 U.S. 584 (holding narrow mathematical formula unpatentable)…. And so the cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.”); see Roche Molecular (Fed. Cir. 10/09/18) (method claims “cannot gain subject matter eligibility solely because they are limited to specific signature nucleotides”); Ariosa (Fed. Cir. 06/12/15) (rejecting argument that narrowness of method avoids Sec. 101 invalidity); buySAFE (Fed. Cir. 09/03/14) (2-0) (“the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.”); SAP Am. (Fed. Cir. 08/02/17) (holding invalid under Sec. 101 reexamination claims in post-judgment certificate because “the most that the reexamination changes do is to add details to the abstract ideas in the claims; they add nothing to the non-abstract elements of the claims, which remain wholly conventional computer and display devices.”); BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “regardless of how narrow ‘summary comparison usage information’ may be relative to the category of ‘historical usage information,’ this does not affect whether the claims are directed to an abstract idea at Alice’s step one.”); Ultramercial III (Fed. Cir. 11/14/14) (identifying combination of six claim-recited steps as describing an abstract idea); CLS Bank (Fed. Cir. 05/10/13) (en banc) (agreement on this point: Lourie, J. 5-judge concurring op.: “broad claims do not necessarily raise § 101 preemption concerns, and seemingly narrower claims are not necessarily exempt.”; Rader, J. 4-judge op.: “It is not the breadth or narrowness of the abstract idea that is relevant, but whether the claim covers every practical application of that abstract idea.”), aff’d, Alice Corp. (U.S. 06/19/2014); Bridge & Post (Fed. Cir. 07/05/19) (non-precedential) (Prost, C.J.) (aff’g invalidity of an 11-step method claim; “even a highly specific method for implementing an abstract idea is, at step 1 of the Alice test, still directed to that abstract idea”); Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (“dependent claims’ identification of files based on checksums,” narrowing claims to particular types of relationships, does not change step one analysis).) But see Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”).

h) idea’s novelty immaterial

• Novelty Of Steps Added To The Abstract Idea (Step Two) Is A Consideration; But Not Novelty Of The Abstract Idea Itself (Step One):
  • S. Ct.: Under S. Ct. precedents, not even a novel or newly discovered abstract idea or law of nature is patent eligible. Claimed natural law in Mayo was not previously known: “those in the field did not know the precise correlations between metabolite levels and likely harm or ineffectiveness. The patent claims at issue here set forth processes embodying researchers’ findings that identified these correlations with some precision.” Mayo (U.S. 03/20/2012) (“even though rewarding with patents those who discover new laws of nature and the like might well encourage their discovery, those laws and principles, considered generally, are ‘the basic tools of scientific and technological work.’”). E.g., Diehr did not suggest that the additional steps there “were in context obvious, already in use, or purely conventional.” Id. “In evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so.” Id. Here, “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” Mayo (U.S. 03/20/2012) (unanimous); Diehr (U.S. 03/03/1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Flook (U.S. 06/22/1978) (“Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, … it is treated as though it were a familiar part of the prior art.”).
  • Fed. Cir. Following This Precedent: “Laws of nature, natural phenomena, and abstract ideas [are patent ineligible] no matter how ‘[g]roundbreaking, innovative, or even brilliant.’” buySAFE (Fed. Cir. 09/03/14) (2-0) (quoting Ass’n for Molecular (Myriad)); SAP Am. (Fed. Cir. 08/02/18) (“(“We may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. The claims here are ineligible because their innovation is an innovation in ineligible subject matter.”); In re Board of Trustees (Stanford) (Fed. Cir. 03/11/21) (aff’g PTAB rejection ex parte claims: even if “the claimed process results in improved data, we are not persuaded that claim 1 is not directed to an abstract mathematical calculation”); Two-Way Media (Fed. Cir. 11/01/17) (aff’g trial court exclusion of evidence “relevant to a novelty and obviousness analysis, and not whether the claims were directed to eligible subject matter”); Synopsys (Mentor) II (Fed. Cir. 10/17/16) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Solutran (Fed. Cir. 07/30/19) (rev’g denial of Summ. J. of Sec. 101 invalidity; “merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“But the eligibility finding does not turn on the lack of novelty of the claim; it turns on the fact that the claim is drawn to any embodiment of an abstract idea.”); Roche Molecular (Fed. Cir. 10/09/18) (aff’g Summ. J. invalidity of primer and method claims for being directed to naturally occurring phenomena, notwithstanding that “Roche’s discovery of these signature nucleotides on the MTB rpoB gene and the designing of corresponding primers are valuable contributions to science and medicine, allowing for faster detection of MTB [a “major cause of tuberculosis”] in a biological sample and testing for rifampin resistance.” “Many groundbreaking, innovative, and brilliant discoveries have been held patent-ineligible.”); Genetic Tech. (Fed. Cir. 04/08/16) (“The inventive concept necessary at step two of the Mayo/Alice analysis cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. That is, under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility; instead, the application must provide something inventive, beyond mere ‘well-understood, routine, conventional activity.’”); Ariosa (Fed. Cir. 06/12/15) (claims invalid despite inventors having “revolutionized prenatal care” with their method for detecting small amounts of paternally inherited cffDNA in maternal plasma or serum (that used to be discarded) to determine fetal characteristics); Ultramercial III (Fed. Cir. 11/14/14) (rejecting patent owner argument that abstract ideas remain patent-eligible “as long as they are new ideas, not previously well known, and not routine activity;” “[A]ny novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis.”); In re Morsa (Fed. Cir. 04/10/20) (non-precedential) (rejecting argument that novel and non-obvious claim necessarily survived Step 2: “abstractness, novelty, and non-obviousness are separate legal and factual concepts”); PerkinElmer (Fed. Cir. 11/20/12) (non-precedential) (“Even assuming it is new or even inventive, this ‘two markers are better than one’ concept is still a mental step or abstract idea, i.e., it is ineligible subject matter.”); Adaptive Streaming (Fed. Cir. 12/14/20) (non-precedential) (“satisfying the requirements of novelty and non-obviousness does not imply eligibility under § 101, including under the second step of the Alice inquiry, because what may be novel and non-obvious may still be abstract”). See Ariosa Diagnostics (Fed. Cir. 12/02/15) (Lourie, J., Concurring Op. denial of en banc rehearing) (disagreeing with Mayo) (“it is undisputed that before this invention, the amplification and detection of cffDNA from maternal blood, and use of these methods for prenatal diagnoses, were not routine and conventional. But applying Mayo, we are unfortunately obliged to divorce the additional steps from the asserted natural phenomenon to arrive at a conclusion that they add nothing innovative to the process.”); id. (Dyk, J., Concurring Op.) (disagreeing with Mayo but not Alice) (“Mayo states that the inventive concept necessary for eligibility must come in the application analyzed at step two, rather than from the discovery of the law of nature itself.”; “Alice also holds that inventive concept must be found at step two of the framework.”); In re Sarkar (CCPA 12/07/78) (“Beyond the irrelevance of novelty and nonobviousness considerations to determinations under § 101, Sarkar’s difficulty is that step (a) [“measuring the cross-sectional dimensions of the channel at a specifically chosen, predetermined number of locations usable for schematizing said dimensions into a rectangularized cross-section for each regularly spaced but arbitrarily chosen distance Δ x along the length of the channel irrespective of the chosen value of the interval of time Δ t”], to the extent that it be considered novel, derives such ‘novelty’ solely from the algorithm itself”).
  • Fed. Cir. Contrary To This Precedent: But see CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of Complaint; relying on Spec. assertions that claimed analysis steps had not been done before in this type of device and led to better results); EcoServices (Fed. Cir. 10/08/20) (non-precedential) (2-1) (“we do not have the situation where there was a pre-existing system being used to which only a known feature, similar to features previously determined to be abstract, was added. Instead, here, the system itself is new”); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential) (“[T]he graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept, as the court explained in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 73 (2012) (the patent must ‘amount to significantly more in practice than a patent upon the [ineligible concept itself]’”). “An invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”)) (Note: this “threshold criterion” point is contrary to above decisions, including Mayo, and not supported by quote from Mayo concerning step two).
• But Many Decisions Focus On Lack Of Novelty Of The Abstract Idea: That an idea has been used in other fields helps show the idea’s value is independent of any particular physical implementation, confirming that the idea is abstract. But many decisions focus on the lack of novelty of the idea as if that is a requirement under Alice and without explaining why it is relevant. E.g., FairWarning (Fed. Cir. 10/11/16) (claims’ rules are “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades”); Intellectual Ventures (Symantec) (Fed. Cir. 09/30/16) (filtering email was abstract because “it was long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.” Also: claim “involves an idea that originated in the computer era—computer virus screening. But the idea of virus screening was nonetheless well known when the ’610 patent was filed.” But same decision says: “Indeed, ‘[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“At step one of the Alice framework, it is often useful to determine the breadth of the claims in order to determine whether the claims extend to cover a ‘fundamental . . . practice long prevalent in our system.’”; looking at combination of abstract idea and added elements in step two: “we ask whether the remaining elements, either in isolation or combination with the non-patent-ineligible elements, are sufficient to ‘transform the nature of the claim’ into a patent-eligible application.”); Internet Patents (Fed. Cir. 06/23/15) (Newman, J.) (conflating steps one and two: “Courts have found guidance in deciding whether the allegedly abstract idea (or other excluded category) is indeed known, conventional, and routine, or contains an inventive concept, by drawing on the rules of patentability.”).

i) idea’s utility immaterial

• Usefulness Of The Idea Is Immaterial: Potential utility of an idea is immaterial to whether it is abstract. Genetic Tech. (Fed. Cir. 04/08/16) (“GTG’s attempts to distinguish this case on the ground that the method of claim 1 is useful have no basis in case law or in logic.”); see Ass’n for Molecular (Myriad) (U.S. 06/13/2013) (characterizing the discovery of the BRCA1 and BRCA2 genes as “important and useful”); Flook (U.S. 06/22/1978) (“For the purpose of our analysis, we assume that respondent’s formula is novel and useful and that he discovered it.” Formula designed to more accurately trigger alarms on potentially dangerous chemical reactions.); PersonalWeb (Fed. Cir. 08/12/21) (“the asserted efficiency improvements are not different in kind from those that would accrue in the library analogue—for example, using content-based identifiers to purge duplicate books”); Univ. of Fla. Research (Fed. Cir. 02/26/19) (aff’g R. 12(b)(6) dismissal; “that the automation can ‘result in life altering consequences,’ is laudable, but it does not render it any less abstract”); ChargePoint (Fed. Cir. 03/28/19) (“the inventors here had the good idea to add networking capabilities to existing charging stations to facilitate various business interactions. But that is where they stopped, and that is all they patented.”); Trading Techs. (IBG) I (Fed. Cir. 04/18/19) (claims “do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists traders in processing information more quickly.”); Secured Mail (Fed. Cir. 10/16/17) (“that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract”); Customedia (Fed. Cir. 03/06/20) (aff’g PTAB FWD ineligible; Even if invention improved ability to store and transfer data and prevent system inoperability due to insufficient storage, “the claimed invention merely improves the abstract concept of delivering targeted advertising using a computer only as a tool.”); In re Elbaum (Fed. Cir. 12/20/23) (non-precedential) (per curiam) (“even if . . . the claimed method provides a practical solution to a problem faced by online sellers, the utility of an abstract idea is insufficient to confer patent eligibility”); Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precedential) (while additional claim element “may demonstrate that the invention produces a useful result, it does not transform the abstract idea into patent-eligible subject matter”); In re Smith (Fed. Cir. 09/09/22) (non-precedential) (“utility is not the test for patent eligibility under the Supreme Court’s cases”); But see Finjan (Fed. Cir. 01/10/18) (aff’g post-trial judgment that claims not invalid; claimed method unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before,” and thus is directed to an improvement in computer functionality); Rapid Litig. Mgmt. (Fed. Cir. 07/05/16) (Prost, CJ) (rev’g Summ. J. of patent-ineligibility: “This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting.”); EcoServices (Fed. Cir. 10/08/20) (non-precedential) (2-1) (Spec.’s “described advantages are important to our determination that the claims provide a technical improvement to jet engine washing.”); Whitserve II (Fed. Cir. 04/10/20) (non-precedential) (“After all, ineligible ideas can be valuable.”) But see CardioNet I (Fed. Cir. 04/17/20) (2-1) (rev’g dismissal of Complaint; relying on Spec. assertions that claimed analysis steps had not been done before in this type of device and led to better results; “there is no record evidence undermining the statements in the written description concerning the benefits of the claimed device”); Ancora Tech. (Fed. Cir. 11/16/18) (rev’g R. 12(b)(6) dismissal; determining that claim is directed to non-abstract technological improvement: “the claimed invention moves a software-verification structure to a BIOS location not previously used for this computer-security purpose and alters how the function is performed (in that the BIOS memory used for verification now interacts with distinct computer memory to perform a software-verification function), yielding a tangible technological benefit (by making the claimed system less susceptible to hacking).”); Trading Techs. (Fed. Cir. 01/18/17) (non-precedential). (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.”).

j) preemption of idea

• Preemption (Monopolization) Of Abstract Idea In Some Field [Not Preemption Of Entire Field Or Of Alternatives To The Abstract Idea] Is The Concern—But Not The Test: “Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.” Bilski v. Kappos (U.S. 06/28/2010) (Bilski claims here). Accord Mayo (U.S. 03/20/2012) (unanimous) (claims that would “monopolize” or preempt a law of nature are invalid under Sec. 101); Benson (U.S. 11/20/1972) (“The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.”); cf. Athena Diagnostics (Fed. Cir. 02/06/19) (2-1) (“preemption is sufficient to render a claim ineligible under § 101, but it is not necessary;” that the “routine steps are set forth with some specificity is not enough to change” the conclusion that they are routine); ChargePoint (Fed. Cir. 03/28/19) (relying on preemption in Step One to confirm that claims are directed to the abstract idea); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating dismissal order: claims “do not preempt the use of the abstract idea of filtering content on the Internet or on generic computer components performing conventional activities. The claims carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.”); Genetic Tech. (Fed. Cir. 04/08/16) (claim “broadly covers essentially all applications, via standard experimental techniques, of the law of linkage disequilibrium to the problem of detecting coding sequences of DNA.”); Vehicle Intelligence (Fed. Cir. 12/28/15) (non-precedential) (“while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter”); Intellectual Ventures (Capital One) (Fed. Cir. 07/06/15) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.”); In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig. (Fed. Cir. 12/17/14) (“The preemptive nature of the claims is not ameliorated even if we accept Myriad’s argument that other methods of comparison exist. If the combination of certain routine steps were patent eligible, so too would different combinations of other routine steps.”); Ariosa (Fed. Cir. 06/12/15) (questions on preemption are “made moot” and resolved by the Sec. 101 analysis; “the absence of complete preemption does not demonstrate patent eligibility”); OIP Tech. (Fed. Cir. 06/11/15) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”); Dealertrack (Fed. Cir. 01/20/12) (“the claims are invalid as being directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area.”) But see McRO (Fed. Cir. 09/13/16) (as part of Step One, analyzing whether claims preempt use of all types of rules rather than the particular type of rules to which the claims are directed).

k) machine-or-transformation “test”

• S. Ct.: Machine-or-Transformation “Test” Is “Clue” Relevant Only To Step Two of Mayo/Alice: Bilski v. Kappos (U.S. 06/28/2010) endorsed but demoted particular-machine-or-transformation test: “This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” See Mayo (U.S. 03/20/2012) (unanimous) (even if claim did satisfy transformation prong, it is invalid under “law of nature” exclusion); cf. Bozeman (Fed. Cir. 04/10/20) (“use of a digital-image scanner to create a digital electronic record of a check … does not meet the machine-or-transformation test,” because that was a conventional use); SAP Am. (Fed. Cir. 08/02/18) (distinguishing McRO claims as being “directed to the creation of something physical—namely, the display of ‘lip synchronization and facial expressions’ of animated characters on screens for viewing by human eyes”); buySAFE (Fed. Cir. 09/03/14) (2-0) (aff’g Sec. 101 invalidity under Alice without mentioning machine or transformation test); Fuzzysharp (Fed. Cir. 11/04/11) (non-precedential) (agreeing that claims failed machine or transformation test but vacating ruling invalidating claims under Sec. 101 and remanding for further claim construction). Machine-or-transformation “test” “can provide a ‘useful clue’ in the second step of the Alice framework.” Ultramercial III (Fed. Cir. 11/14/14) (did not “tie the claims to a novel machine,” and “manipulations of ‘public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances’”); S. Ct. rejected Fed. Cir. reliance on “transforming the human body by administering a thiopurine drug” under the “particular transformation” clue: “[this] transformation[], however, is irrelevant. As we have pointed out, the ‘administering’ step simply helps to pick out the group of individuals who are likely interested in applying the law of nature.” Mayo (U.S. 03/20/2012).
• Pre-Alice Cir. Divided On Meaning Of “Particular Machine”: CLS Bank (Fed. Cir. 05/10/13) (en banc) (disagreement on meaning of this principle: Lourie, J. 5-judge concurring op.: not using “particular machine” rubric, but making similar point: “the system claims recite a handful of computer components in generic, functional terms that would encompass any device capable of performing the same ubiquitous calculation, storage, and connectivity functions required by the method claims.”); (Moore, J. 4-judge op.: stripping “particular” from “particular machine” prong: “As the Supreme Court recognized in Bilski, whether a claim is tied to a machine is “an important and useful tool” for assessing that it is directed to patent eligible subject matter.”), aff’d, Alice Corp. (U.S. 06/19/2014); Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (“the ‘telephone’ recited in claim 1 is not a specific machine” in part because could be any type of telephone). See Intellectual Ventures I (Erie Indemnity) (Fed. Cir. 11/03/17) (non-precedential) (patent “must disclose the use of an apparatus specific to the claimed invention,” not “general computer components”).

l) non-method claims

• CRM Claims And System Claims Just As Easy To Invalidate Under Sec. 101 As Corresponding Method Claim: Computer system and CRM claims “fail for substantially the same reasons….because…. add nothing of substance to the underlying abstract idea.” Alice Corp. (U.S. 06/19/2014) (also noting that patent owner had conceded that the CRM and method claims rose or fell together.); Smart Sys. (Fed. Cir. 10/18/17) (2-1, Linn, J., dissenting on two patents) (aff’g R. 12(c) invalidity; where method and system claims contain “‘only minor differences in terminology but require performance of the same basic process, . . . they should rise or fall together.’”); Internet Patents (Fed. Cir. 06/23/15) (summarily aff’g invalidity of CRM and system claims after analysis of method claims: “The statement that the method is performed by computer does not satisfy the test of ‘inventive concept.’”); CLS Bank (Fed. Cir. 05/10/13) (Lourie, J., concurring) (“Applying a presumptively different approach to system claims generally would reward precisely the type of clever claim drafting that the Supreme Court has repeatedly instructed us to ignore. [I]t is often a straightforward exercise to translate a method claim into system form, and vice versa. …. Thus, when § 101 issues arise, the same analysis should apply regardless of claim format: ….”), aff’d, Alice Corp. (U.S. 06/19/2014).
• Patent Owner’s Burden To Show “Functional” Manufacture Or Apparatus Claim Not Truly Drawn To Underlying Method: Even when claim literally is directed to an article of manufacture or machine, court looks to “the underlying invention” for Sec. 101 purposes. Where such a claim has a “broad” and “functionally-defined” nature, it is the patent owner’s “burden” to demonstrate that the claim is truly drawn to a specific apparatus “distinct from other apparatus[es] capable of performing the identical functions.” CyberSource (Fed. Cir. 08/16/11) (following In re Abele, 684 F.2d 902 (CCPA 1982), invalidating CRM claim as being directed to same method as invalidated method claim: “it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information.”); cf. Bancorp (Fed. Cir. 07/26/12) (system and medium claims here equivalent to method claims; invalid under Sec. 101).

m) when decided?

• Question Of Law Suitable For Summary Judgment, Or Decision On Pleadings, But On Rare Occasion May Contain Factual Issues: Whether patent claims are “drawn to patent-eligible subject matter under § 101 is a threshold inquiry” and “an issue of law.” In re Bilski (Fed. Cir. 10/30/08) (en banc), aff’d, Bilski v. Kappos (U.S. 06/28/2010); see Flook (U.S. 06/22/1978) (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”); Simio (Fed. Cir. 12/29/20) (“Whether the claim ‘supplies an inventive concept that renders [it] ‘significantly more’ than an abstract idea to which it is directed is a question of law.’”); Am. Axle (Fed. Cir. 07/31/20) (2-1) (“That claim 22 here merely describes a desired result is evident from the face of the claim. The claim on its face does not identify the “particular [tuned] liners” or the “improved method” of tuning the liners to achieve the claimed result. No factual finding was or is required.”); SG Brief (05/24/22) (urging cert. grant); Secured Mail (Fed. Cir. 10/16/17) (rejecting argument that district court made fact findings on a motion to dismiss, or put burden of proof on the patent owner to show elements not conventional: court has “determined claims to be patent ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’”); Genetic Tech. (Fed. Cir. 04/08/16) (Dyk, J.) (aff’g mot. dismiss: “We have repeatedly recognized that in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”) The issue “may contain underlying factual issues.” Accenture (Fed. Cir. 09/05/13) (2-1). Expert declarations will not necessarily establish a disputed issue of fact. Mortgage Grader (Fed. Cir. 01/20/16) (no genuine issue of fact when defendant’s expert provided “non-material historical information” adding “little if anything to the … specification” and plaintiff’s expert declared that patents “require use of a computer”). See Smartflash (Fed. Cir. 03/01/17) (non-precedential) (trial court denied summary judgment of Sec. 101 invalidity, then jury verdict in favor of patent owner and trial court denied Sec. 101 JMOL; Fed. Cir. reversed, holding claims invalid under Alice); FairWarning (Fed. Cir. 10/11/16) (rejecting patent owner argument that trial court dismissal of complaint decided facts; “‘We have repeatedly recognized that in many cases it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.’”); Affinity Labs (Amazon) (Fed. Cir. 09/23/16) (“While Affinity criticizes the magistrate’s making factual findings on a motion for judgment on the pleadings, the practice of taking note of fundamental economic concepts and technological developments in this context is well supported by our precedents.”); OIP Tech. (Fed. Cir. 06/11/15) (“Patent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.”). See Interval Licensing (Fed. Cir. 07/20/18) (Plager, J., concurring) (long critique and criticism of current state of abstractness exclusion case law: “The Emperor Has No Clothes”; “there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine;” suggesting trial courts postpone section 101 until after sections 102, 103 and 112 are addressed).
• Attempted Sea Change In Feb. 2018: Fact Disputes Defeating Sec. 101 R. 12 And R. 56 Motions: CellSpin (Fed. Cir. 06/26/19) (O’Malley, J.) (rev’g R. 12(b)(6) dismissal based on Step Two, “plausible and specific factual allegations that aspects of the claims are inventive are sufficient. As long as what makes the claims inventive is recited by the claims, the specification need not expressly list all the reasons why this claimed structure is unconventional.”); Natural Alternatives (Fed. Cir. 03/15/19) (Moore, J.) (identifying fact disputes on both Step One (for product claims) and Step Two (for method and product claims); absent clear statement in Spec., Complaint or other material properly considered on motion on the pleadings, whether certain limitation is “well-understood, routine, and conventional” cannot be decided on a motion for judgment on the pleadings); Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “The district court’s conclusion that these claim elements were not well-understood, routine, and conventional is a question of fact to which we must give clear error deference.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision on account of fact issues regarding whether “the claimed combination contains inventive components and improves the workings of the computer,” and “factual disputes” such as “whether the claim term ‘data file’ constitutes an inventive concept; and reversing district court denial of post-judgment motion of patent owner to file second amended complaint alleging these facts which “if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine.”), rehearing denied (Fed. Cir. 05/31/18) (Moore, J. concurring Op. (joined by Dyk, O’Malley, Taranto, Stoll, J.) defending panel decision; Lourie J. concurring Op. (joined by Newman, J.) calling for Congressional intervention on Sec. 101; Reyna dissenting Op., criticizing panel decision); Berkheimer (Fed. Cir. 02/08/18) (Moore, J.) (vacating Summ. J. of Sec. 101 invalidity on four claims; “patent eligibility under 35 U.S.C. § 101 is ultimately an issue of law we review de novo. The patent eligibility inquiry may contain underlying issues of fact.”) (SG brief (12/06/19) recommends denial of cert. as not good vehicle for reconsidering substantive Sec. 101 standards); Automated Tracking (Fed. Cir. 02/16/18) (Stoll, J.) (non-precedential) (aff’g R. 12(c) Sec. 101 invalidity but emphasizing only due to “unique facts” where patent owner conceded two broad claims are representative, complaint contained no allegations that hardware elements “are anything but well-understood, routine, and conventional,” and Spec. described the hardware elements as conventional); Bascom Global (Fed. Cir. 06/27/16) (Chen, J.) (vacating R. 12 dismissal: claimed “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces;” here, this cannot be said as a matter of law to have been conventional or generic); Trading Techs. (Fed. Cir. 01/18/17) (Newman, J.) (non-precedential). (“This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter.” “Applying an overview of this evolving jurisprudence, the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.”). Cf. Nalco (Fed. Cir. 02/27/18) (rev’g trial court dismissal of infringement complaint under Iqbal / Twombly; a claim construction dispute is “not suitable for resolution on a motion to dismiss,” and dispute about interpretation of statements made by patent owner in reexamination are not appropriate to resolve on motion to dismiss either). But see IBM (Zillow) (Fed. Cir. 10/17/22) (aff’g R. 12(c); no “plausible and specific allegations that any aspect of the claims is inventive” where claims simply describe the abstract idea with functional language at high level of generality); Simio (Fed. Cir. 12/29/20) (aff’g R. 12(b)(6) dismissal and denial of leave to amend; no showing that any claim construction dispute material and proposed allegations that invention improves technology merely conclusory); But see BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”); Boom! Payments (Fed. Cir. 01/13/21) (non-precedential) (“at most, the use of an identification code does nothing more than overlay a second layer of abstraction—specifically, identity authentication—on the escrow procedure described by the claims”); Innovation Sci. (Fed. Cir. 07/02/19) (non-precedential) (aff’g Summ. J. of Sec. 101 invalidity; “Alice step two is [a] question of law, with underlying factual determinations that may inform the legal determination.”); Glasswall (Fed. Cir. 12/20/18) (non-precedential) (“Glasswall cannot render its complaint immune from dismissal by merely asserting that its methods are ‘novel’ and ‘improve the technology used in electronic communications.’”); Intellectual Ventures (Symantec) (Fed. Cir. 03/15/18) (non-precedential) (aff’g Summ. J. Sec. 101 invalidity where district court found that the specification “confirms that the individual components . . . are conventional, generic, and operate as expected,” and that the patent owner had “failed to offer evidence to show that the order of the steps was unconventional,” and did not “offer expert testimony to show the lack of conventionality of its components”); In re Guldenaar Holding (Fed. Cir. 12/28/18) (Mayer, J., concurring op.) (arguing that Berkheimer was wrongly decided and contrary to S. Ct. and Fed. Cir. precedents); HP En Banc Petition in Berkheimer (03/12/18) (arguing that Sec. 101 presents a question of law, and statements in the specification cannot create a fact dispute, but conflating steps one and two).
• Court Must Either Resolve Claim Construction Dispute Or Accept Patent Owner’s Construction, Before Deciding Sec. 101 Eligibility On A Motion: “There is no requirement that the district court engage in claim construction before deciding § 101 eligibility.” Cyberfone (Fed. Cir. 02/26/14) (non-precedential) (aff’g Summ. J. of invalidity); The Cleveland Clinic I (Fed. Cir. 06/16/17) (appropriate to grant motion to dismiss with no claim construction or discovery where patent owner proposed no claim construction or expert testimony that would change the analysis). “If there are claim construction disputes at the Rule 12(b)(6) stage, we have held that either the court must proceed by adopting the non-moving party’s constructions, or the court must resolve the disputes to whatever extent is needed to conduct the § 101 analysis, which may well be less than a full, formal claim construction.” Aatrix Software (Fed. Cir. 02/14/18) (2-1) (vacating R. 12(b)(6) invalidity decision: arguments on appeal show that claim construction is necessary on remand); Sanderling (Fed. Cir. 04/12/23) (“a district court is free to require the party asking for construction to provide an actual proposed construction, to demonstrate that its construction is not frivolous, and to articulate how adoption of the construction would materially impact the analysis at step one (and/or at step two)”); MyMail I (Fed. Cir. 08/16/19) (2-1) (vacating R. 12(c) judgment of invalidity for failure to resolve parties’ claim construction dispute or accept patent owner’s proposed construction, and declining to decide in first instance either claim construction dispute or patent eligibility under patent owner’s proposed construction) [see MyMail II (Fed. Cir. 08/19/21) (aff’g R. 12(c) judgment based on affirmed claim construction on remand of “toolbar” proposed by patent owner)].
• Claim Construction Is Time For Patent Owner To Seek To Narrow Claims To Satisfy Step Two: Ericsson (Fed. Cir. 04/14/20) (2-1) (declining patent owner’s attempt to read specific software structure into claims’ “module,” to satisfy Step Two, in part because patent owner did not seek such a construction during claim construction).
• Whether Claim Elements Are Conventional Is Question Of Fact: “Whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer (Fed. Cir. 02/08/18) (vacating Summ. J. of Sec. 101 invalidity on four claims, due to genuine dispute of material fact on step two, created by the Spec. which “explains that the claimed improvement increases efficiency and computer functionality over the prior art systems,” and four of the seven claims “contain limitations directed to the arguably unconventional inventive concept described in the specification”: “‘storing a reconciled object structure in the archive without substantial redundancy” and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.” “The Supreme Court recognized that in making the § 101 determination, the inquiry ‘might sometimes overlap’ with other fact-intensive inquiries like novelty under § 102.”); Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating grant of R. 12(b)(6) motion due to fact disputes: “Whether the claim elements or the claimed combination are well understood, routine, conventional is a question of fact. And in this case, that question cannot be answered adversely to the patentee based on the sources properly considered on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice.”) See generally U.S. Bank (U.S. 03/05/2018) (“Mixed questions [of law and historical (basic) fact] are not all alike. … [S]ome require courts to expound on the law, particularly by amplifying or elaborating on a broad legal standard. When that is so—when applying the law involves developing auxiliary legal principles of use in other cases—appellate courts should typically review a decision de novo. But …, other mixed questions immerse courts in case-specific factual issues—compelling them to marshal and weigh evidence, make credibility judgments, and otherwise address what we have (emphatically if a tad redundantly) called ‘multifarious, fleeting, special, narrow facts that utterly resist generalization.’ And when that is so, appellate courts should usually review a decision with deference. [But not in the constitutional realm.] In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”); Oracle (Fed. Cir. 03/27/18) (rev’g verdict of fair use in copyright action; “whether the court applied the correct legal standard to the fair use inquiry is a question we review de novo, whether the findings relating to any relevant historical facts were correct are questions which we review with deference, and whether the use at issue is ultimately a fair one is something we also review de novo”).
• Undecided Whether Entitled To Jury Trial On Fact Questions Related To Sec. 101: Exergen (Fed. Cir. 03/08/18) (non-precedential) (“Whether the Seventh Amendment guarantees a jury trial on any factual underpinnings of § 101 is a question which awaits more in-depth development and briefing.”). Cf. Tex. Advanced (Fed. Cir. 05/01/18) (no Seventh Amendment right to jury trial, in trade secret misappropriation case, on “disgorgement of the defendant’s profits, considered on its own terms, without proof that it was a sound measure of the plaintiff’s harm,” because no showing that such disgorgement “was available at law in 1791 for this sort of wrong” in causes of action analogous to trade secret misappropriation).
• Sec. 101 Invalidity Is Not A Last Resort: Relying on Secs. 102, 103 and 112 in lieu of Sec. 101 “would make the ‘law of nature’ exception to §101 patentability a dead letter. The approach is therefore not consistent with prior law. The relevant cases rest their holdings upon section 101, not later sections.” Mayo (U.S. 03/20/2012) (unanimous).
•  D. Ct. Must Provide Reasoning Applying Alice Abstractness Exclusion: Realtime Data I (Fed. Cir. 10/23/20) (non-precedential) (vacating R. 12 dismissal based on cursory opinion from bench, where district court appeared to focus on factual questions, did not explain its “directed to” analysis, did not address decisions by other courts holding same claims patent eligible, and did not address precedents cited by patent owner); see Realtime Data II (Fed. Cir. 08/02/23) (2-1) (non-precedential) (aff’g R. 12 dismissal based on opinion on remand; “none of the claims at issue specifies any particular technique to carry out the compression of data—the particular rules for producing a smaller set of data out of a larger starting set”).
• TIPS: Strategy for Patent Challengers to Win a Rule 12 or 56 Alice Motion Post Aatrix, Berkheimer and Exergen: