In a recent Reuters Westlaw article, Knobbe Martens lawyers Yi Zhou and Ben Katzenellenbogen discuss the Federal Circuit’s decision in USAA v. PNC Bank and its implications for patent eligibility under the 35 U.S.C. § 101 and the Alice framework. Reviewing USAA and related decisions from the last decade, Zhou and Katzenellenbogen highlight ongoing inconsistencies in how courts apply the Alice test to software-related inventions under Section 101, underscoring the significant role that the court’s initial characterization of a claim plays in determining patent litigation outcomes.
The USAA decision, the authors argue, “reflects a consistent pattern that, when a court characterizes the claimed invention at a high level of generality, the remaining limitations typically fail to supply an inventive concept because they are treated as nothing more than conventional means of carrying out that broad concept.”
In support of this argument, Zhou and Katzenellenbogen explore the outcomes of several other cases that demonstrate the court’s inconsistent application of Alice and detail how USAA strays from the original decision that established the Alice framework. Concluding that outcomes in software patent cases often hinge on initial claim characterization, the authors suggest that USPTO eligibility guidance may offer a more consistent framework.
“Office guidelines may provide a more practical method for evaluating software-related applications than relying on the broad descriptions that predetermine the result in many court decisions,” they write. “Moreover, because the guidelines were developed through consistent engagement with precedent, stakeholders, and ongoing practice, they may help develop a more consistent and predictable Section 101 evaluation process.”
Read the article “USAA v. PNC Bank and Inconsistent Court Decisions Under Alice” here.
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