The Mayo/Alice two-step patent-eligibility framework focuses on the patent claims. Nevertheless, recent Federal Circuit decisions have relied on patent specification statements to support holdings that the claims are patent-eligible because they include an “inventive concept” under Alice step two. Accordingly, patent applicants should consider using the patent specification, in addition to the claim language, to tell a compelling invention story showing that the claimed invention includes an inventive concept.
For guidance in determining eligibility under step 2, the Federal Circuit has looked to the written description for language extolling the virtues of claimed inventions. For example, in Bascom Global, Amdocs, and TLI Communications, the Federal Circuit analyzed “the claims in light of the written description” for proof of an inventive concept. See, e.g., In re TLI Commc’ns, 823 F.3d 607,611-15 (examining the claims in light of the written description under step two, and finding that the “specification does not describe a new telephone, a new server, or a new physical combination of the two.”).
The “search for an inventive concept” has generally followed a pattern set out in DDR Holdings, the initial post‑Alice decision finding § 101 eligibility, in which the claims at issue were determined to “solve a technological problem” (as summarized in Amdocs), and in which the technological problem was found in the written description. See DDR Holdings v. Hotels.com, 773 F.3d 1245, 1248. Even the Supreme Court in Alice approvingly cites Diehr’s notion of § 101 eligibility, in which the patent at issue employed “a process designed to solve a technological problem in ‘conventional industry practice.’” See Alice Corp. at 2358.
Similarly, in finding an inventive concept in Bascom Global, the Federal Circuit noted, “the patent describes … a technical improvement over prior art ways of filtering,” and cited several portions of the written description for confirmation. The Federal Circuit also relied heavily on the written description in Amdocs. In Amdocs, the claimed invention is a computer program that, among other things, correlates an accounting record with accounting information in order to enhance the accounting record. Significantly, while the claims do not expressly recite a distributed computer architecture, the Federal Circuit’s construed “enhance” to mean “to apply a number of filed enhancements in a distributed fashion.” The Federal Circuit then held that the claimed invention’s distributed architecture is an inventive concept under Alice step two. The Federal Circuit reasoned that the specification explains that “this distributed enhancement was a critical advancement of the prior art.” The Federal Circuit also quoted directly from the specification: “Importantly, the distributed data gathering, filtering and enhancements performed in the system 100 enables load distribution … In previous systems, all the network information flows to one location, making it very difficult to keep up with the massive record flows from the network devices and requiring huge databases.” See Bascom Global v. At&T Mobility, 827 F.3d 1341, 1350; See Amdocs (Israel) v. Openet Telecom, slip op. at *20-22.
For its part, the Patent Office is training examiners to review specifications for language supporting patent-eligibility of the claims: “An indication that a claim is directed to an improvement in computer-related technology may include – (1) a teaching in the specification about how the claimed invention improves a computer.” See USPTO Memorandum Regarding Recent Subject Matter Eligibility Decisions.
The Federal Circuit’s reliance on the specification in Bascom and Amdocs is not universally accepted, and the Federal Circuit has in other cases found claims patent-ineligible despite arguably similar specification statements. Indeed, Judge Reyna, dissenting in Amdocs, cautioned against relying on the specification such that “the specification [] import[s] innovating limitations into [] claims at issue,” even when the “limitation[s] do[] not exist in all of the claims at issue.” Judge Reyna also emphasized that “the inquiry is not whether the specifications disclose a patent-eligible system, but whether the claims are directed to a patent ineligible concept.” Amdocs, slip op. at *2, *12.
It remains to be seen how consistently the courts will rely on specification statements to support the patent-eligibility of patent claims. The claims remain the primary focus of a patent-eligibility analysis. Nevertheless, because the courts may also look to the specification to find an inventive concept, patent practitioners should promote their clients and consider including in the specification a detailed and persuasive story emphasizing the benefits—and the concrete, technical nature—of the described inventions.
