Post-Alice Section 101 Eligibility Roadmap for Software Inventions

| Vlad Teplitskiy

In the wake of Alice[1] the waters of eligibility under section 101 can be challenging to navigate, and particularly so for those seeking to obtain or enforce software patents. A two-part test for eligibility is the standard, with step one determining if a claim is directed to an abstract idea. If not, the claim is patent eligible and the inquiry ends. Otherwise, the inquiry moves to step two, which determines if the elements of the claim, considered both individually and as an ordered combination, amount to “significantly more” than the abstract idea, transforming the claim into a patent eligible application of the abstract idea.

Applying this test, the Federal Circuit has provided guidance in several recent cases as to where the boundaries of section 101 eligibility may lie for software claims. Each case can be useful for analogizing to similar claims both in prosecution and litigation.

DDR[2], decided December 5, 2014, was the first post-Alice decision reversing a district court finding of patent ineligibility of software claims.

Technological Facts

The claims at issue[3] were directed to a technique of using a hyperlink to display a blended website co-displaying the look of both a host webpage, which has a linked product advertisement, and of a merchant webpage, which has purchasing information about the advertised product, without transporting the user away from the host webpage.

Eligibility Outcome

The Federal Circuit declined to conclude specifically what abstract idea the claims are directed to, but found the unconventional usage of a hyperlink to satisfy step two of the eligibility test as it was rooted in computer technology and overcame a problem specifically arising in the context of the Internet (i.e., retaining control over the attention of a website viewer).

Federal Circuit Reasoning

The Federal Circuit differentiated the claims from those that “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” DDR, at 1257, 1264. Instead, it found the claims to be “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id., at 1257. Because the claimed invention “overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink,” the Federal Circuit concluded that “the claims recite an invention that is not merely the routine or conventional use of the Internet.” Id., at 1258-59.

Enfish[4], decided May 12, 2016, made it clear that the inquiry in step one of the Alice test is “a meaningful one.”

Technological Facts

The claims at issue[5] relate to an improved database architecture using a self-referential logical table, which the patent describes as providing increased efficiency and flexibility in data management.

Eligibility Outcome

The Federal Circuit found that specific improvements to computer operations via software are not an abstract idea, and thus the claims satisfy step one of the eligibility test and are patent eligible. The Court noted that the first step of the Alice test “cannot simply ask whether the claim[] involve a patent-ineligible concept,” but should instead focus on whether the claim as a whole is directed to ineligible subject matter. Enfish, at 1335 (emphasis added).

Federal Circuit Reasoning

The Federal Circuit noted that “[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can.” Id., at 1335. With respect to the claims at issue, “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id., at 1336. Accordingly, the Federal Circuit found “that the claims at issue . . . are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” Id.

BASCOM[6], decided June 27, 2016, followed DDR to provide another path to software claim eligibility.

Technological Facts

The claims at issue[7], filed in 1997, relate to a server-based system for customizable filtering of user access to certain types of Internet content.

Eligibility Outcome

The Federal Circuit found that while content filtering is an abstract idea, the claims at issue are directed to a specific technology-based solution that overcame problems with previous Internet filtering systems, and thus satisfied step two of the eligibility test.

Federal Circuit Reasoning

The district court had analyzed the claim limitations individually and noted that claim limitations like “remote ISP server” were “well-known generic computer components.” BASCOM, at 1345. As a result, the district court determined that the claims did not meet the second part of the Alice test.

The Federal Circuit reversed, stating that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Id. Thus, the Federal Circuit differentiated analysis under section 101 for an inventive application of an abstract idea from obviousness analysis under section 103. The Court held that “an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea . . . into a particular, practical application of that abstract idea.” Id.

McRO[8], decided September 13, 2016, gives another example of software claims that satisfy the first step of the Alice test.

Technological Facts

The claims at issue[9] are directed to automating a 3D animation method for transitioning a computer-generated human face between the expressions made while vocalizing different sounds. The claimed method recites specific rules that determined when and how much the face should be morphed during speech.

Eligibility Outcome

Although the claims are written as software processed by general-purpose computers, the Federal Circuit held that the claims are eligible under step one as they focused on a specific way to improve the relevant technology through the incorporation of specific, limited rules.

Federal Circuit Reasoning

The Federal Circuit explained that “[i]t is the incorporation of the claimed rules, not the use of the computer, that "improved [the] existing technological process" by allowing the automation of further tasks.” McRO, at 1314. Further, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results.” Id., at 1315. The specific structure and order of the claimed rules lead to patent eligibility because “[t]he concern underlying the exceptions to § 101 is not tangibility, but preemption . . . . [and t]he limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters.” Id.

Amdocs[10], decided November 1, 2016, reinforced that analogies to claims previously determined to be patent eligible presents a path toward establishing eligibility under section 101.

Technological Facts

The claims at issue[11] relate to data handling within a distributed system designed to minimize impact on network resources.

Eligibility Outcome

The Federal Circuit deferred identifying an abstract idea under step one as the claim was eligible under step two for improving upon prior art systems, which stored information in one location, by using a distributed architecture that allowed data to be centrally accessible while processing the data close to its source to avoid network bottlenecks. Amdocs, at pages 21-25.

Federal Circuit Reasoning

The Federal Circuit noted that, for practical reasons, “there is no such single, succinct, usable definition” of an abstract idea. Instead, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen – what prior cases were about, and which way they were decided.” Id., at page 9.

The Federal Circuit found that “the claims [at issue] are much closer to those in BASCOM and DDR” than to previously-held ineligible claims because the claimed subject matter “entails an unconventional solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases),” thereby “achiev[ing] an improvement in computer functionality.” Id., at pages 21-23. The Federal Circuit also noted that the claims are “tied to a specific structure of various components (network devices, gatherers, ISMs, a central event manager, a central database, a user interface server, and terminals or clients)” and the achieved benefit “depends upon a specific enhancing limitation that necessarily incorporates” this specific structure. Id., at pages 24-25.

As the body of case law relating to section 101 eligibility of software claims grows, and particularly in light of the recent Amdocs decision, analogy to the specific facts and outcomes of previous cases can provide a path to establishing patent eligibility of claimed subject matter.


[1] Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (U.S. 2014)

[2] DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014)

[2] Claims 1, 3, and 19 of U.S. Patent 7,818,399

[4] Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)

[5] Claims 17, 31, and 32 of U.S. Patent 6,151,604 and claims 31 and 32 of U.S. Patent 6,163,775

[6] BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)

[7] Claims of U.S. Patent 5,987,606

[8] McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)

[9] Claims of U.S. Patent 6,307,576 and U.S. Patent 6,611,278

[10] Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., Slip Op. No. 2015-1180 (Fed. Cir. Nov. 1, 2016)

[11] The court discussed claim 1 of U.S. Patent 6,836,797, claim 1 of U.S. Patent 6,947,984, claim 16 of U.S. Patent 7,412,510, and claim 1 of U.S. Patent 7,631,065