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Even Non-Obvious Patent Claims May Lack Inventive Concepts

| Jeremy AnapolMaria Anderson

In the recent Two-Way Media v. Comcast decision, the Federal Circuit affirmed a district court’s holding that evidence of non-obviousness was irrelevant to patent eligibility under the Supreme Court’s two-step Alice framework.[1]  The Federal Circuit’s holding in Two-Way Media is consistent with the prior Federal Circuit and Supreme Court cases holding that novelty and even groundbreaking brilliance may be irrelevant to patent eligibility.[2]  However, this precedent seems to be in tension with other cases stating that patent eligibility depends on a comparison between the claimed subject matter and the prior art.[3]  One way to reconcile this tension may be to recognize the distinct questions that must be answered when comparing patent claims to prior art for novelty, non-obviousness, and eligibility purposes, respectively.

For novelty, the question is whether there are any differences at all between the claims and the prior art.  For non-obviousness, the question is whether such differences would have been obvious to a person of ordinary skill in the art to which the patent pertains.  The question to be answered for eligibility must be distinct from both of these if, as the Federal Circuit has held, novelty and non-obviousness are irrelevant.  As explained below, the question for eligibility appears to focus on technological specificity.

When the Federal Circuit has upheld claims under Alice, it has not simply relied on novelty or non-obviousness.  Instead, it has explained that the claims recite a technology-specific solution to a technology-specific problem.  For example, in DDR Holdings v. Hotels.com, the Federal Circuit found claims patent-eligible because “the claimed solution [was] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”[4]  Similarly, in Bascom Global Internet v. AT&T Mobility, the Federal Circuit found an inventive concept because the patent at issue claimed “a technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems.”[5]

The Federal Circuit’s post-Alice precedent illustrates that the question to answer for patent eligibility is whether the purported differences between the claims and the prior art reflect a technology-specific problem and solution.  If the purported advance over the prior art is not specific to the technology described in the patent (e.g., because it is a law of nature or purely mathematical), the novelty or non-obviousness of the advance is irrelevant.  Thus, practitioners seeking to show that their claims are patent-eligible should not argue that they are merely distinct from the prior art.  Instead, they should explain how the differences between the claims and the prior art reflect a technology-specific problem and solution.  Conversely, practitioners seeking to show that claims are not patent-eligible should demonstrate why any purported solution is not unique to a specific technology, e.g., by explaining how the solution is analogous to activities conducted mentally or on paper.[6]

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[1] Two-Way Media Ltd. v. Comcast Cable Communications, No. 2016-2531 (Fed. Cir. Nov. 1, 2017), slip op. at 14-15.

[2] E.g., Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (novelty “does not avoid the problem of abstractness”); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“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”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014) (abstract ideas are unpatentable “no matter how ‘[g]roundbreaking, innovative, or even brilliant’” they may be); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (the fact that a method was “not previously employed in this art is not enough—standing alone—to confer patent eligibility upon the claims”); Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289, 1297 (2012) (even a truly groundbreaking abstract idea, like Einstein’s theory of relativity, cannot make a claim patent-eligible); Diamond v. Diehr, 450 U.S. 175, 190 (1981) (novelty is “wholly apart from whether the invention falls into a category of statutory subject matter” under § 101); Parker v. Flook, 437 U.S. 584, 587, 592-95 (1978) (a claim directed to an abstract idea was invalid even though “we assume that respondent’s formula is novel and useful”).

[3] E.g., Affinity Labs, 838 F.3d at 1257-58 (“The ‘abstract idea’ step of the inquiry calls upon us to look at 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.”); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015) (“pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (an “application of [a] law of nature to a new and useful end” may be inventive) (emphases added).

[4] Bascom Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016).

[5] DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).

[6] See also The Role of Analogies in the Alice Analysis.