Information Technology Patents (Intellectual Property Law Series)

THIS CASEBOOK contains a selection of 160 decisions of the U. S. Court of Appeals for the Federal Circuit that analyze and discuss issues arising from information technology patents. The selection of decisions spans from 2004 to the date of publication.

A patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)). (Beyond the abstract idea of offer-based price optimization, the claims were found to merely recite "well-understood, routine conventional activit[ies]," either by requiring conventional computer activities or routine data-gathering steps. The claims lack an "inventive concept" sufficient to "transform" the claimed subject matter into a patent-eligible application of that idea.) OIP Technologies, Inc. v. Amazon. com, Inc., (Fed. Cir. 2015).

An invention is patent-eligible if it fits into one of four statutory categories: processes, machines, manufactures, and compositions. 35 U.S.C. § 101. But there is an implicit exception. "Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014) (citation omitted). To determine whether an invention claims ineligible subject matter, we engage in a two-step process. First, "we determine whether the claims at issue are directed to one of [the] patentineligible concepts"—laws of nature, natural phenomena, or abstract ideas. Id. at 2355. "The 'abstract ideas' category embodies 'the longstanding rule' that '[a]n idea of itself is not patentable.'" Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet. See Alice, 134 S. Ct. at 2358 (limiting an abstract idea to a particular technological environment, such as a computer, does not confer patent eligibility); Bilski v. Kappos, 561 U.S. 593, 612 (2010) ("[L]imiting an abstract idea to one field of use . . . d[oes] not make the concept patentable."). Intellectual Ventures I LLC v. Capital One Bank (USA), National Association, (Fed. Cir. 2015).

If we determine that the patent is drawn to an abstract idea or otherwise ineligible subject matter, at a second step we ask whether the remaining elements, either in isolation or combination with the non-patentineligible elements, are sufficient to "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2358 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)). Put another way, there must be an "inventive concept" to take the claim into the realm of patenteligibility. Id. at 2355. A simple instruction to apply an abstract idea on a computer is not enough. Alice, 134 S. Ct. at 2358 ("[M]ere recitation of a generic computer cannot transform a patent-ineligible idea into a patenteligible invention. Stating an abstract idea 'while adding the words "apply it'' is not enough for patent eligibility.'" (quoting Mayo, 132 S. Ct. at 1294)). Intellectual Ventures I LLC v. Capital One Bank (USA), National Association, ibid.

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