This is a guest post from the Chisum Patent Academy.
In 2017, Federal Circuit panels regularly addressed attacks on software patent claims as ineligible under the Alice “abstract idea” exception.
The 2017 pattern, with 8 of 10 decisions finding software claims not eligible, was similar to that in 2016 (10 of 14).
The penultimate patent-invalidating decision of the year, Smart Systems (by Judge Wallach) drew an impassioned partial dissent by Judge Linn, protesting that the “abstract idea exception” was “almost impossible to apply consistently and coherently.” Hard to dispute that!
In the two eligibility-confirming decisions, Thales (by Judge Moore) and Visual Memory (by Judge Stoll), the panels reversed a lower tribunal that had found claims not eligible. In Visual Memory, Judge Hughes dissented, protesting that “[u]nder the majority’s reasoning, many patent ineligible computer-implemented inventions could be described as non-abstract because they purport to ‘improve’ a computer despite requiring someone else to provide all the innovation.”
In addition to the ten software cases, one decision, Cleveland Clinic (by Judge Reyna) found a biomedical innovation not eligible. Another, Mentor Graphics (by Judge Moore) found a claim ineligible because it read on ineligible subject matter, a transitory signal (a “carrier wave”), as well as on eligible subject matter (tangible media).
The 2017 panel opinions reasoned by analogy to prior Federal Circuit panel opinions, comparing the claims at issue to those held eligible and ineligible in prior cases. Enfish (2016 by Judge Hughes), finding eligibility, was the pre-2017 opinion most often either followed or distinguished. Frequently cited pre-2017 opinions finding ineligibility included Affinity Labs (2016 by Judge Bryson), Content Extraction (2014 by Judge Chen), and Electric Power Group (2016 by Judge Taranto).
A common theme in opinions finding a claim not eligible was that a patent owner’s argument that the patent set forth a technological solution failed because the solution and how it was achieved were not reflected in the language of the claim. Judge Reyna made the point in RecogniCorp. and repeated it in Secured Mail and Two-Way Media.
Chief Judge Prost authored three opinions finding claims ineligible (Capital One Financial, Erie Indemnity and Return Mail).
We will examine these decisions (and other key topics) in Chisum Patent Academy seminars in early March 2018.
THE FEDERAL CIRCUIT’S 2017 PRECEDENTIAL SECTION 101 CASES:
1. Cleveland Clinic Foundation v. True Health Diagnostics LLC., 859 F.3d 1352 (Fed. Cir. 2017)
2. Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017)
3. Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017)
4. Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017)
5. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017), panel rehearing and rehearing en banc denied, 870 F.3d 1298 (Fed. Cir. 2017)
6. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017)
7. Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350 (Fed. Cir. 2017)
8. Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017)
9. Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017)
10. Thales Visionix Inc. v. United States, 850 F.3d 1315 (Fed. Cir. 2017)
11. Two-Way Media Ltd. v. Comcast Cable Communications., LLC, 874 F.3d 1329 (Fed. Cir. 2017)
12. Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017)