02/20/18

Two Stepping with Alice in Justice Stevens' Shadow

Two Stepping with Alice in Justice Stevens' Shadow

L. Rex Sears, Ph.D., J.D. 

Alice Corp. Pty. Ltd. v. CLS Bank International articulated a two-step procedure for determining patent eligibility: “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts”; if so then at “step two, we . . . examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to transform the [concept] Into a patent-eligible application.” Lower-court opinions issued after Alice are structured around and focused on that two-step analysis. But academic commentary has focused on Alice’s assumptions about and implications for “the boundary between an unpatentable principle and a patent-eligible invention,” almost to the exclusion of the two-step inquiry that preoccupies the courts. 

This essay begins to redress the dearth of academic consideration by tracing the origins of and more deeply analyzing Alice’s two-step inquiry. First I note reasons for attributing patent eligibility’s recent emergence as a frequently and hotly litigated topic to Alice’s two-step procedural device, specifically, rather than broader substantive pronouncements about the boundary between unpatentable principles and their patentable applications. Second I argue that Alice is best understood as part of an already recognized ideological realignment away from the majority opinion in Diamond v. Diehr and toward positions advocated by Justice Stevens in the trilogy that Diehr culminated; more specifically, I show that just as Mayo Collaborative Services v. Prometheus Laboratories, Inc. reinstated the inventive concept requirement Stevens had set forth in Parker v. Flook, so Alice’s two step revives an approach advocated and exemplified by Stevens’ dissent from Diehr, which begins: “The starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered.” Third, building on that expository groundwork, I sharpen and clarify the interpretation of Alice’s two-step analysis and explain how it could have had the impact I believe it has.

99 J. Pat. & Trademark Off. Soc’y 129(2017)

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