10/29/2018

A COMMON SENSE APPROACH TO IMPLEMENT THE SUPREME COURT’S ALICE TWO-STEP FRAMEWORK TO PROVIDE “CERTAINTY” AND “PREDICTABILITY”


A COMMON SENSE APPROACH TO IMPLEMENT THE SUPREME COURT’S ALICE TWO-STEP FRAMEWORK TO PROVIDE “CERTAINTY” AND “PREDICTABILITY”

Hung H. Bui

Concepts and ideas are not patent-eligible, but methods employing those concepts and ideas may well be. Like ideas themselves, “abstract ideas” are not patent-eligible, but suffer much worse fate — these “abstract ideas” suffer the same “existential crisis” as all of us and, worse, levitate in purgatory before our better angels cogitate (1) “what makes an idea abstract” and (2) “what constitutes an abstract idea.” But the truth is: “no one understands what makes an idea ‘abstract.’” That did not stop us from searching for a legal construct to address these questions and to explore methods employing an “abstract idea” for patent eligibility. Like the myth of Sisyphus, we do because we must — even if those constructs failed and failed again, year after year.

In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical two-step framework to determine whether a claim is directed to a judicial exception, i.e., an “abstract idea.” Since Alice, however, the Federal Circuit, the district courts, and the United States Patent & Trademark Office (USPTO) have all struggled to implement the Supreme Court’s Alice two-step framework in a predictable and consistent manner. For example, the Federal Circuit has issued several precedential decisions for patent eligibility of computer-implemented (software-related) and business method inventions under 35 U.S.C. § 101, including: (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (2) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); (3) Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); (4) McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); (5) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016); (6) Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); and (7) Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017). However, none of these precedential decisions provides sufficient guidance as to what aspect of a claimed invention suffices for the claim to transition from ineligible to eligible.

In this article, I write (1) to explain the struggle to implement the Supreme Court’s Alice two-step framework and why the Federal Circuit’s post-Alice § 101 precedential decisions are insufficient to provide “consistency” and “predictability” when applying the Supreme Court’s Alice two-step framework, (2) to address what I consider as “practical gap issues” associated with Alice twostep framework, and (3) to propose a new conservative approach leveraging a narrow construction of the “abstract idea” exception to implement the Supreme Court’s Alice two-step framework in a manner that is more predictable, while still fully consistent with (i) the Supreme Court precedent and (ii) the Federal Circuit’s application of Alice two-step framework in its recent decisions in DDR, Enfish, Bascom, McRO, Amdocs, Thales, and Visual Memory. This article includes several parts organized to provide the historical context to understand the current debate regarding the “abstract idea” exception under 35 U.S.C. § 101.

100 J. Pat. & Trademark Off. Soc’y 165(2018)

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