The Elusive Meaning and Impact of Alice

By TAP Guest Blogger

Posted on April 28, 2016


This is the third report in the 7-part series from The 20th Annual BCLT/BTLJ Symposium. The reports were written by Kevin Hickey, Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.


Software Patents I: Alice Corp. v. CLS Bank

A Report from the 20th Annual BCLT/BTLJ Symposium, Part 3


It has been almost two years since the Supreme Court’s landmark decision in Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014), but the fallout from the decision still dominates the field of software patent law. Several panelists at the BCLT/BTLJ Symposium wrestled with the meaning of Alice as its ramifications play out in the federal district courts and at the USPTO.


Alice applied the two-step test for patent eligibility of Mayo v. Prometheus, 566 U.S. 10 (2012), to a software business methods patent. The Mayo test asks first whether a patent claim is directed at an ineligible category—in the case of software, an “abstract idea.” If so, the patent is invalid unless the claim elements add enough of an “inventive concept,” i.e., something “significantly more” than merely a claim on the abstract idea itself. The patent in Alice—directed at a computer-implemented scheme for mitigating “settlement risk” using a third-party intermediary—was invalidated under 35 U.S.C. § 101 as failing both steps of the Mayo test.


Neither Alice nor the Patent Act give much guidance on what, precisely, is meant by the term “abstract idea.” It is clear that at least some software and business methods inventions are still patent eligible, despite the difficulties they have faced in the courts following Alice. Professor Rob Merges suggested that one way to understand this concept is to read “abstract” as meaning “not concrete.” To survive Alice scrutiny, then, a software patent must be specific, definite, and detailed in what it discloses and claims. Professor Merges suggested that this shift would be a quite positive one as a policy matter, since the broad limits on patent eligibility of the State Street Bank era were a key driver of wasteful litigation by patent trolls. Professor Arti Rai largely agreed, and added that decisions like DDR Holdings v., 773 F.3d 1245 (Fed. Cir. 2014), offer an example of a way forward after Alice. To be patent eligible, patentees need to claim software inventions at a lower level of abstraction, with more specificity, and a concrete application of their idea. In the DDR Holdings case, it was also critical that the invention claimed a solution to a computer-specific problem.


Suzanne Michel of Google agreed that there is no clear understanding of “abstract idea,” but argued that the term is an unfortunate one that fails to capture what Alice is truly about. Ms. Michel claimed that business methods patents, like the one at issue in Alice, have been a disaster as a matter of innovation policy. Alice clearly places much stronger limits on these sorts of patents, and Ms. Michel sees the case as setting up a requirement that patents must have a truly “technical” function or effect in order to survive step 2 of the Mayo test. Steven Borsand of Trading Technologies pushed back on this notion, arguing that if the Supreme Court intended a “technical arts” test, the Justices would have adopted it explicitly. Moreover, such a test has its own problems: which inventions, precisely, are or are not “technical”?


Winslow Taub of Coving & Burling LLP addressed the impact of Alice in the federal district courts. In many post-Alice decisions, the critical conceptual move occurs prior to the first Mayo step: courts distill the actual patent claims to their “essential elements.” For patentees, this is a dangerous analytical shift, as it tends to make patents appear more abstract and therefore more likely to be held patent ineligible. Mr. Taub also described two separate policy concerns driving the Alice decision. The concern receiving the most attention is about specificity: the Supreme Court seeking to prevent board software claims that patent a “pure” algorithm, as opposed to a limited technical application of an algorithm. The second concern, receiving perhaps less attention, relates to novelty and the “natural phenomenon” exception. The idea here is that the business method claimed in Alice—mitigating settlement risk—was not invented by the patentee, but was a longstanding practice that was already “out in the world.” Arguably, all the patent in Alice claimed was performance of this known method on a computer.


In effect, then, Alice seems to blend the patent eligible subject matter inquiry under 35 U.S.C. § 101 with the inquiries into a patent’s novelty and nonobviousness under §§ 102 and 103, as well as § 112 disclosure requirements. In this way, Alice offers a kind of “quick look” analysis that gives courts a powerful tool to weed out bad patents at the outset of a suit. Most panelists agreed that this § 101 inquiry has an important, and independent, role to play in the patent system.


Read more on the BCLT/BTLJ Software IP Symposium


This report is written by Kevin Hickey, the Microsoft Research Fellow at the Berkeley Center for Law & Technology, UC Berkeley School of Law. Mr. Hickey’s scholarship on intellectual property law and innovation policy is available online at SSRN.