Much of the havoc wrought in the software patent system by the landmark decision Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) stems from the unworkable two-part patent eligibility test based on vaguely defined and nebulous Abstract idea and significantly more constructs. The High court’s reluctance or perhaps inability to precisely define these standards and the perceived lack of discernible consistency by the patent community in the way these standards have been applied in the compendious jumble of case law, has perpetuated a sense of uncertainty. This has prompted many to cast a grim prospect for the software patent industry.
Judicial attempts at clarification have further muddied the water by resulting in a myriad of definitional categories for the Abstract idea construct and attachment of multiple supplemental inquiries to the base Alice inquiry. This has further complicated and confounded the patent eligibility question. The Alice legal framework may work as a rhetorical construct to maintain consistency of expression in legal precedents, but given its undefinable parameters, it is bereft of any analytical value for guiding drafting and prosecution strategies. It is time for a pragmatic shift in perspective.
To shed light on the post-Alice legal analysis of software patent eligibility, it may be helpful to shift focus from the vague rhetorical articulation of the Alice framework to the clear judicial objective underlying its construction. That is, ensuring that the technical scope of the software claim is offset by the technological contribution of the invention. This may be achieved, for example, through a modified claim construction in light of the specification for the purpose of the patent eligibility inquiry. The recent Court of Appeals for the Federal Circuit (“CAFC”) issued rulings confirming the indispensable role of the specification in informing the patent eligibility inquiry, lends credence to this view of the problem. From this vantage point, a cohesive vision of software patent eligibility emerges from the post-Alice chaotic landscape.
Reviewing a representative sample of patent-eligible software cases, including DDR Holdings, LLC v. Hotels.com, L.P., No.13-1505 (Fed. Cir. Dec. 5, 2014), Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016) and Trading Technologies Int’l v. CQG, No. 2016-2016 (Fed. Cir. Jan. 18, 2017), reveals that the claims at issue in each application recite a distinctive technical feature(s) that underpin what the corresponding specification describes as merits and advantages of the invention (technological contribution). In DDR, it was the step of redirecting visitors clicking on an ad link to a generated hybrid website that combined visual elements of the host site with vendor product information. In Trading Technologies Int’l, it was displaying real-time price fluctuations as dynamically shifting indictors along a static price index. In Enfish, it was a self-referential database model where column definitions were provided by the rows such that different data entities could be stored and indexed in a single table. Every software application that has cleared the Alice eligibility barrier has included a claimed technical feature relating to the technical implementation, structure, configuration or arrangement of the invention that defined or circumscribed the technical scope of the invention – in addition to a specification that clearly communicated the associated technological contribution in terms of improvements in functionality, performance or desired outcome. This blueprint has proven to have merit in overcoming the Alice obstacle.
Conversely, every software application found ineligible under Alice, has had an undefined technical scope with the specific claimed invention defined only in terms of functionality. The claimed inventions in Ultramercial, Inc v. Hulu, LLC, No. 10-1544 (Fed. Cir. Nov. 14, 2014) and TLI Communications, LLC v. AV Automotive, LLC, No. 15-1372 (Fed. Cir. May 17, 2016) were functionally specific, reciting many steps, both offered novel functionality and commercial utility. However, the respective claims of both inventions merely stipulated the end result/effect in each recited step, lacking any details as to the “Technological How” of achieving the recited effect/result. Technically abstract inventions (having an undefined technical scope) are regarded as preempting all known and unknown technical implementations (embodiments) of the recited effect and bare the hallmark of patent ineligibility under Alice.
In a patent eligibility landscape riddled with Alice-based rejections and invalidation it behooves patent practitioner and applicants alike to appreciate that not every innovation that achieves “a new, useful, and tangible result” is patentable. For example, a computer-implemented innovation involving an inventive and non-obvious business concept/method is not likely to be a successful patent if the novelty merely lies in the business method and not the technology of implementing it. This is supported, for example, by the finding in Ultramercial, Inc. Although this does not exclude inventions that address business methods from patent eligibility, it does restrict patent eligibility of such inventions to ones that disclose and describe a technical solution to the purported business challenge. Examples of successful implementation of this approach may be seen in DDR, and Trading Technologies Int’l, both of which were directed to improved software-implemented methods of conducting business.
Post-Alice patent-eligibility analysis exalts substance over form. The Supreme Court’s repeated explicit warnings against findings of eligibility based on “draftsman’s art” has induced, in lower courts and patent examiners alike, a level of hyper-vigilance towards drafting efforts designed to disguise an abstract idea as eligible subject matter. As a result, remedial drafting notions such as padding the functional language of the claim with generic hardware recitations or merely obscuring the specification with generic technical details have been demonstrably ineffective. In fact, such practices may potentially result in more harm than good by actually triggering an Alice review.
It is now more imperative than ever for practitioners to probe inventors with the right set of questions directed at identifying any distinctive technical features in the implementation, structure, configuration or arrangement of the software invention. These aspects must be explicitly recited in the claims to provide immunity against an abstract idea characterization or to serve as the inventive concept. Although this step is critical, to leave matters here is to simply rely upon the technical acumen of an examiner or a judge to discern from the claim language the distinctive technical character and contribution of the invention. This is obviously unwise. Therefore, as an essential safeguard, these aspects must be clearly communicated in the specification. Characterize the problem the invention is addressing and clearly describe technically distinctive aspects of the invention (structural, implementational, configurational, and arrangemental) and any resulting advantages and improvements in performance or functionality with respect to what has come before. Selective use of vague language and loose characterizations meant to describe the invention with a degree of interpretive latitude should be weighed in the drafting process. Specifically claiming the key technical features underlying the described improvements and tying the asserted advantages and improvement in the specification to the language of the claim has always been good practice. The result is both a good application and one that is likely to survive an Alice review.