Using Alice’s Approach to Patent-Eligibility to Draft Patent Claims

The Federal Circuit has been criticized for creating categories of abstract ideas when applying Alice v. CLS’s two-prong framework and for refusing to define the contours of an abstract idea. Naturally, this causes uncertainty for those drafting patent claims. A typical view is that claims can be drafted by analogizing to them to the decisions. However, analogical reasoning has limited utility where the Federal Circuit continues to define new abstract ideas. This article argues that Alice’s definition of a patent-eligible claim is consistent with the Federal Circuit’s decisions and that this definition can be a useful analytical tool while drafting claims.

SCOTUS versus CAFC

Alice instructs us to distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patent-eligible invention. Alice does not define the precise contours of an abstract concept but sets forth a two-prong framework for deciding if a claim is patent-eligible. The Federal Circuit’s decisions use the two-prong framework, but typically do not discuss Alice’s “integration-into-something-more” definition of a patent-eligible claim.

Alice cites Mayo v. Prometheus, which describes the patent-eligible claims in Diamond v. Diehr, when defining a patent-eligible claim. In Mayo, the Court states that the claims at issue in Diehr are patent-eligible “because of the way the additional steps of the process integrated the equation into the process as a whole” and “added to the formula something that in terms of patent law’s objectives had significance.” In Alice, the Court explains that the claims in Diehr are patent-eligible because they “used that equation in a process designed to solve a technological problem in conventional industry practice [thereby]improv[ing] an existing technological process.”

The following argues that the Court’s “integration-into-something-more” rationale of why Diehr’s claims were patent-eligible is consistent with seemingly disparate Federal Circuit decisions, Chargepoint v. SemaConnect and Enfish v. Microsoft, even though an “integration-into-something-more” reasoning is not explicitly relied on in those decisions.

In Chargepoint, the Federal Circuit held that a claim including a control device, a transceiver, and a controller coupled with the control device and transceiver that causes the control device to turn the electric supply on based on communication from a remote server was directed to an abstract idea of communications over a network to interact with a device connected to the network. The Federal Circuit reasoned that, according to the specification, the problem was lack of a communication network that would allow drivers, businesses, and utility companies to interact efficiently and therefore a claim reciting only a communication network and devices attached to the communication network was merely “adding network capability to the charging stations.” For step two, the Federal Circuit held that the problem was network control of charging stations but states that this was the abstract idea itself.

It seems therefore that the Federal Circuit’s reasoning essentially generalizes the technical limitations to an abstract concept of communications that is merely limited to the technology of networked equipment. Given that all claims rest on building blocks per Alice, and technical features can be generalized to an abstract idea according to Chargepoint, what prevents all patent claims from being rendered unpatentable as being directed to the underlying abstract concepts? Alice does not provide specific directions other than to caution that the exclusionary principle should not lead to swallowing all of patent law, which Chargepoint’s decision is said to do. For some guidance, we begin by noting that the patent-eligible claim in Enfish integrated two abstract concepts.

The Enfish Example

Enfish held that a claim directed to a self-referential table is not directed to an abstract idea. Enfish explains that in the self-referential table “each row and column [is assigned] an object identification number (OID) that, when stored as data, can act as a pointer to the associated row or column and that can be of variable length between databases” and that “[n]otably, the logical table must have a row and a column that have the same ID value.” Enfish states that the self-referential table is an improvement over conventional databases due to the benefits of “increased flexibility, faster search times, and smaller memory requirements.” Of the benefits, Enfish focuses on the configurable aspect of the self-referential table. More specifically, “the table stores information related to each column in rows of that very same table, such that new columns can be added by creating new rows in the table.”

However, self-reference is a well-known abstract idea in not only software, but numerous other non-patentable subject matters, such as mathematics, music, etc. An example of self-reference in the software arts is recursion. Although recursion is typically defined as a function that makes a call to itself during execution, it has also been defined as a data structure that relies upon smaller instances of the very same type of structure in its representation. Michael T. Goodrich, et al., Data Structures & Algorithms in Python, 149 (2013). A well-known example of a recursive data structure is a linked list. A linked list includes data elements that are linked using pointers, similar to the pointers of the claims in Enfish.

It therefore seems arguable that a claim directed to a self-referential table is (step 1) directed to an abstract idea of a self-referential data structure and (step 2) is a “fundamental [software] practice long prevalent in our system of [information technology].” This illustrates, hopefully, how the Alice/Mayo framework can be problematic: it would have been easy, and even understandable, for an examiner or judge to hold that Enfish’s claims are directed to an abstract idea of a self-referential data structure and long prevalent or a “familiar [] choice” in the software arts. The Federal Circuit nevertheless unanimously held that the claims were directed to a non-abstract idea of a self-referential table because they were directed to “an improvement to a computer functionality itself”, “a specific improvement to the way computers operate”, and “a specific implementation of a solution to a problem in the software arts.”

Integration into Something More

So why was Chargepoint’s technical improvement of charging stations by adding networked communications abstract while Enfish’s self-referential table was not abstract? Due to Alice’s definition of a patent-eligible claim, the reasoning employed in Chargepoint necessarily implies a finding that the combination of networked communications and charging stations did not provide significantly more than the benefits of the networked communications added with the technical features of charging stations. In other words, there was no “integration-into-something-more” that defines a patent-eligible claim.

In contrast, in Enfish’s claims, a table and self-reference are integrated into something more because the self-reference is combined into the table in a specific way (the pointer) and this specific integration provided benefits that were greater than the mere combination of tabulated data and self-reference. By way of illustration, a generically self-referential table having a column that merely includes a name of the table would not be patent-eligible combination because such a non-specific combination does not result in an improvement. Such a combination merely combines the benefits of two abstract ideas without something more.

It seems, therefore, that an integration-into-something-more is not simply the benefits of the abstract concepts, or technologies generalized to abstract concepts, added together. The combination or integration of the building blocks must yield a technological improvement. For example, according to Mayo, Diehr’s claims were patent-eligible because steps “added to the formula something that in terms of patent laws had significance – they transformed the process into an inventive application of the formula” whereas a claimed “combination [that] amounts to nothing significantly more than an instruction to doctors to apply the applicable laws when treating their patients” was not patent-eligible.

A Tool for Success

An integration-into-something-more tool used for drafting a claim may include: (1) writing down the elements of a claim, (2) identifying any potential abstract concepts underlying those elements or combinations of elements, (3) identifying any integrations/combinations between the abstract concepts, (4) determining any improvements that arise only from the integration/combination, and (5) checking whether the integrations/combinations prevent the generalization of the claim to the underlying abstract concepts because the integrations/combinations have corresponding improvements.

Step (1) is self-explanatory. Step (2) is not limited to those abstract concepts already identified by the courts. In this step, concepts that aren’t tied to a particular technology should be identified. For example, the concept of communication isn’t necessarily tied to networking protocols. Step (3) includes any integration between the abstract concepts underlying the elements. The reason why integrations/concepts between technical elements or features is not used is that such elements can be reduced to an abstract concept, as Chargepoint clearly shows. Step (4) can be any technical improvement, even in a seemingly abstract concept. For example, in Enfish, the improvement was in the way the computer operated by not requiring reconfiguration of a database. This seems like an improvement to an abstract idea (tabulated data) but is nevertheless a technical improvement. In step (5) we attempt to generalize the claims to an abstract idea, as was done in Chargepoint, using various “directed to” points of view, and determine if the integration is accounted for in those generalizations.

The integration-into-something-more tool does not include the “directed to” and “ordered combination” prongs of the Alice framework because the claim is not yet drafted. Because the Federal Circuit has not specifically relied on Alice’s definition of a patent eligible claim, the tool is limited to identifying patent-eligibility issues that might arise while drafting the claims and specification. The assumption here is that the specification is being drafted after the claims are drafted. Hence, the specification can be shaped to describe the specific improvements that are recited in the claims to prevent a subsequent over-generalization by a court.