By Seán Finan – Edited by Grace Truong
McRO, Inc. v. Bandai Namco Games Am. Inc., Nos. 2015-1080, et al., 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sep. 13, 2016). Opinion hosted by the website of the United States Court of Appeals for the Federal Circuit.
The Court of Appeals for the Federal Circuit Court (the “Federal Circuit Court”) reversed the decision of the United States District Court for the Central District of California (the “District Court”), which had found invalid the patents of the plaintiffs, McRO, Inc. (U.S. Patent Nos 6,307,576 and 6,611,278) on the grounds that the claims were directed to patent-ineligible subject matter under 35 U.S.C. §101 (“§101”).
The Federal Circuit Court held that the claim was sufficiently limited and specific that it did not constitute a claim direct to an abstract idea and was therefore patent eligible subject matter under §101. In so holding, the court urged caution against oversimplifying process claims involving abstract ideas. A claim over a genus (or type) of method will not necessarily preempt the field. Where a claim leverages an abstract idea or natural law to achieve a result, its patentability will depend on it being directed to a specific or limited methodology that improves a technical process, rather than to a specific result achievable through generic machinery.
IPWatchdog and Microsoft both welcome the decision, saying it should provide much needed guidance for software designers on how to draft patent claims to avoid rejection under the Alice test. Faegre Barker Daniels notes that it remains unclear whether pre-emption will continue to be considered on both a broad and a narrow basis (see infra). The National Law Review characterizes the decision as a clarification of principles, rather than an upheaval of existing law. (more…)