A student-run resource for reliable reports on the latest law and technology news

Federal Circuit Flash Digest

By Kayla Haran – Edited by Ken Winterbottom

Court Finds Negative Claim Limitation Meets Written Description Requirements

International Trade Commission’s Expansion of its Jurisdiction to Include Electronic Transmissions of Digital Data Ruled Improper

Court Holds That Patent Trial and Appeal Board Did Not Deny Procedural Rights in Review



Federal Circuit Flash Digest

By Patrick Gallagher – Edited by Ken Winterbottom

TOR Project Head Alleges FBI Paid Carnegie Mellon for Hack in Connection with Silk Road 2.0 Investigation

DOJ Decides Not to Support FCC in Efforts to Preempt States Laws Limiting Municipal Broadband Projects

D.C. Court of Appeals Permits Continuation of Bulk Domestic Phone Data Collection



Senate passes Cybersecurity Information Sharing Act

By Frederick Ding — Edited by Yunnan Jiang

On October 27, 2015, the Senate passed the Cybersecurity Information Sharing Act (CISA), which enables companies to share cyber threat indicators with each other and the federal government, and immunizes them from liability for sharing under the act. Tech companies and journalists have vocally expressed opposition to the act, which may enable companies to share users’ personal information.



Senators push bill protecting interstate trade secrets amidst concerns over trolling

By Bhargav Srinivasan – Edited by Olga Slobodyanyuk

The Senate Judiciary Committee is deliberating a bill to provide US companies with extra legal protections for trade secrets for products or services used in interstate commerce. However, some legal scholars believe the bill creates strong potential for companies to engage in “trade secret trolling” by falsely accusing rivals of stealing trade secrets in order to stall their business. The ensuing debate now weighs the intent of the bill with the potential for legal bullying.



Federal Circuit Flash Digest

By Keke Wu – Edited by Yunnan Jiang

Federal Circuit Rejects-in-part the District Court’s Claim Construction

No Jurisdiction to Claim Reputational Harm after Settlement

Federal Circuit Affirms-in-part PTAB in Belden vs. Berk-Tek


MicrophoneBy Keke Wu – Edited by Erik Mortensen

In People v. Murillo, 238 Cal. App. 4th 1122 (Ca Ct. App. 2015), a California appellate court reversed a trial court decision, which had dismissed a felony complaint against Anthony Murillo alleging two counts of threatening a crime victim.

The Second Appellate District held that a reasonable listener could have understood a rap song as threatening two rape victims. The Court cited People v. Lowery in finding that the trier of fact must determine whether the defendant’s rap lyrics were a “true threat” outside the protection of the First Amendment. It also concluded that Elonis v. United States, a 2015 Supreme Court case interpreting the mens rea standard for threats under a federal statute, did not apply to the state law at issue.


Posted On Oct - 24 - 2015 Add Comments READ FULL POST

Fed. Cir. Flash DigestBy Patrick Gallagher

Obama Administration Declines to Pursue Legislation for Access to Encrypted Data

On October 10, the Obama administration announced that it no longer plans to pursue legislation that would enable U.S. law enforcement agencies to access the encrypted data of smartphone and other digital device users. FBI Director James Comey has expressed worry that the failure to pass such a law will hamper the ability of law enforcement to address modern public safety and national security concerns. Tech companies including Apple, Google, and Microsoft, along with leading academic voices in the cryptography and computer science communities, warned that a requirement that providers of digital devices offer the government a gateway to their encrypted data would also make such data vulnerable to hacking. Without a legal mandate for the provision of encrypted customer data, law enforcement will continue to rely on voluntary cooperation to in order to gain access to it.

California Continues Fight Against “Revenge Porn” With New Website

California Attorney General Kamala Harris announced on October 14 the launch of a new website that provides victims of cyber exploitation with resources to help them remove the unauthorized content from the Internet. In addition, the site contains guidelines for tech companies to prevent the sharing of  “revenge porn” as well as educational tools aimed at assisting law enforcement to crack down on the posting of such content.  This action is the latest in a series of moves by California to address the issue of cyber exploitation. Additionally, Attorney General Harris is pushing the state legislature to pass a pair of laws that would allow revenge porn cases to be prosecuted in the victims’ jurisdiction and put in place a formal means for the removal and destruction of the offensive content.

Apple Loses Patent Lawsuit against University of Wisconsin, May Pay Up To $862 Million in Damages

On October 14, a jury in the United States District Court for the Western District of Wisconsin found Apple guilty of patent infringement against the University of Wisconsin’s Wisconsin Alumni Research Foundation (WARF). The court ruled that chips contained in Apple’s iPhone 5S, 6, and 6S utilize technology that is protected under a 1998 patent filed by WARF. While damages have not yet been determined, Apple may face a penalty of up to $862 million.  In 2009, a similar lawsuit against Intel regarding the same patent resulted in an out of court settlement for $110 million according to court documents from the ongoing case against Apple.

The full complaint can be read here. Ars Technica provides further commentary.

Posted On Oct - 22 - 2015 Add Comments READ FULL POST

UnknownBy Kayla Haran

Court Rules Reputational Harm Confers Standing to Sue over Inventorship

In Shukh v. Seagate Technology, LLC, 2014-1406 (Fed. Cir. Oct. 2, 2015), the United States Court of Appeals for the Federal Circuit ruled that “concrete and particularized reputational injury” can confer Article III standing to sue. The court vacated and remanded the United States District Court for the District of Minnesota’s grant of summary judgment to defendant Seagate Technology, LLC on the grounds that reputational harm is in fact a valid basis for standing, and affirmed the district court’s remaining holdings. In the original case, plaintiff Alexander Shukh filed a complaint against his former employer Seagate alleging that Seagate wrongly omitted him as an inventor on six patents, among several other claims relating to the termination of his employment. The district court granted Seagate’s motion for summary judgment on Shukh’s claim for correction of inventorship under 35 U.S.C. § 256, finding that Shukh’s employment at-will barred his financial or ownership interest in the inventions. On appeal, Shukh argued that a trier of fact could conclude that his omission from the disputed patents caused injury to his reputation as an inventor, which he claimed prevented him from obtaining other employment. In a unanimous decision, the court found that there is a material question of fact as to whether these omissions actually caused Shukh reputational injury, but agreed that “if the claimed inventor can show that being named as an inventor on a patent would affect his employment, the alleged reputational injury likely has an economic component sufficient to demonstrate Article III standing.” In its opinion, the court emphasized that the number of patents on which an inventor is listed is a critical component of the inventor’s professional reputation.


Posted On Oct - 22 - 2015 Add Comments READ FULL POST

PatentDraftingToolsBy Jasper L. Tran – Edited by Henry Thomas

“Patenting tends to get people’s juices flowing when you put the word ‘gene’ and the word ‘patent’ in the same sentence.”—Francis Collins

 Alas, naturally occurring genes are not patentable.[1]But what about bioprinting?

Dr. Anthony Atala recently gave two TED talks, Growing New Organs[2] and Printing a Human Kidney[3], presenting that bioprinting, the3D-printing living tissues, is real and may be widely available in the near future. This emerging technology has generated controversies about its regulation; the Gartner analyst group speculates a global debate in 2016 about whether to regulate bioprinting or ban it altogether.[4]

Another equally important issue is whether bioprinting is patentable. The U.S. Patent and Trademark Office (Patent Office) has already granted some bioprinting patents and many more patent applications are pending.[5]Although these patents are presumed valid, their validity will likely be litigated and the U.S. Supreme Court might have to settle this issue in due course.

One might intuitively assume that bioprinting is not patentable because the law generally prohibits patenting human organisms.[6]However, the issue is not so simple. This Article breaks down this complex issue and analyzes the patentability of bioprinting given the current landscape of patent law.

This Article concludes that bioprinting is patentable and that bioprinting process claims are easier to patent than bioprinting product claims. Current bioprinted human living tissues are functionally similar but structurally different than real human living tissues. Until scientists can bioprint structurally similar living tissues, bioprinted products are in the clear to be patent-eligible subject matter.

However, regardless of whether bioprinting is patentable, an interesting question to consider is whether bioprinting should be patentable. After weighing both sides’ arguments, this Article proposes a potential compromise: granting patents for only bioprinting process claims, not product claims. This proposal aligns well with the current landscape of patent-eligible subject matter—bioprinting process claims are being patented whereas bioprinting product claims would likely run into opposition and challenges.

This article proceeds in four parts. Part I discusses bioprinting and cloneprinting, and the current landscape of patent subject matter eligibility. Part II explores how bioprinting can be patentable, whereas Part III explores whether bioprinting should be patentable. Part IV concludes.

I. Bioprinting &The Patent Landscape

A. Bioprinting& Cloneprinting

The author discussed the science behind bioprinting extensively in his other Article.[7]In short, bioprinting uses synthetic biology’s basic building blocks and the 3D printer’s mechanics to form functional living tissues by stacking multiple layers of cells within a gel-based material. The author coined the term “cloneprinting” to denote the bioprinting of an entire copy of an organism, either naturally existing or man-made.

B. The Patent Landscape: Patent Subject Matter Eligibility

Patent-eligible subject matters include “process, machine, manufacture, [or] composition of matter,” but not “laws of nature, physical phenomena, and abstract ideas.”[8]Essentially, “anything under the sun that is made by man” is patentable.[9]For example, the Patent Office has granted patents for nonhuman organisms such as plants and animals.[10]However, “no patent may issue on a claim directed to or encompassing a human organism.”[11]Thus, the patentability of human bioprinting is more complex than bioprinting of nonhuman organism.


A. Bioprinting Product Claims

1. No “Product of Nature” Claim: Chakrabarty’s Two-Prong Test

To avoid the “product of nature[’s]” hammer, a claim must satisfy a two-prong test: (1) a product of human ingenuity and (2) nonnaturally occurring.[12]The Supreme Court held in Diamond v. Chakrabarty that oil-eating bacteria are patent-eligible subject matter because such bacteria were man-made and could not be found in nature.[13]Conversely, the Supreme Court held in Association for Molecular Pathology v. Myriad that an “isolated” DNA fragment was not patent-eligible subject matter. [14] Because its genetic information was neither created nor altered, it did not qualify as a product of human ingenuity and because isolating DNA from its surrounding genetic material did not significantly add to DNA’s natural state, it did not qualify as nonnaturally occurring.[15]

Accordingly, bioprinting’s patentability depends on whether a bioprinted product is a product of human ingenuity and nonnaturally occurring. Technically, anything related to bioprinting is a result of human ingenuity: both bioprinting processes and bioprinted products are man-made. The more difficult-to-satisfy prong is proving that a bioprinted product is nonnaturally occurring. If a bioprinted organism or its living tissue is an exact replica of a naturally occurring organism or its living tissue, then that bioprinted product is not patent-eligible subject matter. Conversely, if a bioprinted organism or its living tissue is a complete redesign of another naturally occurring organism or its living tissue, then that bioprinted product can be patentable.

Current state of the art of bioprinting products falls into in the latter category. Current bioprinted human living tissues are functionally similar but structurally different than real human living tissues. Until scientists can bioprint structurally similar living tissues, bioprinted products are different enough from their naturally-occurring analogs to be patent-eligible subject matter.

2.No “Human Organism” Claim: The AIA § 33(a)

Bioprinting claims must face another scrutiny from the AIA § 33(a), which forbids issuance of patents “directed to or encompassing a human organism.”Courts could potentially construe § 33(a) broadly to derail patent eligibility of many inventions, including bioprinting.[16]But until the legislature or courts interpret “directed to or encompassing a human organism,” the Patent Office can reject any bioprinting claim “directed to” or “encompassing” human under the broadest reasonable interpretation.[17] Patent prosecutors must carefully draft bioprinting claims to avoid falling into this pothole. One possible way is to couch bioprinted human living tissues as implants or medical devices to use in a human body. For example, U.S. Patent No. 8,394,141 claims an implant formed from “fibers of defatted, shredded, allogeneic human tissue” including a “tendon, fascia, ligament, or dermis” and a “growth factor” (to induce cell growth).

B. Bioprinting Process Claims

Even if bioprinting did not pass the gatekeeper of § 101, bioprinting can still be patentable as process claims rather than products claims. Rather than focusing on the forbidden products, a bioprinting process claim can be directed toward the printing activities. As long as a bioprinting process claim does not depend on bioprinted products i.e., avoiding mentioning the forbidden products, such claim can be patentable. For example, U.S. Patent No. 7,051,654 claims a method of “forming an array of viable cells”; U.S. Patent No. 8,691,974 claims a method of “producing 3-D nano-cellulose based structures.” Put simply, although 3D-printed cells could theoretically be used in unpatentable products later, the 3D printing process itself does not per se violate the principle of no patent for human organisms.

Several recent Supreme Court cases addressing patentable subject matter seem, at first, relevant to discussing bioprinting: (1) Mayo v. Prometheus, which clarified the patentability of process claims; and (2) Alice v. CLS Banks, which discussed the patentability of computerized algorithms. Neither case, however, preempts the patentability of bioprinting. In Mayo v. Prometheus, the Supreme Court held that when a claimed process was merely a law of nature, the result was not patentable.[18]Because bioprinting’s processes were created by scientists and not found in nature, bioprinting does not qualify as a “law of nature.” Therefore, Mayo does not apply to bioprinting process claims. Unfortunately, besides Mayo, there is no closer case where the process was patentable despite being closer to a law of nature than bioprinting is. Meanwhile, Alice v. CLS Banks scrutinized the patentability for software patents. 3D printing and bioprinting do not fundamentally depend on software, but print using an electronic blueprint—i.e., a Computer-Aided Design file (“CAD file”). Thus, Alice does not necessarily affect the patentability of 3D printing and bioprinting. [19]

C. Cloneprinting

The Federal Circuit in In re Roslin Institute found that a clone which was the exact genetic copy of a naturally existing animal (in this case, a sheep) was not patent-eligible subject matter.[20] There is no reason to expect that a clone made by any other process would be treated differently.[21] However, in the wake of Chakrabarty, numerous patents have been filed on transgenic organisms. For example, U.S. Patent No. 8,088,968 claims a transgenic animal (e.g., a mouse) and its tissues. Accordingly, cloneprinting of a naturally existing organism is likely not patentable, but cloneprinting of a man-made organism (i.e., a genetically engineered animal) could likely be patentable.


A. Why Bioprinting Should Be Patentable

The reasons for bioprinting to be patentable mirrors the rationale of having a patent system and granting patents in the first place: to promote innovation and to incentivize inventors to recoup their investments.

The patent system exists to promote innovation. Inventors disclose their inventions to the public in exchange,quid pro quo, for a 20-yearmonopoly of that invention.This exclusivity period allows them to recoup their investment in research and developments. Without this exclusivity period, inventors lack the incentive to invent. Therefore, the patent system existsto promote innovation.

Bioprinting is still in its infancy.[22] Without further research and development, bioprinting would likely not mature and such technology would plateau, much like, for example, cloning or stem cell research technology did.[23] Granting bioprinting patents would encourage research and development because patents incentivize inventors to innovate.

Granting bioprinting patents has both benefits and drawbacks. Granting bioprinting patents allows more bioprinting advances and thus, makes bioprinting available sooner. However, granting bioprinting patents would likely drive up the cost to bioprint because a portion of that cost would go into paying for inventors’ patent rights. On one side, at least some people would be able to afford to bioprint, whereas on the other side, everyone would have to wait longer until the bioprinting technology becomes available. One of these outcomes is clearly preferable; every day without bioprinting results in real people having diminished quality of life or even dying, and there is simply no time to waste in bringing the bioprinting technology to the market. Because time is the more important variable between cost and time, bioprinting should be patentable.

B. Criticism of Patenting Bioprinting: Condoning Humans “Playing God”

Granting bioprinting patents condones and validates humans “playing God.” To play God is to disregard creation, and to meddle with things that are “natural.”[24]“Playing God” is a common religious criticism to modern biotechnology.

“Playing God” is a rather overplayed criticism, as it has surfaced in such diverse topics as anesthesia, contraception, transplantation, brain death diagnosis, stem cell research, genetic engineering, and synthetic biology.[25]Almost everything humans currently do can be viewed as “playing God.” From building houses for shelter (rather than living in natural caves) to typing up documents (rather than carving on stones), our species excels in using technology to change the status quo. What makes bioprinting different than building houses for shelter? If humans play God, they risk offending many people, including those who belong to established religions. But if humans do not play God, they would not discover, progress, and innovate. On balance, it seems better to play God while keeping this ethical consideration in mind; thus, bioprinting should be patentable.

C. A Compromise: Bioprinting Process, but not Product, Claims Should Be Patentable

After weighing both sides’ arguments, this Article proposes a potential compromise: granting patents for only bioprinting process claims, not product claims. This proposal aligns well with the current landscape of patent-eligible subject matter—bioprinting process claims are being patented whereas bioprinting product claims would likely run into opposition and challenges. For bioprinting, process claims are indeed easier to patent than product claims.

This compromise would likely retain the benefits of promoting innovation and incentivizing inventors—inventors can still recoup their investments by some but not a lot—while only condoning some—but not all—examples of humans “playing God” violation. Furthermore, while granting patents on the product of bioprinting could result in a staggering number of patents – every new permutation on a type of tissue would be eligible – limiting patents to processes for bioprinting would result in a more finite number of patents.


This Article discussed whether bioprinting is patentable, how bioprinting can be patentable, and whether bioprinting should be patentable. This Article then proposed a compromise: granting patents for only bioprinting process claims, not product claims. Only time will tell how bioprinting’s patent landscape will play out.

[1] Association for Molecular Pathology v. Myriad Genetics, 133 S.Ct. 2107, 2109–10 (2013).

[2] Anthony Atala, Growing New Organs, TED (Oct. 2009), http://www.ted.com/talks/anthony_atala_growing_organs_engineering_tissue (presenting that instead of harvesting or transplanting human organs, Anthony Atala’s lab grows human organs—from muscles to blood vessels to bladders, and more).

[3] Anthony Atala, Printing a Human Kidney, TED (Mar. 2011), [hereinafter TED talk: Printing Human Kidney], http://www.ted.com/talks/anthony_atala_printing_a_human_kidney(demonstrating a 3D printer using living cells to output a transplantable kidney).

[4] Gartner Says Uses of 3D Printing Will Ignite Major Debate on Ethics and Regulation, Gartner.com (Jan. 29, 2014), available at http://www.gartner.com/newsroom/id/2658315 (“Rapid development of 3D bioprinters will spark calls to ban the technology for human and nonhuman use by 2016”). For a discussion on the bioprinting market, see generally Root Analysis Priv. Ltd., 3D Bioprinting Market, 2014–30 (2014).

[5] See, e.g., U.S. Pat. No. 6,942,830; U.S. Pat.No. 7,051,654; U.S. Pat. No. 8,691,274.

[6] See, e.g., Leahy-Smith America Invents Act § 33(a) (2012);Dennis Crouch, Patents Encompassing a Human Organism, PatentlyO (Dec. 2, 2012), http://patentlyo.com/patent/2012/12/ex-parte-kamrava.html.

[7] SeeJasper L. Tran, To Bioprint or Not to Bioprint, 17 N.C. J.L. & Tech. ___ (forthcoming 2015) [hereinafter Tran, To Bioprint], available athttp://ssrn.com/abstract=2562952.

[8] 35 U.S.C. § 101 (2012).

[9] Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).

[10] SeeRyan Hagglund, Patentability of Human-Animal Chimeras, 25 Santa Clara Computer& High Tech. L.J. 51, 61–66 (2009).

[11] Leahy-Smith America Invents Act § 33(a) (2012).

[12] Chakrabarty, 447 U.S. at 309–10.

[13] Id.

[14] 133 S. Ct. at 2109–10.

[15] Id.

[16] Ava Caffarini, Comment, Directed to or Encompassing A Human Organism: How Section 33 of the America Invents Act May Threaten the Future of Biotechnology, 12 J. Marshall Rev. Intell. Prop. L. 768, 770 (2013).

[17] See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).

[18] 132 S.Ct. 1289, 1291–92 (2012).

[19] 134 S.Ct. 2347, 2357–59 (2014).

[20] 750 F.3d 1333, 1337 (Fed. Cir. 2014).

[21] See id.

[22] See Mark A. Lemley, IP in a World Without Scarcity, 90 N.Y.U. L. Rev. 460, 471 (2015) (“3D printing is in its infancy”).

[23] See Tran, To Bioprint.

[24] See Peter Dabrock, Playing God? Synthetic Biology as a Theological and Ethical Challenge, 3 Systems & Synthetic Biology 47–54 (2009).

[25] Id. at 48.

Posted On Sep - 23 - 2015 Add Comments READ FULL POST

UnknownBy Allison E. Butler – Edited by Travis West

I. Introduction

On June 19, 2014, the U.S. Supreme Court handed down its first software patent case in thirty-three years.[1] In the case of Alice Corp. Pty. Ltd. v. CLS Bank,[2] the Court determined the patent eligibility for computer-implemented inventions. While incorporating its previous analysis of Mayo Collaborative Services v. Prometheus Lab., Inc.,[3] the Court verified that computer-implemented inventions have protection through patent subject matter eligibility; however, the Court limited this protection by finding that generic computer implementation must further transform an abstract idea to be a patent-eligible invention under 35 U.S.C. § 101. The ruling of Alice is significant as it replaces the once general view held by the courts that §101 was nothing “more than a ‘course [patent] eligibility filter’”[4] with a defined patent eligibility filter derived through a two-part analysis that has placed patentability under Section 101 at “a higher bar.”[5] It has not only been the courts who have taken notice of Alice. The USPTO issued advisories and instructions for its examiners and the public at large as to the handling of patent eligibility for software patents and denied pending patents upon the issuance of Alice.[6]The impact of Alice is broad but it appears to be a decision that was long overdue to address the many issues facing patentability of subject matter eligibility in various arenas where such issues are dominant.

II. Alice

A. Background

The facts in Alice derive from the assignment of several patents from Sywcho Infrastructure Services Pty LTD to the petitioner Alice Corporation Pty Ltd.[7]The assigned patents related to a computerized scheme for mitigating settlement risk.  Specifically, the patents were designed to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary to manage certain forms of financial conditions.[8]Upon receipt of the information, the intermediary would take the data and notify financial institutions to facilitate the approved transactions.

In 2007, CLS Bank filed an action against Alice Corp. seeking a declaratory judgment that the patentsassigned to Alice Corp. were invalid, unenforceable, or not infringed.[9] Alice Corp. counterclaimed, alleging infringement.[10] During the pendency of the case, Bilski v. Kappos[11]was decided by the Supreme Court. In Bilski, the Court determined that a mathematical formula for hedge risk was ineligible for patent protection. Upon the issuance of Bilski, both parties filed cross-motions for summary judgment.[12] The District Court responded to the motions finding that all the claims were patent ineligible because they were directed to an abstract idea.[13]  A divided panel of the United States Court of Appeals for the Federal Circuit reversed; however, the Federal Circuit granted a rehearing en banc, vacated the panel opinion, and affirmed the District Court’s opinion. [14]

B. Adoption of Mayo Analysis

In commencing its decision, the Supreme Court recited §101 of the Patent Act with reference to subject matter eligibility for patent protection, which provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title.”[15]

Observing that it has for 150 years heldan implicit judicial exception for patent ineligibility for “laws of nature, natural phenomena and abstract ideas,”[16] the Court noted “this exclusionary principle as one of pre-emption.”[17]  In further explanation, the Court stated that laws of nature, natural phenomena, and abstract idea are “the basic tools of scientific and technological work”[18] and that the “‘[m]onopolization of those tools through the grant of a patent might tend to impede on innovation more than it would tend to promote it,’ thereby thwarting the primary object of the patent laws.”[19] Hence, the Court concluded that a distinction must be made between patents that claim the building blocks of human ingenuity, which “would risk disproportionately tying up the use of the underlying ideas,” and those patents that remain eligible by integrating the building blocks into further innovation.[20]

Upon further discussion, the Court incorporated the two-part analysis set forth in Mayo:

First, whether the claims at issue are directed to the patent-ineligible concept; and

Second, if so, whether the claim contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.[21]

Applying the first step, the Court held that the claims were drawn to abstract idea of intermediated settlement.[22] Relying on its previous decision of Bilski, the Court noted that such ideas used by Petitioner’s patent are “fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”[23] Similarly, “intermediated settlement” like hedging in Bilski, is an “abstract idea beyond the scope of § 101.”[24] The Court rejected Alice’s argument that “abstract–ideas category is confined to ‘preexisting fundamental truths’ that ‘exist in principle a part from any human action’”[25] further confirming the similarity to Bilski.

Upon finding the judicial exception, the Court continued with the second step of its analysis to determine whether Alice’s claims contained a conceptsufficiently inventive to have patent-eligible application.  Finding Mayo instructive, the Court further clarified that merely “appending conventional steps, specified at high level of generality”[26]was insufficient to constitute an inventive concept.  In order to be patent eligible, a patent must improve an existing technological process beyond the fact that the process is implemented on a computer.[27] Thereafter, the Court recited the 4-step method claim of Petitioner thatincluded the following:

(1)   Creating shadow records for each counterparty to a transaction;

(2)   Obtaining start-of-day balances based on the parties’ real-world accounts at exchange institutions:

(3)   “adjusting” the shadow records as transactions are entered ,allowing only those transactions for which the parties have sufficient resources; and

(4)   Issuing irrevocable end-of-day instructions to the exchange institutions to carry out the permitted transactions.[28]

Upon examination, the Court concluded that the Petitioner’s claims did no more than mandate a generic computer to perform generic computer functions.[29] Based on precedent, the Court concluded that it was “not ‘enough” to transform an abstract idea into a patent–eligible invention.”[30]Anticipatingthe Court’s characterization, Aliceargued that itsclaims were “system claims” because their process required “specific hardware” configured to perform “specific computerized functions.”[31] In response, the Court retorted “the system claims are no different from the method claim in substance” and cautioned against “interpreting §101 in ways that make patent eligibility depend simply on the draftman’s art.”[32]


After the decision in Alice, the USPTO issued preliminary examination instructions for examiners to assist in evaluating subject matter eligibility of claims involving abstract ideas. In particular, the USPTO withdrew notice of allowance of applications similar to Alice.[33] Upon withdrawal, applicants were given notice and, for those who already paid an issue fee, they were instructed to request a refund. [34]

In December 2014, the USPTO issued further instructions under Alice with a caveat that all claims were to be fully examined under each of the other patentability requirements.[35] As further instructions, the USPTO established a two–part analysis for Judicial Exceptions Flow Chart based on Alice.SeeIllustration 1.

The USPTO also provided summaries of case law illustrating laws of nature, natural phenomena, and abstract ideasthat fall within the judicial exception, which include, but are not limited to the following[36]:

  • An isolated DNA[37]
  • A Correlation that is the consequence of how a certain complaint is metabolized in the body[38]
  • Electromagnetism to transmit signals[39]
  • Creating a contractual relationship[40]
  • Using advertisement as an exchanges or currency[41]
  • Processing information through a clearinghouse[42]
  • Managing a game of bingo[43]

Limitations that qualify as significantly more when recited in a claim with judicial exception are also listed and include, but not limited, to the following[44]:

  • Improvements to another technology or technical field;[45]
  • Improvements to the functioning of the computer itself;[46]
  • Applying the judicial exception with, or by the use of, a particular machine;[47]
  • Effecting a transformation or reduction of a particular article to a difference state of thing.[48]

IV. Courts

As reflected in the summaries provided by USPTO, the courts themselves have implemented Aliceby often referring to the two-part analysis as the Mayo/Alice framework. Overall, it appears courts have demonstrated that they will evaluate software claims utilizing the framework established by the Supreme Court while being “careful to avoid allowing the typically convoluted claim language–‘patent-ese’ to obfuscate the general purpose and real essence of software patent claims.” [49]However, some courts post–Alice have found eligibility based on being an inventive concept.[50]In a recent study of the top federal courts with the most patent filings[51] by California State University Long Beach, the impact of Alice was examined as to dismissals of actions based on Alice. Notably, over 7000 patent cases filed withfederal courts were examined from June 2013 through June 2014 and from June 2014 through June 2015. Overall, the study found that there was a significant drop of patent infringement filings in all but two districts[52]and a recognizableincrease of Alice motions based on under either a Motion to Dismiss pursuant FRCP 12 (b)(6) or Motion for Judgment on the Pleading pursuant to FRCP 12(c).  The most common basis for denial of a these pre-trial motions was based on the motions conflicting with the claim construction process, which is a pre-trial motion used in a patent infringement case to define the scope of property right being enforced in the lawsuit. While this appears to be a valid basis for denial of a motion based on Alice, it would appear that an Alice analysis would eliminate the need for a claim construction. Notably, the Eastern District to Texas, which has the highest patent filings in the country, recently adopted a new standing order with reference to letter brief requirements to address the numerous Alice motions filed in this court.[53] Previously, most Alice challenges were dismissed without prejudice until a claim construction was facilitated; however, this recent order may be an indication that Alice challenges could become as routine as other pre-trial motions in patent cases.

V. Conclusion

The impact of Alice is vast. It is apparent that defense attorneys have fully embraced Alice by the influx of pre-trial motions challenging patents claim. Moreover, there is some showing of decrease of patent infringement lawsuits. However, whether companies will no longer be challenged in court by a patent assertion entity (PAE), patent holding company (PHC) and non-practicing entity (NPE) or “patent trolls” is still questionable. Even if they are challenged, is Alice enough? Will further legislative action be warranted to provide a different type of protection?  While time will provide these answers, the Supreme Court was clear that the broad language of § 101 would still grant software developers protection but the two-part test in Alice has narrowed the scope of that protection. Software developers now have the burden of proving their claims provide substantially more and that burden cannot be overcome by creative writing. Therefore, it is important to observe the recent rulings as well as the USPTO’s illustrations to determine eligibility prior to seeking patent protection.



Illustration I[54]







[1]Diamond v. Diehr, 450 U.S. 175 (1981).

[2]Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

[3]Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).

[4]Research Corp. Techs., Inc. v. Microsoft Corp., 627 F. 3d 859, 869(Fed. Cir. 2010).

[5]Enfish, LLC v. Microsoft Corp., 2014 WL 5661456 at *2 (C.D. Cal. Nov. 3, 2014).

[6]SeeDirector’s Forum: A Blog from USPTO’s Leadership, United States Patent and Trademark Office(Aug. 4, 2014), http://www.uspto.gov/blog/ (hereinafter “Director’s Forum”); see alsoMemorandum from Andrew H. Hirshfeld, Deputy Comm’r, USPTO, to Patent Examination Policy, U.S. Patent & Trademark Office, to Patent Examining Corps: Preliminary Examination Instructions in View of the Supreme Court Decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, et al. (June 25, 2014), available at http://www.uspto.gov/patents/announce/alice_pec_ 25jun2014.pdf (hereinafter “Memorandum from Andrew H. Hirshfeld”);2014 Interim Guidance on Patent Subject Matter Eligibility,79 Fed. Reg. 74618 (Dec. 16, 2014)(to be codified at 35 C.F.R. pt. 1).

[7] For the purposes of this case, the Supreme Court focused on U.S. Patent Nos. 5970479, 6912510, 7149720, and 7725375.

[8]Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 134 S. Ct. 2347, 2523 (2014).


[10] Id.

[11]Bilski v. Kappos, 561 U.S. 593 (2010).

[12]Alice, 134 S. Ct. at 2523.


[14]Id. (finding that seven of the ten participating judges agreed that the petitioner’s method and media claims were patent ineligible with a plurality of the panel relying on Mayo).

[15]35 U.S.C. § 101 (2012).

[16] Alice, 134 S. Ct. at 2354 (citing Bilski, 561 U.S. at 601-02 (2010)); see alsoO’Reily v. Morse, 56 U.S. 62 (1853); Le Roy v. Tatham, 55 U.S. 156, 174-75 (1853).

[17]Alice, 134 S. Ct. at 2354 (citing Bilski v. Kappos, 561 U.S. 593, 611-12 (2010) (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”)).

[18]Id. (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).

[19]Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs. Inc., 132 S. Ct. 1289, 1293 (2012));see U.S. Const., art. I, §8, cl. 8 (Congress “shall have Power. . . to promote the Progress of Science and useful Arts”).

[20]Alice, 134 S. Ct. at 2354-55 (quoting Mayo, 132 S.Ct. at 1294).

[21]Mayo 132 S. Ct. at 1298.

[22] Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 134 S. Ct. 2347, 2355-56 (2014).

[23]Id. at 2356 (quoting Bilski, 561 U.S. at 611).

[24]Alice, 134 S. Ct. at 2356.

[25]Id(quoting Mayo, 132 S. Ct. at 1297) (international quotation marks omitted).

[26]Id. at 2357 (quoting Mayo, 132 S. Ct. at 1300).

[27]Id.at 2358.(citing Diamond v. Diehr, 450 U.S. 175 (1981) (holdingthat a computerized-implemented process for curing rubber was patent eligible but not because it involved a computer)).

[28]Id. at 2359.


[30]Id.at 2358(citing Mayo Collaborative Servs. v. Prometheus Labs.Inc., 132 S. Ct. 1289, 1294 (2012)).

[31]Id.at 2360.

[32]Id.(quotingMayo, 132 S. Ct. at 1294) (internal quotation marks omitted).

[33]See Directors Forum, supra note 6.


[35]See2014 Interim Guidance on Patent Subject Matter Eligibility,supra note 6.

[36]Memorandum from Andrew H. Hirshfeld, supra note 6.

[37]Id.(citing Molecular Pathology v. Myriad Genetics, Inc. 133 S. Ct. 2107 (2013)).

[38]Id.(citing Mayo Collaborative Servs. v. Prometheus Labs.Inc., 132 S. Ct. 1289, 1293 (2012)).

[39]Id.(citing O’Reily v. Morse, 56 U.S. 62 (1853)).

[40]Id. (citing buySAFE, Inc. v. Google, Inc., __F. 3d ___, 112 USBQ 2d 1093 (Fed. Cir. 2014)).

[41]Id. (citing Ultramcial, LLC v. Hulu, LLC and Wild Tangent, __ F. 3rd ___, 112 USPQ2d 1750 (Fed. Cir. 2014)).

[42]Id. (citing Dealertrack Inc. v. Huber, 674 F. 3d 1315 (Fed. Cir. 2014)).

[43]Id(citing Planet Bingo, LLC v. VKGS LLC __ Fed. Appx. ___ (Fed. Cir. 2014) (non-precedential)).

[44] The USPTO provides other samples and factual patterns that readers are encouraged to read 2014 Interim Guidance on Patent Subject Matter Eligibility,supra note 6.

[45]Diamond v. Diehr, 450 U.S. 175, 184 (1981).


[47]Bilski v. Kappos, 561 U.S. 610, 611 (2010).

[48]Diamond v. Diehr, 450 U.S. 175, 184 (1981).

[49]In re TLI Communications LLC Patent Litigation, 2015 WL 627858 (2015).

[50]DDR Holdings Inc. v. Hotels.com. L.P., 773 F. 3d 1245, 1257 (Fed. Cir. 2014)(holding software patent that claimed a process of generating a website with the same content as the host website when a third-party advertisement was selected as an inventive concept); see alsoHellios Software, LLC v. SpectorSoft Corp., 2014 WL 4796111 at *17 (D.Del. Sept. 18, 2014)(holding patents related to controlling computer network access and monitoring data associated with Internet sessions were not directed to an abstract idea).

[51]The top six patent-filed federal courts that includes the following: Eastern Texas, Delaware, Northern Illinois, Southern Florida, Southern California, Central California and Northern California. See data available at Data obtained athttp://www.uscourts.gov/news/2014/04/21/patent-cases-rise-two-courts-leading-nation

[52]Eastern District of Texas and Northern District of California.

[53]See, http://www.txed.uscourts.gov/page1.shtml?location=info:judge&judge=17.

[54]2014 Interim Guidance on Patent Subject Matter Eligibility,79 Fed.Reg. 74618 (Dec. 16, 2014)(to be codified at 35 C.F.R. pt. 1).

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