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Post-Alice Rationale for 35 USC 101 Ineligibility

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In the context of a commentary about the effects of the Alice Corp. v. CLS Bank decision, I began compiling a list of the rationale by which courts, post-Alice have cited in reaching a conclusion of patent ineligibility.

As I dug into this task, I found these rationale to be so sprawling and extensive that they overwhelmed the big-picture commentary, and I decided to present them as a separate data set.

My purpose in presenting this set of comments is not to advocate for or against the patent eligibility of any technology, or even for or against the wisdom or legal accuracy of any one case. Rather, the following list demonstrates that the rationale cited by the courts to invalidate patents under 35 USC 101, in the wake of Alice are (1) based upon subjective conclusions, and (2) not only widely varying, but often directly conflicting requirements (e.g., a first patent held ineligible specifically because its teaching is superficial and inadequate, and a second patent held ineligible despite an extensively detailed teaching that is dismissed as inconsequential).

To this end, here are the reasons that recent courts have cited for finding claims to be “abstract” under the Alice interpretation of 35 USC 101:



“Old” techniques:
  • The area or problem that the technology addresses is “old” – irrespective of the novelty of the claimed improvement.
    • buySAFE v. Google : “The claims are squarely about creating a contractual relationship that is beyond question of ancient lineage.”
    • CMG Financial Services v. Pacific Trust Bank : “We find that the ‘509 patent’s eleven claims are directed to the abstract idea of a mortgagee paying down a mortgage early when funds are available and borrowing funds as needed to reduce the overall interest charged by the mortgage. These claims merely recite basic, longstanding banking principles.”
    • DietGoal v. Bravo : “Meal-planning is surely a ‘long prevalent’ practice. Although specific approaches to meal-planning have evolved as dietary knowledge has advanced and social mores have changed, humans have assuredly engaged at least in rudimentary meal-planning ‘for millennia.'”
    • EveryPennyCounts v. Wells Fargo : “The concept claimed in the ‘849 and ‘217 patents is a ‘basic concept’ and a ‘fundamental economic practice long prevalent in our system of commerce.’ As discussed above, economic actors of every description and every motive – from the scam artist to the frugal wage-earner to the government – have understood and exploited the elemental notion of regularly and frequently capturing a small and conspicuous quantity and segregating and retaining the captured quantities until the quantities accumulate into a large quantity – a program indebted only and entirely to the fundaments of elemental arithmetic – simple addition.”
    • Ex parte Jung : “Each of claims 43-70, 72, 75-83, and 85 recites a fundamental economic practice such as ‘calculating a risk utilizing the epigenetic information,’ which is an abstract idea.”
    • I/P Engine v. AOL (Mayer concurrence): “The use of search engines was well-established and the clear advantages of combining content-based and collaborative filtering were widely recognized at the time of the claimed invention. The asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information about a specific area of interest.”
    • Loyalty Conversion v. American Airlines : “The exchange of one vendor’s non-negotiable award credits for credits that are negotiable with another vendor is an established form of the familiar business practice of converting a non-negotiable currency into a negotiable one.”
    • OpenText v. Alfresco : “The claims challenged here fall well within the conceptual zone of Bilski and Alice, and amount to abstract ideas. They recite a very simple computer-driven method to engage in the commonplace and time-honored practice of interacting with customers to promote marketing and sales. This describes the most basic and widely-understood principle of marketing: identify potential or current customers and engage with them to improve their customer experience.”
    • Tuxis v. Amazon : “Claim 1 requires nothing more than suggesting an additional good or service, in real time over an electronic communications device, based on certain information obtained about the customer and the initial purchase. Shrewd sales representatives have long made their living off of this basic practice. This type of marketing strategy is at the heart of claim 1 and has been practiced as long as markets have been in operation.”
    • Walker v. Google : “Plaintiff asserts that the methods and systems of the ‘270 patent claim more than an abstract idea because the claims contain meaningful limitations, specifically requiring the following steps… However, none of these limitations adds anything meaningful to the basic concept of controlled exchange of information about people as historically practiced by matchmakers and headhunters – and as disclosed in the patent specification itself.”


Preemption:
  • The claim is not sufficiently specific or limited to any particular use, and therefore preempts a broad range of ideas.
    • CMG Financial Services v. Pacific Trust Bank : “Even if the Court construed the ‘509 patent to require the use of a computer, the ‘software-implemented instructions’ provide no meaningful limit on the claims.”
    • CMG Financial Services v. Pacific Trust Bank : “The claim language is sufficiently broad that anyone performing the steps identified in the claims would violate the ‘509 patent if they used any software-implemented instructions on any machine to perform those tasks. The ‘509 patent does not claim any particular software, nor any particular machine.”
    • Digital Image v. Electronics for Imaging : “The claim recites a process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information – i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions – and organizing this information into a new form. … The method claim is ‘so abstract and sweeping’ as to cover any and all uses of a device profile.”
    • Eclipse v. McKinley : “The claims are directed to the abstract idea of asking someone whether they want to perform a task, and if they do, waiting for them to complete it, and if they do not, asking someone else. There are likely a myriad number of ways to do so, and the ‘681 patent preempts them all.”
    • Genetic Tech v. LabCorp : “Because claim 1 does not confine its reach to a particular inventive application of the recited natural correlation, there is a danger that future innovation based on the correlation will be stifled.”
    • Loyalty Conversion v. America Airlines : “The claims would read on virtually any computerized method of performing that function, even if the method used were quite different from any conventional computer-based means. These patents, like other similar business method patents, have the potential to foreclose future innovation disproportionately ‘relevant to the contribution fo the inventor.'”
    • McRO v. Activision : “What the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality. Plaintiff emphasized that the rules inventively take into account the timing of the phoneme sequence. But the specification states clearly that ‘[i]n operation and use, the user must manually set up default correspondence rules’ that ‘specify the durational information needed to generate appropriate transitionary curves between morph weight sets, such as transition start and end times.’ And while the patent does provide an example of a very partial set of default and secondary rules, it expressly states that ‘this is only an example of a set of rules that could be use[d] for illustrative purposes.’ Because the claim purport to cover all such rules in light of the prior art, the claim merely states ‘an abstract idea while adding the words ‘apply it’.'”
    • Walker v. Google : “Walker contends that the asserted claims of the patents-in-suit ‘integrate’ the abstract idea of ‘controlled information exchange between anonymous parties’ into ‘something more thereby transforming’ this building block of human ingenuity into a patent-eligible invention. However, the Court fails to see anything ‘more’ in the asserted claims than the abstract idea, implemented in a conventional manner using a general purpose computer, and is compelled to conclude that the patents risk ‘disproportionately tying up the use of the underlying ideas.'”

  • The claim recites a field of use, but it doesn’t matter because field-of-use recitations are non-limiting.
    • Digitech Image v. Electronics for Imaging : “Nothing in the claim expressly ties the method to an image processor. The only mention of a ‘digital image reproduction system’ lies in the claim’s preamble, and we have routinely held that a preamble does not limit claim scope if it ‘merely states the purpose or intended use of an invention.'”
    • EveryPennyCounts v. Wells Fargo : “Like the patents in Bilski, the ‘849 and ‘217 patents are invalid despite the patents’ ‘limiting [the] abstract idea to one field of use’ – credit or debit card transactions.”
    • Loyalty Conversion v. American Airlines : “In this case, although the field of use is narrow – the conversion of one entity’s loyalty award points into those of another entity – the preemptive effect of Loyalty’s claims within that field of use is broad.”
    • Loyalty Conversion v. American Airlines : “An example of an abstract idea would be the idea of granting retail salesman a commission amounting to a percentage of their sales. … Nor would the idea be patentable whether it applied to all salesmen or was limited in its ‘field of use’ to, for example, only those in the business of selling running shoes.”
    • McRO v. Activision : “While the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach. And if, as the Plaintiff suggests, the inventive step is the use of timing rules, given the state of the prior art, that still leaves an abstract idea at the point of novelty, and preventing the development of any additional ways to use that abstract idea in the relevant field.”
    • OpenText v. Alfresco : “Nor does claim 38’s requirement that participants be identified based on their interaction with a website compel a different result: simply identifying a criterion for selecting participants is a prime example of attempting to save a claim by limiting it to a particular technological environment. Similarly, although claim 22 of the ‘007 patent recites an ’email server coupled to the dialog computer,’ this limitation is insufficient to render the subject matter of the claim patentable. Rather, this limitation merely builds on the same basic concept as claim 38 of the ‘372 patent by using email – a decades-old technology that is certainly not inventive – to accomplish the abstract and basic marketing scheme.”

  • The claim preempts a broad class of technology because the patentee has failed to demonstrate any use that is not preempted by the claim.
    • McRO v. Activision : “It is hard to show that an abstract idea has been preempted if there are noninfringing ways to use it in the same field. Section 101 motions can place parties in unfamiliar and uncomfortable positions: here it is to the patentee’s advantage to identify noninfringing alternatives, and it is the accused infringer’s advantage to posit the lack of any. … Here, while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach.”

  • The claim preempts a broad class of technology, despite the patentee’s identification of non-preempting uses, because such uses are not meaningful.
    • Tuxis v. Amazon : “Tuxis highlights twelve large classes of previously unknown upsell techniques that are excluded by claim 1’s limitations. None of the limitations recited by Tuxis, however, are ‘meaningful.’ Although the claim elements have some narrowing effect on the scope of claim 1, the practical effect is insubstantial, as evidenced by the categories of upselling provided by Tuxis that are not covered by claim 1. … Reserving for the public these narrow methods of upselling does not ‘meaningful[ly]’ limit the abstract idea.”


Specificity:
  • The claim doesn’t provide specific details about a particular technique.
    • CMG Financial Services v. Pacific Trust Bank : “None of the claims here actually describe any particular software, how it is designed, who designed it, or how it achieves the identified tasks. If the ‘509 patent described the software-implemented instructions, or described a particular machine onto which the software-implemented instructions were programmed, this may confer patentability. However, one cannot merely claim that an abstract idea is tied to a machine by stating that the abstract steps will be performed via software instructions.”
    • DietGoal v. Bravo : “The patent does not recite any specialized formula or method for implementing the ‘well known’ process of meal planning; at most, it merely ‘provides a new and presumably better method’ for calculating and visualizing the dietary impact of certain food choices.”
    • EveryPennyCounts v. Wells Fargo : “The claims offer no description of the computer, and the specification offers no description beyond the generic, undefined name ‘clearinghouse central computer’ or, sometimes, ‘central computer.'”
    • Genetic Tech v. LabCorp : “The ‘analyzing’ step is insufficient to make the patent claim eligible. It merely tells the users of the method to analyze a sample obtained from a person for the presence of genetic variation in the ACTN3 gene, without further specification as to how the sample should be analyzed. Indeed, the specification of the ‘342 patent indicates that the user of the process may employ any number of well-known methods to analyze the sample.”
    • Loyalty Conversion v. American Airlines : “Loyalty does not claim that the patentees invented the concept of converting the loyalty award credits of one vendor into loyalty award credits of another in order to facilitate customer purchases from the second vendor. Instead, Loyalty argues that the patentees invented a computerized method and system for doing that task efficiently. But close examination of the asserted claims shows that they are largely functional in nature and do little more than set forth the general concept of currency exchange, as applied to loyalty awards, and then announce the use of ‘one or more’ computers to obtain various efficiencies.”
    • Loyalty Conversion v. American Airlines : “Because the claims are largely functional in nature, they do not provide any significant description fo the particular means by which the various recited functions are performed. All that is disclosed is the ultimate objective – in this case an operational computerized system for converting loyalty awards of one entity into those of another. There is no disclosure of the precise method by which the computer performs those functions.”
    • OpenText v. Alfresco : “The asserted claims in both patents implement the basic marketing scheme on a generic computer system without any meaningful limitations.”
    • Walker v. Google : “Walker contends that the asserted claims of the patents-in-suit ‘integrate’ the abstract idea of ‘controlled information exchange between anonymous parties’ into ‘something more thereby transforming’ this building block of human ingenuity into a patent-eligible invention. However, the Court fails to see anything ‘more’ in the asserted claims than the abstract idea, implemented in a conventional manner using a general purpose computer.”

  • The claim does provide specific details about a particular technique, but such details are irrelevant to 101 patent eligibility.
    • buySAFE v. Google : “The dependent claims’ narrowing to particular types of relationships, themselves familiar, does not change the analysis. This kind of narrowing of such long-familiar commercial transactions does not make the idea non-abstract for section 101 purposes.”
    • DietGoal v. Bravo : “Even taken together with the limitations contained in the dependent claims, the system claims recite nothing more than ‘a handful of generic computer components configured to implement the same [abstract] idea’ as the patent-ineligible method claims.”
    • Eclipse v. McKinley : “The dependent claims fare no better. The additional content of each is analyzed below: … ‘716 patent claim 2: No additional inventive step. ‘716 patent claim 4: Same analysis as for independent claim 41. (etc.)”
    • Ex parte Cote : “The appellants’ claims recite the abstract idea of independently phase shifting each of a plurality of clusters which each represent a plurality of shapes having a proximity to each other determined by a grow operation, and do not include any element which transforms the nature of the claim into a patent-eligible application.”
    • Genetic Tech v. LabCorp : “Anyone who wants to make sure of the natural law at issue (the correlation between the presence of two copies of the 57R allele and positive sprinting, strength, or power performance) must first have a sample of their DNA analyzed, have the presence of the two alleles detected, and have then the tester communicate the results. Just as in Prometheus, this combination ‘amounts to nothing significantly more than an instruction to [testers] to apply the applicable laws.'”
    • I/P Engine v. AOL (Mayer concurrence): “If claims are drawn to an application of principles outside of the scientific realm – such as principles related to commercial or social interaction – no amount of specificity can save them from patent ineligibility.”
    • I/P Engine v. AOL (Mayer concurrence): “In Bilski, a method was rejected under section 101 notwithstanding the fact that it described a very specific method of using historical weather-related data to hedge against price increases. Meaningful, well-defined limited on the application of a principle or idea are thus a necessary, but not a sufficient, prerequisite for patent eligibility.”
    • Loyalty Conversion v. American Airlines : “In claim 31 of the ‘023 patent, computers are identified as (recitation of claim language). Translated into plain English, that limitation simply requires the computers to keep track of the conversion of loyalty award credits from one vendor to another.”
    • Loyalty Conversion v. American Airlines : “Claims 1-3 and 5-7 of the ‘550 patent are similar to those in the ‘023 patent except that they include limitations requiring the use of a graphical user interface, such as a web page, enabling the consumer to track and direct the conversion of the loyalty award points. The claims of the ‘550 patent are functional in nature and do not include anything that departs from the basic concept of currency conversion other than the use of computers to facilitate the conversion process and record the transactions incidental to that process.”
    • Planet Bingo v. VKGS : “Planet Bingo argues that the patents recite ‘significantly more’ than an abstract idea because the invention includes ‘complex computer code with three distinct subparts.’ We disagree. The ‘646 and ‘045 patents do not claim the ‘accounting program,’ ‘ticket program,’ and ‘verification program’ that Planet Bingo recites in its briefs. Instead, the claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers.”
    • Walker v. Google : “The asserted dependent claims of the ‘270 patent fare no better. Those claims require receiving and storing and narrowing the scope of a party’s demands – but those additional steps again add no inventive element to the mental processes described by the ‘270 patent.”


Claim Interpretation and Drafting:
  • The claim does not contain specific elements that limit the scope as the patentee argues.
    • CMG Financial Services v. Pacific Trust Bank : “Plaintiff argues that ne of ordinary skill in the art would understand the claims to require the use of a specially-programmed banking computer… (but) nowhere in its claim construction briefing does Plaintiff suggest that the claims should be construed to include the use of a specially-programmed banking computer.”
    • Eclipse v. McKinley : “The specification belies Eclipse’s argument that the claims require a ‘specially-equipped PCD.’ Instead, the claims, read in light of the specification, were deliberately drafted to recite hardware in only the most generic sense.”
    • McRO v. Activision : “Plaintiff points to one Defendant’s contemporaneous characterization of Plaintiff’s system as ‘revolutionary.’ There has been now showing that the cited praise relates to the claims in all their breadth, rather than to a particular implementation that is not specified by the claims.”
    • Planet Bingo v. VKGS : “Planet Bingo argues that ‘in real world usage, literally thousands, if not millions of preselected bingo numbers are handled by the claimed computer program,’ making it impossible for the invention to be carried out manually. But the claimed inventions do not require as much. At most, the claims require ‘two sets of bingo numbers, a player, and a manager.’ We need not, and do not, address whether a claimed invention requiring many transactions might tip the scales of patent eligibility, as the claims fall far short of capturing an invention that necessarily handles ‘thousands, if not millions’ of bingo numbers or players.'”
    • Walker v. Google “The only structural element discussed in claim 1 is a ‘secure database.’ However, the ‘secure database’ term has not been construed and is given its plain and ordinary meaning, which is not limited to a computer, but may also include, for example, a locked file-cabinet. Similarly, claim 3 recites ‘executing a cryptographic operation using a cryptographic key,’ but this process is also not tethered to a computer. ‘Executing a cryptographic operation using a cryptographic key’ would include something like the type of substitution cipher one might find in a newspaper (A=T, B=U, etc.)”

  • The claim does contain specific elements, but they are conventional.
    • buySAFE v. Google : “The claims’ invocation of computers adds no inventive concept. That a computer receives and sends information over a network is not even arguably inventive.”
    • CMG Financial Services v. Pacific Trust Bank : “Each of these claimed methods and systems are routine and conventional banking activities; they require the performance of a series of functions already known to, and regularly used in, the banking industry.”
    • DietGoal v. Bravo : “The patent’s method claims recite the following steps…. Considering each element of the method claim separately, ‘the function performed by the computer at each step… is ‘[p]urely conventional.'”
    • DietGoal v. Bravo : “Although DietGoal contends that the display functionality is ‘highly particularized,’ the claimed process ‘could be carried out in existing computers long in use, no new machine being necessary.’ These computerized elements, taken separately, do nothing to ‘transform’ the nature of the claim from the mental process of meal planning into a novel method or unique application of that idea.”
    • EveryPennyCounts v. Wells Fargo : “The ‘849 patent’s ‘representative’ method comprises (specific steps). The function performed by the computer at each step of the method is ‘purely conventional.’ The first two steps – (1) electronically receiving data and (2) rounding, or adding a percentage or fixed number – are ‘well-understood, routine, conventional activities previously known to the industry.”
    • EveryPennyCounts v. Wells Fargo : The ‘217 patent claims a system that implements – on a generic computer – the ‘849 patent’s method. The computer in the ‘217 patent contains a ‘handful of generic components’ – specifically, the ‘217 patent’s computer comprises a ‘data store,’ an ‘information processor,’ and a ‘communicator.’ These components are fundamental to every computer. In sum, the ‘849 patent claims an abstract idea that is implemented by ‘well-understood, routine, conventional activities previously known to the industry.'”
    • I/P Engine v. AOL (Mayer concurrence): I/P Engine’s claimed system is merely an Internet iteration of the basic concept of combining content and collaborative data, relying for implementation on ‘a generic computer to perform generic computer functions.'”
    • Loyalty Conversion v. American Airlines : “Recording a transaction is a mundane operation that can be performed by any generic computer with conventional programming. … There is no suggestion that those functions are performed in any novel or unusual manner; instead, from their description, those functions appear to be routine functions that can be readily performed by a generic computer with conventional programming.”
    • Loyalty Conversion v. American Airlines : “The role of the computer in the claims of the ‘023 and ‘550 patents is limited to the basic functions of a generic computer, including storing and displaying information, performing simple arithmetic calculations, and enabling a customer to make e-commerce purchases from a vendor. Nothing in the claims purports to improve the functioning of the computer itself, and the computer components fo the claims add nothing that is not already present in the steps of the method claims, other than the speed and convenience of basic computer functions such as calculation, communication, and the display of information.”
    • Loyalty Conversion v. American Airlines : “Loyalty argues that the computer referenced in its claims is not a ‘generic computer,’ but instead is a ‘special purpose computer able to grant loyalty points to members of the loyalty program of the commerce partner and able to redeem customer possessed loyalty points for goods or services that the commerce partner provides.’ This is an accurate description of the functions the claimed computer performs. The problem for Loyalty, however, is that all of those functions consist of simple forms of data recording, storage, and calculation, all of which are conventional functions that can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself.”
    • Planet Bingo v. VKGS : “The claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, ‘the function performed by the computer at each step of the process is ‘[p]urely conventional.'”

  • The claim does contain specific elements, but they describe machinery performing a method that a human mind could perform.
    • DietGoal v. Bravo : “The claims of the ‘516 patent recite steps that, although computer-implemented by virtue of the patent application, could ‘be performed in the human mind, or by a human using a pen and paper.’ … A person can perform them without the aid of any particular or structured method and without the need of any technology.”
    • Eclipse v. McKinley : “‘716 patent claim 1 reads as follows: ‘A method for communications in connection with a computer-based notification system,…’ ‘716 patent claim 1 covers: ‘Fred, could you take out the trash?’ ‘Doing it, Ted.’ It therefore fails 101.”
    • Eclipse v. McKinley : “McKinley points out that the method steps could be performed by a person using any number of generic communications devices. Eclipse responds that the preamble is limiting,b ut does not explain how treating ‘for a notification system of a transportation vehicle’ as a limitation changes the result.”
    • I/P Engine v. AOL (Mayer concurrence): “The asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information about a specific area of interest. A person planning to visit London, for example, might consult a guidebook that would provide information about particular museums in London (content information) as well as information about what other people thought of these museums (collaborative data). I/P Engine’s claimed system is merely an Internet iteration of the basic concept.”
    • Loyalty Conversion v. American Airlines : “As confirmation of the simplicity of the functions that the claims assign to computers, it is clear that each of the functions recited in the asserted claims of the ‘023 and ‘550 patents could be performed by a human being without the aid of a computer of any kind. The fact that an invention consists of simple calculations that can readily be performed by humans is a factor that has frequently been held to be indicative of unpatentability.”
    • OpenText v. Alfresco : Claim 38 of the ‘372 patent claims a storage medium comprising software that (recitation of claim). On its face, asking a customer about his or her experience and replying ‘Thank You’ to those who respond positively and ‘I’m sorry, what can we do better?’ to those who respond negatively is an unpatentable abstract idea.”
    • Planet Bingo v. VKGS : “The ‘646 and ‘045 patents claim managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions. The district court correctly concluded that managing the game of bingo ‘consists solely of mental steps which can be carried out by a human using pen and paper.'”
    • Tuxis v. Amazon : “A simple hypothetical is instructive: A man enters a clothing store to purchase a new pair of dress slacks. The sales representative assists the man in finding a pair of pants… (etc.) This type of marketing strategy is at the heart of claim 1 and has been practiced as long as markets are in operation. Conduct this transaction on ‘an electronic communications device’ instead of in a physical store and it would be an infringing sales practice if claim 1 were valid. This cannot be permitted.”
    • Tuxis v. Amazon : “As demonstrated above, a computer is not an integral part of the claim here. A human being can generate an upsell recommendation ‘during the course of the user initiated communication.’ although perhaps not with the efficiency or speed of a computer.”
    • Walker v. Google : “Plaintiff asserts that the methods and systems of the ‘270 patent claim more than an abstract idea because the claims contain meaningful limitations, specifically requiring the following steps… All of these steps could be performed (and have been performed) by human beings interacting with one another prior to the filing of the ‘270 patent.”
    • Walker v. Google : “Much like the ‘rules’ listed in SmartGene, the additional ‘steps’ of the claims of the ‘270 patent are merely ‘a series of mental steps that people, aware of each step, can and regularly do perform in their heads.’ As the following hypothetical shows, these steps can and routinely are performed by, for example, human job headhunters:…”

  • The claim does contain specific elements, but they just don’t looks like “technology” to us.
    • DietGoal v. Bravo : “The ‘516 patent merely ‘provides a new and presumably better method’ for calculating and visualizing the dietary impact of certain food choices. This is not the kind of ‘discovery’ that section 101 was designed to protect.”
    • Digital Image v. Electronics for Imaging : “Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”
    • Digital Image v. Electronics for Imaging : “Digital argues that a device profile is ‘hardware or software within a digital image processing system’ and exists as a tag file appended to a digital image. Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101. The device profile claims of the ‘415 patent do not require any physical embodiment, much less a non-transitory one. The device profile, as claimed, is a collection of intangible color and spatial information.”
    • Digital Image v. Electronics for Imaging : “Although we acknowledged that a signal had physical properties with ‘tangible causes and effects,’ we nevertheless concluded that ‘such transitory embodiments are not directed to statutory subject matter.'”
    • Eclipse v. McKinley : “A patent application may not ‘claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.'”
    • I/P Engine v. AOL (Mayer concurrence): “Section 101 mandates that claims disclose an advance in science or technology as opposed to an innovation in a non-technological discipline such as business, law, sports, sociology, or psychology.”
    • Loyalty Conversion v. American Airlines : “If the applicants in Bilski can be said to have claimed the unpatentable concept of hedging, as applied to commodities in the energy market, and the patentees in CLS Bank can be said to have claimed the unpatentable concept of intermediated settlement as applied to financial transactions, the patentees in this case can fairly be said to have claimed the unpatentable concept of currency exchange, as applied to the exchange of currencies in the form of loyalty award credits of different vendors.”
    • Loyalty Conversion v. American Airlines : “An example of an abstract idea would be the idea of granting retail salesman a commission amounting to a percentage of their sales. No doubt a company’s payment of the commissions would be taxable events and would have to be accounted for on the company’s books. But the idea would still be a familiar business concept, like hedging or negotiated settlement, and would not be patentable subject matter, whether implemented by a computer or not. Likewise, the fact that the exchange of loyalty award points described in the ‘023 and ‘550 patents has tax consequences has nothing to dow with whether those patents claim patentable subject matter.”
    • Planet Bingo v. VKGS : “The claims here recite methods and systems for ‘managing a game of bingo.’ This is similar to the kind of ‘organizing human activity’ at issue in Alice. And although the ‘747 and ‘045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of ‘solv[ing a] tampering problem and also minimiz[ing] other security risks’ during bingo ticket purchases. This si similar to the abstract ideas of ‘risk hedging’ during ‘consumer transactions,’ Bilski, and ‘mitigating settlement risk’ in ‘financial transactions,’ Alice, that the Supreme Court found ineligible.”

  • The claim does contain specific elements, but they amount to a draftsman’s trick to claim an “abstract” invention.
    • CMG Financial Services v. Pacific Trust Bank : “Plaintiff is attempting to claim an abstract method is patentable merely because a computer will use ‘software-implemented instructions’ to perform the steps of the method and systems.”
    • DietGoal v. Bravo : “DietGoal attempts to dress up the claims as a computerized process for ‘behavior analysis’ and ‘training.’ But the claims of the ‘516 patent recite nothing more than the abstract concept of selecting meals for the day.
    • Ex parte Cote : “The mere recitation that the appellants’ computer program is on a generic computer-readable storage medium and includes code segments to be executed by a computer or is to be executed by a generic computer and stored on a non-transient computer-readable medium does not transform the abstract idea into patent-eligible subject matter. Moreover, the appellants’ claimed computer program is not within any of 35 USC 101’s four classes of patent-eligible subject matter.”
    • Loyalty Conversion v. American Airlines : “Claims 39 of the ‘023 patent and its dependent claims are similar in content to claim 31 and its dependent claims, except that claim 39 is directed to a ‘computer program product’ and contains limitations to ‘one or more non-transitory computer-readable mediums’ and ‘program instructions stored on at least one of the one or more non-transitory computer-readable mediums.’ Although drafted in remarkably cumbersome form, the claim in essence recites a computer program that detects communications relating to the conversion of loyalty award points. Although claim 39 adds limitations reciting a computer and ‘non-transitory computer-readable mediums,’ the claim adds nothing of substance to the basic currency-conversion concept other than to provide that the steps of the currency conversion are performed by computers.”
    • Loyalty Conversion v. American Airlines : “Loyalty argues that the ‘computer medium’ claims are patentable for the additional reason that such claims ‘have been explicitly identified as patentable’ in earlier cases. The Supreme Court has answered that argument. The patents at issue in CLS Bank contained not only method claims, but system claims and claims to ‘a computer-readable medium.’ The Court explained that it had long warned against interpreting section 101 ‘in ways that make the patent eligibility depend simply on the draftsman’s art.’ The ‘computer-readable medium’ claims in the ‘023 patent fall squarely within that reasoning. Although they purport to be claims to a physical object, in reality they simply claim the use of a computer in connection with the conversion process.”

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