Patent Eligibility of Software in the Wake of the Alice Corp. v. CLS Bank Decision

Authored by Arpita Bhattacharyya, Ph.D. and Linda J. Thayer

Earlier this year, we asked the question: "Will the Supreme Court Rein in Software Patents?" with its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, a case dealing with patent eligibility of computer-related inventions. Would the Court provide needed guidance and, more importantly, what would be the impact on the field of robotics?

With the Supreme Court's June decision, we have at least some answers to our questions. All types of claims (system, method, and computer-readable media) in all fields will be examined for patent eligibility under the framework in Mayo v. Prometheus, including those involving computer implementations. Analysis under Mayo involves a two-step process, namely: (1) determining whether claims are directed to a patent-ineligible concept (i.e., an abstract idea, a physical phenomenon, or a law of nature); and (2) if so, searching for an "inventive concept," in the claim, i.e. "an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.'" Applying this framework, the Court affirmed the rejection of Alice's claims.

There is good news. While the rejected claims were related to a computerized trading platform to mitigate risk when exchanging obligations, the Court did not categorically exclude all software or computer-implemented inventions from patentability. The Court did, however, clarify that claims to "well-understood, routine and conventional activities previously known to the industry" performed using a generic computer system would not be patent-eligible unless the invention "improve[s] the functioning of the computer itself," or "effect[s] an improvement in any other technology or technical field." In the wake of the decision, the USPTO has issued preliminary examination guidelines and pulled back from issuance many previously allowed applications that contain computer-implemented claims. Those still undergoing examination are being subjected to much stricter scrutiny.

While the Supreme Court's decision provided some guidance, further interpretation will be left to the Federal Circuit. In the recent Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. decision, for example, the Federal Circuit found a process of combining two data sets into a "device profile" was an abstract idea, not eligible for patent protection. Citing Alice Corp., the Federal Circuit emphasized that "fundamental concepts, by themselves, are ineligible abstract ideas." The Federal Circuit further explained that "[w]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible."

The Alice Corp. decision does not spell doom and gloom for robotic inventions. As the Court recognized, the claims at issue in Alice Corp. were more similar to the unpatentable business method claims in Bilski v. Kappos than other computerized methods found in other high-tech industries. As more decisions issue from the Federal Circuit, the boundaries of patent eligibility of computer-implemented inventions will become clearer.

In the meantime, robotics companies seeking patents on software-related innovations should focus on system claims directed to the combination of software and hardware elements. If off-the-shelf components are used, how is the combination of components better than the sum of the parts? All patent applications—but especially those implemented in software—should clearly explain how the invention effects an improvement in some other technical field. With all the many new and exciting developments of late in the robotics industry, this should be easy.

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