直 Japanese PDF Font
  • Our Professionals
  • Our Work
  • Our Insights
  • Firm
  • Offices
  • Careers
Finnegan
  • Articles & Books
    • At the PTAB Blog
    • European IP Blog
    • Federal Circuit IP Blog
    • INCONTESTABLE® Blog
    • IP Health Blog
    • Prosecution First Blog
  • Events & Webinars
  • IP Updates
  • Podcasts
  • Unified Patent Court (UPC) Hub

Federal Circuit IP Blog

Federal Circuit Defends the Alice/Mayo Test

September 7, 2022

By Yinan Liu, Ph.D.

Edited by Christina Ji-Hye Yang; Elizabeth D. Ferrill

In In re Killian, No. 2021-2113 (Fed. Cir. August 23, 2022), the Federal Circuit affirmed the PTAB’s rejection of pending claims of U.S. Patent Application No. 14/450,042 (“’042 application”) under 35 U.S.C. § 101.

The ’042 application is directed to a system and method for determining eligibility for social security disability insurance benefits through a computer network. During prosecution, the examiner argued that all pending claims are directed to an abstract idea and lack any additional element beyond generic recitation of computer functionalities. The Board affirmed.

The Federal Circuit affirmed. At Alice step 1, the Federal Circuit held that the claims are directed to an abstract idea of collecting information from various sources and understanding the meaning of that information, which can be performed by a human. That these steps are performed on a generic computer did not save the claims at Alice step 2.

The Federal Circuit rejected all of the appellant’s arguments. First, there was no violation of Administrative Procedure Act from “arbitrary and capricious” law because the Board followed the binding Supreme Court precedent. Second, the Federal Circuit refused to provide a single definition of abstract idea, noting that the case law provides sufficient guidance. Third, there was no violation of the patentee’s due process rights because comparing the patentee’s case to earlier § 101 cases is “the classic common law methodology for creating law.” Fourth, the search for “inventive concept” at Alice step 2 is not improper because it never required the patentee to prove “degree of skill and ingenuity” beyond those of a person of ordinary skill in the art. Fifth, the “mental steps” doctrine has not been repudiated in modern patent law. Sixth, the Board’s finding that the claims recited generic computer functions was supported by substantial evidence.

Tags

patentable subject matter, 35 U.S.C. § 101, Administrative Procedure Act (APA)

Related Practices

Patent Litigation

Appeals

Related Offices

Boston, MA

Washington, DC

Contacts

Yinan Liu, Ph.D.
Associate
Boston, MA
+1 617 646 1652
Email
Christina Ji-Hye Yang
Associate
Washington, DC
+1 202 408 4465
Email
Elizabeth D. Ferrill
Partner
Washington, DC
+1 202 408 4445
Email

Copyright © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. 
Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Related Insights

Webinar

Patent Law Year in Review 2022

January 31, 2023

Webinar

Prosecution First Blog

Expecting the “Unexpected”: Asserted Claims Found Invalid After Allegedly “Unexpected Results” Suggested in Prior Art References

January 27, 2023

Seminar

Patent Protection for Software-Related Inventions: Patent Law in Europe and the US

January 26, 2023

Oslo

Articles

Strategic Intellectual Property Considerations for Protecting AI Innovations in Life Sciences

January 2023

Articles

Patent Infringement: When Is a Product Sold “Within the United States”?

November/December 2023

Articles

IP Issues Surrounding Machine Learning and AI in the Pharmaceutical Space

January 2023

Prosecution First Blog

PTA and After-Allowance Papers: Damned If You Do, Damned If You Don’t?

January 20, 2023

Webinar

Forum Shopping and the UPC

January 19, 2023

Webinar

Prosecution First Blog

Federal Circuit Clarifies the Standard of Review for Invalidity Challenges

January 13, 2023

Due to international data regulations, we’ve recently updated our privacy policy. Click here to read our privacy policy in full.

We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.

The Finnegan UPC Hub is a one-stop shop for our insights related to the Unified Patent Court (UPC).

Finnegan
Click Here
  • Privacy
  • Disclaimer
  • EEO Statement

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP