On November 1, 2016, the United States Court of Appeals for the Federal Circuit continued its case-by-case approach for determining patent eligible subject matter under 35 U.S.C. § 101.1 In reversing the United States District Court for the Eastern District of Virginia, the Federal Circuit held that Amdoc (Israel) Limited's ("Amdoc's") four U.S. Patents, Nos. 7,631,065 ("'065 patent"); 7,412,510 ("'510 patent"); 6,947,984 ("'984 patent"); and 6,836,797 ("'797 patent") (collectively, the "Amdocs Patents") are patent eligible under 35 U.S.C. § 101.2
In arriving at its decision, the Federal Circuit "examined earlier cases in which a similar or parallel descriptive nature can be seen - what prior cases were about, and which way they were decided."3 The Court continued using "the classic common law methodology for creating law when a single governing definitional context is not available," and stated that "[t]he problem with articulating a single, universal definition of 'abstract idea' is that it is difficult to fashion a workable definition to be applied to as-yet-unknown cases with as-yet-unknown inventions." 4
Amdocs sued Openet Telecom Inc. and Openet Telecom Ltd. (collectively, "Openent") for infringement of the Amdocs Patents, and previously appealed the district court's judgment of non-infringement in favor of Openet. In the previous appeal, the Federal Circuit affirmed the district court's claim construction of "enhance" to mean "to apply a number of field enhancements in a distributed fashion," and the claim construction of "completing" to mean "enhance a record until all required fields have been populated."5
On remand, the district court granted Openet's motion for judgment on the pleadings, arguing that pursuant to Alice,6 the claims were ineligible under 35 U.S.C. § 101.7 Amdocs appealed.
DISCUSSION BY FEDERAL CIRCUIT
The Federal Circuit reversed the district court's judgment that claims 1, 4, 7, 13, and 17 of the '065 patent, claims 16, 17, and 19 of the '510 patent, claims 1, 2, 7, 8, and 13 of the '984 patent, and claims 1, 2, 7, 8, and 19 of the '797 patent are ineligible under 35 U.S.C. § 101.
The Federal Circuit applied the Alice/Mayo two step framework for determining patentable subject matter.8 Under step two of the framework, the Federal Circuit compared the representative claims of the Amdocs Patents to previously decided cases under the common law case-by-case approach because "at present there is no such single, succinct, usable definition or test" for determining patent eligibility.9
The Federal Circuit compared the representative claims of the Amdocs Patents to five similar past cases. In the examination, the Federal Circuit found that the representative claims of the Amdocs Patents are more similar to the claims of DDR Holdings10 and BASCOM11, which were found to be patent eligible under 35 U.S.C. § 101. For example, the Federal Circuit stated that the "computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record" of representative claim 1 of the '065 patent entailed an "unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)."12
Amdocs serves to further demonstrate the need for careful analysis under the Alice/Mayo two step framework. For example, the Federal Circuit recognizes that "[a]t some level, 'all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'"13 The majority also cautions against the dissent's means/ends recommendation that "a desired goal (i.e., a 'result or effect'), absent structural or procedural means for achieving that goal, is an abstract idea" and that a claim is eligible under 35 U.S.C. § 101 "only if the claim at issue itself explicitly states the necessary 'means.'"14
This Federal Circuit opinion can serve as another example of the case-by-case analysis required to determine patent eligibility under 35 U.S.C. § 101. In some instances, when drafting a patent application, patent practitioners may want to consider, for example, adding to the detailed description the benefits of specific limitations and structures that are used in the patent claims. In other instances, when prosecuting a patent application and responding to a 35 U.S.C. § 101 rejection, patent practitioners may want to consider, for example, arguing how the pending claims are similar to claims previously found patent eligible by the Federal Circuit.