The requirement that the invention must be directed to patentable subject matter has become a significant hurdle to obtaining patents in the United States. Patentable subject matter includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”1 However, claims which fall into the categories of laws of nature, natural phenomena, or abstract ideas are excluded from patent eligibility if they do not amount to “significantly more” than the excluded category. For several decades, it seemed like subject matter eligibility was well understood; there were only four recognized cases, decided between 1979 and 1989, which bore on a modern determination of subject matter eligibility.2 However, in the last several years subject matter eligibility has become a topic of intense focus. Several Federal Circuit and Supreme Court decisions have reshaped patent practitioners’ understanding of what it means to be “patentable subject matter.” The latest, Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., may prove to be one of the most informative.
Since Alice, patent practitioners, the U.S. Patent and Trademark Office (“PTO”), district courts, and the Federal Circuit have grappled with what it means for a patent claim to be directed to an abstract idea. The results have not been favorable for patent owners. Before Alice, there were only twenty PTO-recognized determinations on the patent eligibility of claims.3 Of those, five found for eligible subject matter while fifteen found for ineligibility.4 Since Alice, there have been seventy-three determinations, of which only seven (9.6%) found for eligibility.5 Filtering for decisions on abstract ideas yields even lower rates of eligibility, with four (6.8%) of fifty-nine determinations finding patent eligible subject matter.6
In that same, post-Alice time period, litigants and patent drafters have worked to unpack guidance from Federal Circuit rulings on the principles that define patent eligible subject matter. One of the most notable is the notion that a claimed improvement to a computer or technological process is patent eligible. Thus far, courts have largely grounded their analysis of what constitutes a claimed improvement in the particularity with which the patent recites 1) the manner of its operation or 2) the problem in the prior art and the patent’s solution.
The most recent Federal Circuit decision to continue with this approach was Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. In Core Wireless, the Court found that the claims of two patents, U.S. Patent Nos. 8,713,476 and 8,434,020, were directed to an improvement to graphical user interfaces rather than to the abstract idea of an index.7 The Court based this conclusion on its findings that 1) the claims were “directed to a particular manner of summarizing and presenting information in electronic devices,” and 2) the patent specifications explicitly taught the problem with prior art user interfaces (users have to drill down through many layers to get desired data) and the ways in which the patents would solve that problem (by allowing users to easily see the most relevant data).8
The first finding on which the Court based its conclusion was related to the particularity of the Core Wireless patents’ claims. Claim 1 of the ’020 patent contains six total clauses including the preamble.9 Generally, the claims recite a menu on a mobile phone from which a summary list of applications and data related to those applications can be seen and from which the applications can be launched. Despite the brevity of the ’020 patent’s claims, the Court found that they are “directed to a particular manner of summarizing and presenting information.”10
This may be contrasted with holdings in earlier Federal Circuit decisions in which claims were invalidated for being directed to ineligible subject matter. For example, claim 1 of U.S. Patent No. 7,707,505, at issue in Internet Patents Corp. v. Active Network, Inc. contains eight total clauses. Like the ’020 patent, the ’505 patent is direct toward graphical user interfaces. Similarly, claim 1 of U.S. Patent No. 7,757,298, at issue in Intellectual Ventures I LLC v. Erie Indemnity Co. contains eleven total clauses and is directed toward graphical user interfaces. Both the ’505 patent and the ’298 patent could be read as “directed to a particular manner” of doing some abstract idea, and as particularly limiting of the way the patented technology operates. If, in fact, claim 1 of the ’020 patent is more particular or specific than the ’505 or ’298 patents, this distinction may be difficult for draftsmen and district courts to apply to their own, unique claim language.
Next was the Core Wireless Court’s finding that the ’020 patent’s specification described a prior art problem and articulated how the patent would solve that problem. And here, the ’020 patent stands out from those at issue in earlier Federal Circuit decisions. The ’505 patent from Internet Patents Corp. v. Active Network, Inc. contains only a cursory reference to a key innovation, while the ’298 patent from Intellectual Ventures I LLC v. Erie Indemnity Co. goes one step further by admitting that a human could perform the patented process.11 In contrast, the ’020 patent specification recites at length how the prior art is “slow, complex and difficult to learn, particularly to novice users,” and how the patented process “saves the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or a function of interest to be activated.”12 These phrases are broad enough that they could easily have been pulled from boilerplate and tweaked but were nonetheless explicit enough to save the ’020 patent.
Patent draftsmen should continue to learn from the lessons taught in Core Wireless in light of the Federal Circuit’s other precedent. One lesson is that, post-Alice, whether a patent claim is directed to an abstract idea still may be difficult to determine. However, more constructively, Core Wireless reinforces the guidance that a recitation of the problem (with the prior art) and solution (as taught by the patent) may make the difference between a valid patent and patent ineligible subject matter. Given this, draftsmen should consider including these elements in a patent’s specification, even if the problem and solution tend toward being broad or generic. Of course, this approach should be balanced with considerations relating to obviousness in view of the Supreme Court’s holding in KSR Int'l Co. v. Teleflex Inc. that a claimed invention may be obvious where there is a problem or need known in the art and “a finite number of identified, predictable solutions” to that problem or need.13 However, as we saw in Core Wireless, in circumstances where subject matter eligibility is expected to be a bigger hurdle than obviousness, linking patent claims to a particular solution to a known problem may strengthen the arguments for patent eligibility of those claims.