The case of SRI International, Inc. v. Cisco Systems, Inc. exposed an apparent inconsistency between two approaches used to determine if a claim is directed to patent-eligible subject matter. In Alice v. CLS Bank, the Supreme Court indicated a claim that recites an abstract idea needs to be treated as “directed to” the abstract idea, and would only be patent eligible if it included additional features sufficient to ensure that it was more than a drafting effort designed to monopolize the abstract idea itself. However, while not explicitly departing from the Supreme Court’s guidance, the Federal Circuit has endorsed another approach, in which a claim is treated as directed to eligible subject matter if it provides a technical solution to a technical problem. The existence of these two approaches raises the question: should a claim that both provides a technical solution to a technical problem and explicitly recites an abstract idea to be treated as directed to the eligible subject matter?
SRI International presented an excellent opportunity for the Federal Circuit to address and resolve this apparent inconsistency. The invention in SRI International related to network intrusion detection technology that was praised as “a ‘gem in the world of cyber defense’ and ‘a quantum leap improvement over’ previous technology.” However, as claimed, it included “analysis of network traffic data,” and, in the extremely broad decision of Electric Power Group, LLC v. Alstom, S.A., the Federal Circuit had already identified “analyzing information” as an abstract idea. Accordingly, the Federal Circuit could have used SRI International to explain how the approaches could be harmonized, to lay out some kind of framework for deciding which approach to use on a particular case, or to otherwise provide guidance for practitioners on how to determine what a claim that both provides a technical solution to a technical problem and recites an abstract idea is “directed to.”
Unfortunately, rather than resolving the inconsistency, the Federal Circuit simply applied its rule without explaining why the rule that a claim reciting an abstract idea is directed to the abstract idea didn’t control. This failure to provide any explanation, or even to address that “analyzing information” had previously been identified as an abstract idea, was made particularly disappointing by the fact that the Federal Circuit actually distinguished Electric Power Group, saying that SRI’s claims were more like those found to be eligible in DDR Holdings, LLC v. Hotels.com, L.P. However, in DDR Holdings, the Federal Circuit specifically noted that the claims did not include the type of subject matter that was previously treated as an abstract idea. This was entirely different from SRI’s claims, which explicitly recite subject matter the Federal Circuit previously identified as an abstract idea in Electric Power Group. Additionally, in DDR Holdings, the Federal Circuit didn’t simply declare the claims eligible because they weren’t “directed to” an abstract idea, but instead explained that they included additional features sufficient to establish eligibility. Accordingly, even if SRI’s claims were more like those from DDR Holdings than those from Electric Power Group, that would do nothing to explain why SRI’s claims could be declared eligible because they weren’t “directed to” an abstract idea.
Considering SRI International, practitioners analyzing claims that both provide a technical solution to a technical problem and recite an abstract idea should follow the Federal Circuit's lead and treat those claims as directed to eligible subject matter regardless of their additional features. However, such analysis should be made with knowledge that apparently inconsistent rules exist, and that the uncertainty associated with such claims is greater than it would be if the Federal Circuit had taken the opportunity to explain itself.