As has been well-publicized, the United States Patent and Trademark Office (USPTO) recently issued preliminary examination instructions in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v CLS Bank Int'l regarding analyzing claims with abstract ideas under 35 U.S.C. § 101 to determine eligibility for patenting. A common concern voiced by practitioners, directed to both the decision as well as to the preliminary instructions, is the need for clearly defined guidance as to how the decision will be implemented. For example, although the eligibility determination under § 101 may overlap somewhat with the obviousness inquiry under 35 U.S.C. § 103, the analysis has yet to develop presumptions and safeguards required to establish an invalidity determination. This results in uncertainty as to how the decision will be applied.
In light of this uncertainty, practitioners seek clear guidance as to how the standards should be implemented in practice, given that so little guidance is available as to the scope of the analysis. Though decided on other grounds, I/P Engine Inc. v. AOL Inc. provides guidance as to the specific considerations the Federal Circuit may apply following the Alice Corp. decision.
The asserted patents, which claim priority to the same parent (U.S. Patent No. 5,867,799), apply "hybrid content-based and collaborative filtering" to Internet search results. Content-based filtering involves determining relevance by extracting information item features such as text in a document. Collaborative filtering assesses relevance based on the importance ascribed by other users with similar interests.
Procedural History and Majority Opinion
Plaintiff-cross appellant I/P Engine, Inc. brought an action of alleged infringement against Google, Inc. and other defendant-appellants. A jury found that the asserted claims were infringed, and the District Court determined the claims were not obvious, resulting in a judgment entered in I/P Engine's favor. The Federal Circuit reversed the District Court's finding. In this instance, the court determined the asserted claims were invalid as obvious when considering the common sense of a skilled artisan based on the prior art's use of "a search query when filtering combined content-based and collaborative data."
In a non-precedential opinion, Judge Haldane Robert Mayer determined that the claims should instead be found to be patent-ineligible under 35 U.S.C. § 101; had this analysis been followed, the question of whether the claims were nonobvious under § 103 would never have been reached, avoiding "unnecessary litigation" and "weeks of trial and imposition on citizen jurors."
In his analysis, Judge Mayer provided guidance as to what claim limitations may qualify as "significantly more" to ensure that a claim with an abstract idea is nonetheless patent-eligible. Judge Mayer focused on two non-exclusive examples cited by the Court in Alice Corp., also designated in the USPTO guidelines, as enough to qualify as "significantly more"-- "improvements to the functioning of the computer itself" as well as "improvements to another technology or technical field." Terming the combined examples the "technological arts test," Judge Mayer related that the test has precedence in the Federal Circuit (See In re Musgrave quoting U.S. Const. art. I § 8 cl. 8, a decision which was in turn "in consonance with the Constitutional purpose to promote the progress of 'useful arts.'")
Judge Mayer characterized the test as fulfilling the "inventive concept" requirement described by the Court in Alice as well as in accordance with the preliminary instructions issued by the USPTO. The test requires "advancement" in the form of a "novel application of scientific principles" from the natural sciences as opposed to "disciplines such as business, law, sociology, or psychology."
In addition, the advancement should be both "significant" and "well-defined." To be well-defined, the claimed application of scientific principles and natural laws must be described by "carefully circumscribed" boundaries, a necessary requirement but not sufficient in itself. And for the advancement to be "significant," (i.e. "sufficiently 'technological"), the claims should set forth a narrowly and inventively applied scientific principle, as opposed to steps that are a necessary part of a scientific principle.
What's more, the technological arts test places greater emphasis on weighing "the give" in terms of a substantive contribution versus "the get" in terms of monopoly rights. Judge Mayer explained this underlying functional concern in the terms previously laid out by the Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc. by defining patent eligibility as "how much future innovation is foreclosed relative to the contribution of the inventor." In other words, Judge Mayer related that patentees fail to uphold their end of the bargain "that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time," if they seek overly broad monopoly rights without a correspondingly "new and useful" advance in technology.
In applying the test to the claims at issue, Judge Mayer explained that the use of search engines as well as "combining content-based and collaborative filtering" were all widely recognized at the time of the claimed invention, and thus the claims directed to these features failed to "improve the functioning of the computer itself" or "effect an improvement in any other technology or technical field." Further, the claimed system failed to narrowly and inventively apply a scientific principle; instead the concept involved using "a generic computer to perform generic computer functions." Finally, "and most importantly," the "broad and sweeping reach" of the claims was determined to be "vastly disproportionate to their minimal technological disclosure," resulting in a failure to comply with "the give versus the get" required by the test, as well.
Judge Mayer's opinion, though non-precedential, may be instructive in providing a first glimpse as to how the courts will apply at least a portion of the standards set forth by the Supreme Court in Alice Corp. More specifically, after the claim at issue has been determined to be "directed towards an abstract idea," the current guidelines require that a determination must be made as to whether the claim limitations "may be enough to qualify as 'significantly more' when recited in a claim with an abstract idea." By describing whether the claims at issue qualify as "significantly more" in terms of the "technological arts test," Judge Mayer hints that practitioners should provide support in the specification during the patent application drafting process to address these considerations and, thus, increase the chances of successful outcomes regarding issues involving eligibility under § 101.