Abstract Ideas Remain Patent Ineligible – Alice Corporation v. CLS Bank

The Supreme Court of the United States has just handed down its unanimous decision in Alice Corporation Pty. Ltd. V. CLS Bank International et al. (U.S. June 19, 2014). The Court held the claims at issue to be drawn to an abstract idea and therefore not eligible for patent protection.

The opinion of the Court comes as no surprise as it remains true to its long-standing line of patent-eligibility opinions in Gottschalk v. Benson, 409 U.S. 63 [175 USPQ 673] (1972), Parker v. Flook, 437 U.S. 584 [198 USPQ 193] (1978), Diamond v. Diehr, 450 U.S. 175 [209 USPQ 1] (1981), Bilski v. Kappos, 130 S.Ct. 3218 (2010), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 [101 USPQ2d 1961] (2012).

The subject method and computer readable storage medium claims were found to be directed to non-patentable subject matter in that they recited only the abstract ideas upon which they were based. In disposing of the claims the Court held the method claim does nothing “more than simply instruct the practitioner to implement the abstract idea…on a generic computer” (slip op., at 14). The computer components recited in the method claim “ad[d] nothing…that is not already present” (slip op., at 15). “[T]he claims amount to nothing significantly more that an instruction to apply the abstract idea …using some unspecified, generic computer” (slip op., at 15). When addressing the computer readable medium claims the Court further added that these claims “fail for substantially the same reasons” (slip op., at 16). The media claims were disposed of by the Petitioner’s concession that they rise or fall with the method claims (slip op., at 16).

The system claims at issue recited “[a] data processing system to enable the exchange of an obligation between parties, the system comprising…a data storage unit…and…a computer”. In determining the patent-eligibility of these claims the Court stated “none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (slip op., at 16, quoting Bilski, 561 U. S., at 610–611). The Court very clearly indicated “the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea” (slip op., at 16). The court noted that system claims must add “substance” to underlying abstract ideas to be patent eligible under 35 U.S.C. §101. (See, slip op., at 17.)

Thus, the Supreme Court has held to its long line of patent eligibility cases in maintaining that an abstract idea, like a law of nature, is not eligible to patent protection.

ON THE RADAR: Ultramercial Inc. v. Hulu LLC decision expected during the Court’s fall term.