Intellectual Property Patented stamp illustration Introduction:

In order for the United States Patent & Trademark Office (PTO) to consider an invention legally entitled to a patent, the invention in question must be deemed “eligible” for legal protection. See, e.g., U.S. PTO, “Patent Eligible Subject Matter: Report On Views And Recommendations From The Public,” Jul. 2017, available at https://www.uspto.gov/sites/default/files/documents/101-Report_FINAL.pdf (last visited Mar. 14, 2018). The “eligibility” requirement for patents is mandated by federal statute 35 U.S.C. §101. See id. The U.S. Supreme Court established a test for patent eligibility in a 2014 decision that created a two-part inquiry and appeared to foreclose many software and computer-related claims. See, e.g., Haug Partners LLP, “The Supreme Court’s Decision in Alice Corp. v. CLS Bank Has Taken a Heavy Toll on Patents for Computer-Related Inventions,”  Lexology, Feb. 16, 2016, at https://www.lexology.com/library/detail.aspx?g=300e6862-012d-49dd-bed4-ba8ae4477397 (last visited Mar. 14, 2018), citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l. Et Al., 134 S.Ct. 2347 (2014).

The Supreme Court’s Alice Test was viewed by many members of the legal community, from attorneys to judges, with substantial confusion. See generally, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l. Et Al., 134 S. Ct. 2347 (2014); See, e.g., Steve Brachmann, “Blackbird Technologies to Appeal Ineligibility Ruling in Cloudflare Patent Infringement Litigation,” IP Watchdog, Feb. 24, 2018, at http://www.ipwatchdog.com/2018/02/24/blackbird-technologies-appeal-ineligibility-cloudflare/id=93902/ (last visited Mar. 14, 2018); See Jacob S. Sherkow, “The Natural Complexity of Patent Eligibility,” 99 Iowa L. Rev. 1137 (2014). The confusion has arisen with respect to how the Alice Test applies to specific inventions in cases involving software and related technologies. See, e.g., Haug Partners LLP, supra. This article examines the Supreme Court’s ruling on patent eligibility and the role expert witnesses play in helping determine when computer-based technology meets the eligibility rules.

Discussion:

The Alice Test consists of a two-part test which asks: “1. Are the claims at issue directed to a patent-ineligible concept, i.e., law of nature, natural phenomena, or abstract idea?” and “2. If so, do the claims contain additional element(s) sufficient to ensure that the claims amount to significantly more than the ineligible concept itself?”, Douglas H. Pierson Et Al., “United States: Protecting Artificial Intelligence And Big Data Innovations Through Patents: Subject Matter Eligibility,” Mondaq, Mar. 13, 2018, at http://www.mondaq.com/unitedstates/x/682356/Patent/Protecting+Artificial+Intelligence+And+Big+Data+Innovations+Through+Patents+Subject+Matter+Eligibility (last visited Mar. 14, 2018).

The legal community has struggled with how to enforce the Alice Test, and as several intellectual property (IP) attorneys explain, “[w]hile the case law since Alice has provided incremental guidance, fundamental uncertainties with this test still remain. There is no clear test on what constitutes an ‘abstract idea’ and no clear test on when additional claim elements constitute ‘significantly more’ than an abstract idea.” Id. Many attorneys are forced to file or respond to motions to dismiss patent requests, and those in favor of such motions argue that a given invention is ineligible for patent protection. See, e.g., id.; See also Steve Brachmann, supra. In February, a Federal Circuit district court in California recently granted a motion to dismiss on the grounds that “abstract ideas are not patentable.” Id.

However, that district court opinion is under appeal, and one IP analyst contended that “The district court’s order did not apply the two-step patentability test outlined by the Supreme Court in Alice Corp. v. CLS Bank International.” Id.

Several questions arise from the pending appeal and other patent cases involving software, computer technologies, and similar processes. For instance, in 2016, the Federal Circuit Court of Appeals applied the Alice Test to a customized filtering system used by internet service providers (ISPs). See Bascom Global Internet Srvcs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). The Court held that the system at issue involved an abstract idea, which violated the first prong of the Alice Test. See id., at 1349. The Court relied upon experts’ explanations regarding how the system functioned and whether it was eligible for legal protection according to 35 U.S.C. §101. See generally id.

Numerous judicial determinations about how computer processes, systems, software, and related inventions operate, and whether they are too abstract to be patent-eligible under the first part of Alice, depend on expert witness testimony. Experts in computers, software, the internet, and related technologies can provide guidance for attorneys and courts to address the first component of the Alice Test. Intellectual property experts, particularly those with expertise in patents and computer-related IP matters, may be invaluable. Because of the lack of a clear legal standard regarding specific computer-related processes and/or systems, expert witness guidance regarding how a certain invention is distinct from (or part of) the larger computer industry is immensely valuable. Lower courts have grappled with defining “abstract ideas,” and one “district judge has likened the analysis to Justice Stewart’s famous statement concerning obscenity: hard to define ‘[b]ut I know it when I see it.’” Haug Partners LLP, supra. Absent further clarity from the Supreme Court, experts will continue to be needed as technology evolves and innovations occur at a rapid pace.

The second part of the Alice Test asks whether a particular concept or technology is an “inventive concept.” See, e.g., Douglas H. Pierson Et Al., supra. As one group of attorneys explain, “[i]n Alice, the Supreme Court articulated a two-step process for assessing patent-eligible subject matter in the context of computer-related inventions.  Initially, determine whether the patent claim at issue is directed to an abstract idea.  If so, consider whether the claim elements individually or in combination ‘transform’ the claim into a patent-eligible invention.  The Court described the second step as a search for an ‘inventive concept’ to ensure that the patent amounts to ‘significantly more’ than an abstract idea.” Haug Partners LLP, supra.

Determining whether a computer-related invention meets the second part of the Alice Test can be quite difficult, and the Supreme Court did not provide clear guidance for lower courts to apply in assessing whether something is an “inventive concept.” See, e.g., id. Given the uncertainties on this matter, expert witnesses serve a vital function: they are educators, counselors, and perhaps advocates who ultimately sway a court.

Conclusion:

Since 2010, the Supreme Court has held that software is patent-eligible. See Bilski v. Kappos, 561 U.S. 593 (2010). However, once Alice was decided, many software patent applications were rejected, with the U.S. PTO denying 15% of them by August of 2015. See Austin Underhill, “Who Is Alice, And Why Is She Driving Patent Attorneys Mad As Hatters?” Above The Law, Feb. 19, 2016, at https://abovethelaw.com/2016/02/who-is-alice-and-why-is-she-driving-patent-attorneys-mad-as-hatters/?rf=1 (last visited Mar. 14, 2018). Attorneys in the field seem to agree that “Alice has taken a heavy toll on patents for computer-related inventions.” Haug Partners LLP, supra. Despite the higher threshold that Alice appears to have imposed on prospective patent-holders, many computer-related technologies and processes are approved by the PTO and courts. In order to assess whether a computer-related invention will succeed or not, attorneys and adjudicators will undoubtedly rely upon expert witnesses. Such witnesses can examine the trends in the industry and help determine patent eligibility, acting as crucial assistants, instructors, and persuasive authorities.