In the case of Alice Corp. v. CLS Bank Int'l, the U.S. Supreme Court is once again tasked with the challenge of providing clarity as to what inventive "things" are eligible for patent protection. While the categories of these "things" (that is, the subject matter of inventions) that are patentable are generally defined under U.S. patent law as being "process, machine, manufacture, or composition of matter," the fundamental question to be addressed by the Supreme Court in Alice Corp. is directed to the particular boundaries for these categories that define the separations between subject matter that is eligible for consideration for patent protection and subject matter that is not.
One would think that an answer to such a fundamental question of what is patent eligible would already be known. After all, the U.S. patent law has its foundation in the U.S. Constitution, and ever since the first patent act, which dates back to 1790, patents have been issued granting inventors of new, useful "inventions" the right to prevent others from making, using or selling their invention. Nevertheless, as technology has evolved from farm implements and tools, such as plows, to semiconductors, computer software for data compression and encryption, and biotechnology, such as gene therapy and diagnostics, so too, has the subject matter for which patent protection is sought. These more modern areas of subject matter have resulted in the boundaries for what constitutes patent-eligible subject matter, as well as the lines between the general categories of invention themselves, becoming increasingly blurred.
The specific question before the Supreme Court is whether computer-implemented inventions, including claims to computers/computer systems, software, and processes are eligible for patent consideration. The Supreme Court must decide whether such computer-implemented inventions are patent eligible by qualifying as "a process, machine, manufacture, or composition of matter". Alternatively, the Supreme Court could decide that computer-implemented inventions fall within one of the Court's previously identified exceptions to patent eligible subject matter, namely, Laws of nature, Natural phenomena and Abstract ideas ("LNA"). In answering these questions, the Supreme Court will look to the patent claims at issue in this matter to determine if they are directed to patent eligible subject matter or whether the claims are invalid as being direct to patent ineligible subject matter. The Supreme Court has been well-briefed on opinions from all sides.
As an eyewitness to the oral augments on Monday, April 1, 2014, I noted that the Supreme Court justices appeared most preoccupied on developing a "test" to be applied to determine whether a computer-implemented method or process is patent eligible. Most of the questions by the Supreme Court Justices were targeted at establishing a test for patent eligibility, a test that can be used by business people, patent attorneys and the U.S. Patent Office to evaluate whether an "invention" is eligible for patent consideration.
After listening to the answers to the Supreme Court's questions to the arguing oral advocates regarding what the patent eligibility test should be, and the justices' follow-up questions to the answers received, I saw reluctance by the justices to making any sweeping or fundamental changes in how patent eligibility is currently decided. The justices also appeared concerned that methods which could be done completely in one's head would be patentable if implemented in a computer.
The Supreme Court has looked at the issue of determine patent eligibility no less than three times in the past four years. Differing views on what the test should be were advanced by the advocates for the parties, including "does the patent claim: (A) an improvement of a computer's functioning or, (B) the use of computer technology to improve the functioning of another technological process." In a similar way, the respondent advocated the test for patent eligibility is whether a patent claim is directed to a technological solution and not merely a process which could be done outside the confines of a computer environment. Finally, the petitioner argued that the test should consider whether a computer environment was necessary or essential for an invention (process or system) to function.
If I were to look into the preverbal crystal ball in view of the oral arguments, the facts in this case, and the most recent decisions of the Supreme Court, I think that it is unlikely that the Court will fundamentally change the course of its prior decisions and announce sweeping changes to how it has previously determined patent eligibility. If I were to predict, I think that the Court will likely announce a patent eligibility test which asks whether a computer-implemented method merely recites a method which could be done mentally or whether the computer-implementation fails to add anything meaningful to a method which would otherwise be patent ineligible. If so, then the method will be determined to be an abstract idea, and thus not patent eligible. Using this test, I believe that the Court will likely find the patent claims at issue invalid as merely implementing an abstract idea in a computer environment or a method that could be performed mentally and therefore, not patent eligible subject matter. I believe that it is further unlikely that the Court will adopt a test which absolutely requires a technological solution or an improvement in technology of a computer.
The Court will render its decision by the end of its term in June 2014, at which point we may have more clarity on how to identify patent eligible subject matter.
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