Courts have decided many recent Alice challenges based
on whether the invention at hand is "physical" or not.
Others determine patent-eligibility based on whether a human can
practice the invention in their mind, or with pen and paper. Still
others challenge patent-eligibility by defining the invention and
dismissing other elements as "conventional" computer
components. But what if those other components are physical,
The case of 2-Way Computing, Inc. v. Grandstream Networks,
Inc., 2:16-cv-01110-RCJ-PAL (D. Nev. Oct. 18, 2016 Memorandum
Order and Opinion) dealt with this very issue. In 2-Way
Computing, the court heard an Alice-based §101
challenge to an invention that translates audio data packets to
enable audio communication. The claims include several elements
found in conventional electronics, such as a network interface, a
microphone, a speaker, and an audio input and output unit. Claim 1
of the asserted patent is essentially a listing of these
conventional, physical devices followed by a large paragraph
setting forth steps performed by computer software to perform the
intended function of translating data packets into recognizable
The court performed an Alice analysis and determined
the invention was not directed to an abstract idea. Although
Grandstream argued the invention was as simple as "translating
information to enable audio communication," the court was not
convinced and found there to be no abstract idea. The court
The question of unpatentability of abstract ideas under
Alice Corp. is not whether an invention can be understood
or described in the abstract, i.e., in one's mind ... but
whether the invention can be practiced in
the abstract ...
(Emphasis in original). The court then emphasized the physical
nature of the invention when declining to invalidate the claims
under §101: "The Court is not convinced that Claim 1 is
directed to an abstract concept. Rather, it is directed to a
concrete, physical task."
Many software patents include claims that recite software steps
within a larger framework of a physical device. For example, some
software patents utilize vehicles or machines where physical
devices use software to carry out the intended purpose of the
machine. This case provides at least persuasive authority that such
patents should withstand §101 attacks because the components,
while conventional, are not conventional
computer components like those discussed
in Alice. Instead, they are "concrete" and
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).