United States: ITC Amenable To Early Section 101 Challenges

Last Updated: September 6 2016
Article by Jones Day

Over the past two months, administrative law judges have found asserted claims invalid under Section 101 in three separate investigations. Each of these decisions came relatively early in the case, with one issuing pursuant to the Commission's 100-Day Pilot Program.

Section 101

Section 101 of the Patent Act provides that "[W]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." See 35 U.S.C. § 101. The Supreme Court's decision in Alice Corp. Pry. Ltd. v.CLS Bank Intern., 134 S.Ct. 2347 (2014) finding a method performed on a generic computer abstract and not patent eligible, set off a wave of successful Section 101 patent subject matter challenges in district courts. The Federal Circuit has set some bounds on these challenges in cases such as Enfish, DDR Holdings, and Bascom, but, largely, methods performed on generic computer components are susceptible to invalidation.

The Cases

  • Certain Automated Teller Machines, ATM Modules, Components Thereof and Products Containing Same; Inv. No. 337-TA-972

One of the asserted patents at issue in the 972 Investigation, U.S. patent No. 7,314,163, relates to depositing checks in an ATM. Specifically, the patent covers a method of depositing a check in an ATM such that security is enhanced by obscuring some of the data on the digitized check image provided as a receipt. On a motion for summary determination of invalidity under Section 101, Judge Lord found that "[t]he asserted claims of the '163 patent are drawn to the abstract idea of using electronic media to collect and manipulate data contained in various documents so as to carry out certain financial transactions, such as depositing checks." She added that "[t]he asserted claims contain no new innovative element but apply standard computer technology to functions performed by ATM machines." Judge Lord accordingly found that the asserted claims of the '163 patent are directed to ineligible subject matter. The Commission issued a Notice on July 28, 2016, upholding Judge Lord's determination.

  • Certain Wearable Activity Tracking Devices, Systems, and Components Thereof; Inv. No. 337-TA-973

The asserted patents at issue in the 973 Investigation, U.S. Patent Nos. 8,920,332, 8,868,377, 9,089,760, pertain to activity tracking devices. The respondents moved for summary determination that the asserted patents covered abstract ideas, and therefore are invalid under Section 101. The ALJ granted respondents' motion explaining that the asserted claims are "directed to the abstract concept of collecting information about a user's physical activity based on thresholds stored in the computer memory. . .[Complainant] does not contend that any of the physical elements of the claimed apparatus, including the removable component, the motion sensor, the computer memory, the circuitry, the visual indicator, and/or the transmitter was unconventional at the time of the invention. . .Thus, stripped of the conventional elements, the asserted claims recite nothing more than the naked abstract idea of an apparatus for collecting information about a user's physical activity based on thresholds stored in computer memory."

  • Certain Portable Electronic Devices and Components Thereof; Inv. No. 337-TA-994

In the 994 Investigation, the Commission granted respondents' request to institute a 100-day schedule to determine the issue of invalidity under Section 101. The asserted patent in the 994 Investigation, U.S. Patent No. 6,928,433, relates to a user interface for accessing content on a portable media player. Specifically, the '433 patent covers a method of using hierarchical categories and various screens to access media. In his initial determination, Judge Shaw held that the asserted claims are invalid as they are directed to "the abstract and well-known idea of a hierarchically navigated user interface." Judge Shaw added that "there is no indication that the inventors went beyond anything routine and ordinary in claiming the application of known organizational methods to the standard functions of portable music players and similar devices."


Summary determination of invalidity at the ITC is, as it should be, rarely granted. However, like a number of district courts post-Alice, the ITC is willing to consider early challenges to patent eligibility under Section 101. As these cases illustrate, claims covering "abstract" ideas, regardless of their technical context, are in danger of being more readily invalidated at the ITC.

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.

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