United States: Amdocs Highlights Panel Dependency Of §101 Decisions At Federal Circuit

Last Updated: November 10 2016
Article by Michael D. Stein

In Amdocs v. Openet Telecom, the Federal Circuit reversed a district court ruling that the claims of several patents were invalid under 35 USC § 101.1 Judge Plager authored the opinion for the court, and he was joined by Judge Newman. Judge Reyna authored a lengthy dissent objecting to the overall approach taken by the majority. This decision is notable because it includes claims very close to the line of eligibility and a strong reliance on claim construction, and because the majority and dissent offer quite different analytical approaches to section 101. The majority suggests a common law, analogy-driven approach, but the dissent seeks to put sharper focus on the Alice two-part abstract idea test.2

The following representative claim was the focus of the court's analysis:

1. A computer program product embodied on a computer-readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record;

computer code for correlating the first network accounting record with accounting information available from a second source; and

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

(Claim 1 of U.S. Patent No. 7,631,065)

It's fair to say that claims reciting this level of functionality have not fared well since Alice. The district court concluded that the claim was directed to the abstract idea of "correlating two network accounting records to enhance the first record," implemented using nothing but generic technology with no other inventive concept. The Federal Circuit majority, however, saw an inventive concept in "an unconventional technological solution" involving generic components that "operate in an unconventional manner to achieve an improvement in computer functionality." In particular, the majority drew on a claim construction of the phrase "to enhance" as meaning "to apply a number of field enhancements in a distributed fashion."

A unique aspect of this case is that the Federal Circuit had previously construed the claims in connection with a prior appeal (Amdocs I) and thus was able to consider patent eligibility based on a record that was more complete than in most cases. For example, in Amdocs I, the court construed "enhance" as being dependent upon the invention's distributed architecture and as meaning "to apply a number of field enhancements in a distributed fashion." The court also noted how the district court explained that "in this context, 'distributed' means that the network usage records are processed close to their sources before being transmitted to a centralized manager." The court further approved of the district court's "reading the 'in a distributed fashion' and the 'close to the source' of network information requirements into the term 'enhance.'"3

To date, only a handful of Federal Circuit decisions have upheld the validity of patents challenged on patent-eligibility grounds. These include DDR Holdings, Enfish, Bascom Global and McRO. The majority opinion in the present case takes a different approach. Instead of closely adhering to the two-part test of Alice, the majority opinion works by analogy from precedents. In contrast, the dissent would not only apply Alice but also attempts to provide some nuances, especially to the first step, and the concept of a claim being "directed to" an abstract idea.4

The dissent objected to the lack of "structure" in the claims, and complained that the majority's vague reasoning relied too heavily on the specification and not enough on the claims. The dissent pointed out that claim 1 recites a software product embodied on a storage medium, but it provides no structural limitations of either the physical medium or the digital software. The dissent argued that all software products are stored on a physical storage medium and claim 1 recites no limitations concerning that physical structure. Likewise, the dissent argued, "claim 1 discusses only very broad, high-level functionality rather than details about how exactly that functionality is implemented, providing no information about the structure of the software. ... Claim 1 is therefore not directed to any specific structure, whether physical or digital."5

To my mind, the most immediate takeaway is that the court remains highly divided on how to apply the Alice test. The result of any patent-eligibility case at the Federal Circuit will be highly panel-dependent.

Moreover, I believe that a solution to the Alice problem is to employ structural claim limitations. For example, machine code algorithms and data structures are structural elements that can be utilized for this purpose.6


1 The patents-in-suit were U.S. patents, Nos. 7,631,065; 7,412,510; 6,947,984; and 6,836,797.

2 See Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).

3 See majority opinion at 22.

4 Judge Reyna suggests that part 1 has to ascertain what the claimed invention is—a goal, or a way of reaching that goal. Thus, claims that recite the way of reaching the goal are patent eligible. If a part 2 analysis is necessary, we should look to see whether the abstract idea is limited in a way other than the ways courts have held inadequate, which Judge Reyna calls "illusory limitations" (limitations that don't actually narrow the claim) and "contextual limitations" (field-of-use limits). See dissenting opinion at 12.

5 See dissenting opinion at 14.

6 See How Structural Claim Limitations Can Save Software Patents.

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 association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.