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 Topics
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions