Tag Archives: Alice v. CLS Bank

A recent Federal Circuit decision illustrates the high eligibility hurdles that fintech software patents continue to face in view of the Supreme Court’s 2014 Alice v CLS Bank decision.

In Clarilogic, Inc. v. FormFree Holdings Corp. (Fed. Cir. Mar. 15, 2017), the court addressed the eligibility of U.S. Patent 8,762,243, which was directed to methods for electronic account certification and  credit reporting. The representative claim of the patent was: Continue reading →

For the second time in two months, the Federal Circuit has issued a decision that describes a situation in which a software invention can be eligible for patenting.

In Bascom Global Internet Services, Inc. v. AT&T Mobility et al., the court vacated and remanded a district court’s decision that found a content filtering system invention to be not patent-eligible.

The patent at issue covered a system by which a remote ISP server filters content that a client computer requests from a website. Claim 1 of the patent is directed to:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
  a local client computer generating network access requests for said individual controlled access network accounts;
  at least one filtering scheme;
  a plurality of sets of logical filtering elements; and
  a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

The Federal Circuit passed on considering whether the claims were directed to an abstract idea, but instead focused on the second prong of the Alice v CLS Bank patent-eligibility analysis and found the claims to include an inventive concept. The Federal Circuit noted that “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or perform it on a set of generic computer components…nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

The court also cautioned against confusing patent-eligibility with obviousness: “The district court’s analysis in this case … looks similar to an obviousness analysis under 35 U.S.C. 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The decision closely follows the Federal Circuit’s recent decision in Enfish LLC v. Microsoft Corporation, in which the court cautioned against a broad interpretation of Alice v. CLS Bank as holding that all improvements in computer-related technology are inherently abstract.

For a summary of more Federal Circuit, district court, and PTAB decisions that have found software patents to be eligible for patenting since Alice, click here.

Thanks to my colleague Brienne Terril for her help writing this post.

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, patent applicants, courts and the U.S. Patent and Trademark Office have struggled to establish clear and consistent standards for the patent-eligibility of software and business method inventions, with particular murkiness around the definition of what is and is not an “abstract idea” or “significantly more” than an abstract idea.

While many of the early cases explained why the specific claims failed to satisfy patent-eligibility requirements, as later cases further defined the boundaries for patent eligibility the USPTO collected those cases into a series of guidance documents. The USPTO makes those guidance documents available to the public on a Subject Matter Eligibility page of the USPTO website. The USPTO’s most recent Subject Matter Eligibility Guidance is dated 2019, with a revision in June 2020. The latest document states that any USPTO subject matter eligibility guidance dated prior to January 2018 “should not be relied upon,” although claims “considered eligible under prior guidance should [still] be considered patent eligible under this guidance.”

To overcome rejections, and to draft cases with an eye toward eligibility, Applicants are best served to craft claims and arguments that are analogous to those allowed by established precedent, and especially Federal Circuit decisions, as well as the examples described in the USPTO’s Subject Matter Eligibility Guidance.

To help with this process, patent applicants can find some insight from the growing number of court and PTAB decisions that declined to overturn patent claims.  A summary of those cases, with links to the cases and patents, follows:

[Note:  The Federal Circuit decisions on this post are up-to-date, but this blog is no longer updating the lists of District Court or PTAB decisions]

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