{"id":3988,"date":"2016-09-16T14:39:21","date_gmt":"2016-09-16T18:39:21","guid":{"rendered":"http:\/\/cpip.gmu.edu\/?p=3988"},"modified":"2026-02-03T21:07:29","modified_gmt":"2026-02-03T21:07:29","slug":"federal-circuit-again-finds-computer-implemented-invention-patent-eligible","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2016\/09\/16\/federal-circuit-again-finds-computer-implemented-invention-patent-eligible\/","title":{"rendered":"[Archived Post] Federal Circuit Again Finds Computer-Implemented Invention Patent Eligible"},"content":{"rendered":"

\"dictionaryIn Tuesday\u2019s McRO v. Bandai<\/em><\/a> decision, the Federal Circuit has once again reversed a district court\u2019s determination that a computer-implemented invention (aka \u201csoftware patent\u201d) was not patent eligible under Section 101<\/a> of the Patent Act. This continues the Federal Circuit\u2019s recent trend<\/a> of clarifying the Supreme Court\u2019s two-step patent-eligibility test under Mayo<\/em><\/a> and Alice<\/em><\/a>. The first step asks whether the invention is \u201cdirected to\u201d a patent-ineligible concept, such as an abstract idea. If so, the second step then asks whether there is an \u201cinventive concept\u201d that transforms the concept into a patent-eligible invention. While the Supreme Court gave little guidance on what \u201cdirected to\u201d and \u201cinventive concept\u201d mean in practice, the Federal Circuit\u2019s recent decisions have made the Mayo-Alice<\/em> test far less abstract\u2014rather ironic, given that the test itself assesses abstractness.<\/p>\n

This past May, the Federal Circuit held in Enfish<\/em><\/a> that, in the software context, the \u201cdirected to\u201d inquiry looks at whether \u201cthe plain focus of the claims is on an improvement to computer functionality itself.\u201d Since the database claims at issue focused on specific improvements to computer capabilities, they were not “directed to” a patent-ineligible concept under Section 101. Two months later in Bascom<\/em><\/a>, the Federal Circuit stated that an “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.\u201d And even though each software claim, related to filtering content on the internet, was \u201cknown in the art\u201d when taken individually, the Federal Circuit held that the claims, in combination, were patent eligible because they transformed \u201cthe abstract idea of filtering content into a particular, practical application of that abstract idea.\u201d<\/p>\n

Adding to this recent line of cases upholding the patent-eligibility of computer-implemented inventions, the Federal Circuit\u2019s new opinion in McRO v. Bandai<\/em><\/a> sheds even more light on the Section 101 analysis under the Mayo-Alice<\/em> test. The invention at issue involved automated lip-syncing for computer-generated animation, which the district court held was drafted too broadly to be patent eligible. The Federal Circuit reversed, noting that courts \u201cmust look to the claims as an ordered combination,\u201d even under the first step of the Mayo-Alice<\/em> test. The Court of Appeals thus found that the proper analytical centerpiece was \u201cwhether the claims in these patents focus on a specific means or method that improves the relevant technology.\u201d Since the invention constituted a \u201ccombined order of specific rules that renders information into a specific format that is then used and applied to create desired results,\u201d the Federal Circuit held it patent eligible under Section 101.<\/p>\n

Several commentators have praised the Federal Circuit\u2019s decision. Bob Sachs<\/a>, who specializes in patentable subject matter as a partner at Fenwick & West, points out<\/a> that the Federal Circuit, for the first time, has used preemption to find that the invention was not \u201cdirected to\u201d patent-ineligible subject matter. The Federal Circuit here looked at preemption as part of the first step of the Mayo-Alice<\/em> test, finding it relevant to whether the invention was \u201cdirected to\u201d a patent-ineligible concept in the first place. As Sachs explains, the Federal Circuit \u201cconfirms Enfish<\/em>\u2019s <\/em>holding that the improvement provided by the specific claim limitations can be considered\u201d under the first step of the Mayo-Alice<\/em> test. Moreover, Sachs notes that the \u201cpanel here makes clear that a demonstration of meaningful non-preemption is sufficient to establish\u00a0that a claim is not \u2018directed to\u2019 an abstract idea, and thus eligible at step 1.\u201d<\/p>\n

Other observers, including Erich Andersen<\/a>, VP and Deputy General Counsel at Microsoft, and Gene Quinn<\/a> of IPWatchdog, have applauded the Federal Circuit for making the patent-eligibility analysis even more concrete in light of the Supreme Court\u2019s rather abstract abstractness test in Mayo<\/em> and Alice<\/em>. If anything, the Federal Circuit here has not only built upon its prior precedents in Enfish<\/em> and Bascom<\/em>, it has tied them together by explaining that ordered combinations are relevant to both the first and second steps of the Mayo-Alice<\/em> test. In the end, the patent eligibility of a computer-implemented invention appears far more settled than ever before–a great result for inventors of so-called “software patents.” The Federal Circuit’s decision is certainly a far cry from the supposed death-knell for “software patents” predicted by several commentators after the Supreme Court’s opinion in Alice<\/i>.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Tuesday\u2019s McRO v. Bandai decision, the Federal Circuit has once again reversed a district court\u2019s determination that a computer-implemented invention (aka \u201csoftware patent\u201d) was not patent eligible under Section 101 of the Patent Act. This continues the Federal Circuit\u2019s recent trend of clarifying the Supreme Court\u2019s two-step patent-eligibility test under Mayo and Alice. The […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[26,29,35,39,48,1],"tags":[55,56,61,75,83,112,184,188,214,506,551,591,727,741,939,942,960,1072,1304,1417],"class_list":["post-3988","post","type-post","status-publish","format-standard","hentry","category-innovation-2","category-internet","category-patent-law","category-patentability-requirements","category-software-patent-high-tech-industry","category-uncategorized","tag-directed-to","tag-inventive-concept","tag-29-billion","tag-abstract-idea","tag-adam-mossoff","tag-alice","tag-bandai","tag-bascom","tag-bob-sachs","tag-enfish","tag-federal-circuit","tag-gene-quinn","tag-invention","tag-ipwatchdog","tag-mayo","tag-mcro","tag-microsoft","tag-patent-eligible","tag-section-101","tag-supreme-court"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/3988","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=3988"}],"version-history":[{"count":1,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/3988\/revisions"}],"predecessor-version":[{"id":15848,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/3988\/revisions\/15848"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=3988"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=3988"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=3988"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}