3 Concrete Approaches To Defeat Abstractness
(as published in Law360)
Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, the patent community has been searching for a dividing line between computer-implemented inventions that are eligible for patenting and those that are not. Until recently, the Federal Circuit’s Section 101 jurisprudence has largely provided guidance regarding what not to do, which is of little use to patentees. But a careful analysis of this guidance, together with the Federal Circuit’s recent decisions finding eligible subject matter, reveals three approaches an attentive attorney can draw upon to address patent eligibility challenges.
Alice and the Rise of the Section 101 Challenge
The Supreme Court’s landmark decision in Alice sets out a two-step test. First, the test asks whether the claim is directed to an “abstract idea.” If the answer is no, the claim recites an invention that is eligible for patenting. Otherwise, the second step asks whether the claim recites an “inventive concept” amounting to “significantly more” than the abstract idea. If so, the claim recites a patent-eligible invention. If not, the claim is patent-ineligible.
The Alice decision erased traditional understanding of inventions that qualify for patent protection, leaving everyone from the Federal Circuit down scrambling for clarity. This uncertainty has proved particularly problematic for computer-implemented inventions.
3 Approaches to Overcome a Section 101 Challenge
While the claims in all Section 101 Federal Circuit decisions of 2015 were found to be patent-ineligible, three recently released decisions finding eligible subject matter, namely Enfish, Bascom and Rapid Litigation, may begin to clarify the Alice test. A careful analysis of these decisions, together with the 2014 Federal Circuit eligibility decision in DDR Holdings, reveals three approaches to overcoming or forestalling a Section 101 challenge.
1. The Specific Claims Approach
The Supreme Court has consistently emphasized the importance of specificity to Section 101 eligibility, and with this in mind, many Federal Circuit decisions might be understood as finding claims ineligible when they are so overbroad (or preemptive) they fail to recite anything qualifying as a patentable invention (and risk monopolizing an abstract idea).
In terms of actual practice, achieving patent eligibility by defining claims with the right level of specificity is more than theoretical. We have recently used it to obtain patents for software-implemented inventions within the patent office units that examine claims directed to software and business methods (grouped within the U.S. Patent and Trademark Office’s “TC 3600”) despite the fact that these units have, since Alice, rejected nearly every claim under Section 101.
In Enfish, the detailed technology recited by the claims supported a conclusion that they were not directed to an abstract idea. The means-plus-function claim at issue was construed to require a detailed algorithm for creating a database table. That detail led to the holding that the claim was “specifically directed” to a detailed improvement rather than an abstract idea, and that the proposed abstract idea was “untethered” from that detail. Similarly, in Bascom, the Federal Circuit found that the claims recited an “inventive concept” because claim limitations recited a “specific location for the filtering system” instead of claiming filtering generally. In DDR, the court put a fine point on this approach, distinguishing the eligible claims at issue from claims “recited too broadly and generally to be considered sufficiently specific and meaningful applications of their underlying abstract idea.”
These cases demonstrate the right kind of details: those that focus on (or, in litigation, are characterized as) what differentiates the invention from the most similar prior art. Other Federal Circuit decisions show the irrelevance of detail directed at what might be called the “environment” in which the invention operates. The claims in the recent TLI decision, for example, recited detail regarding devices with which the invention might operate. Those claims were found ineligible.
Detailing the “heart” of the invention in the claim by describing key elements or steps with sufficient substance should be beneficial in avoiding the appearance of preemption. For functional limitations, it may be helpful to consider the “way” a function is implemented, and detail that “way” in the claim through either explicit language (for new and pending applications) or construction (for litigations).
When narrowing claims using this approach, keep business goals for the patent/application in mind. A patent is a business tool. Narrowing a claim may increase the chances of a granted patent, but narrowing too much may lead to a claim that, though granted, may be easily designed around or otherwise lack useful scope, which may be of little commercial value.
2. The Independent Patentability Approach
A line of cases extending to the Supreme Court’s 1970s Flook decision instruct that a claim’s “inventive concept” must be independent from the abstract idea. Recent Federal Circuit case law reaffirms this principle and reveals a second approach: identifying a basis for patentability that is independent of the abstract idea.
The holdings in Enfish, Bascom and Rapid Litigation relied upon specification and file history indications of how the invention distinguishes the prior art. In Enfish, a “self-referential” table was touted as improving the prior art and as a specific solution apart from the alleged abstract idea. Similarly, the Bascom decision held that the claims contained “significantly more” than an abstract idea (“filtering content”) because they recited a separate point of novelty: installation of a filtering tool at a specific location. Finally, in Rapid Litigation the court found the claims eligible based in part upon its conclusion that the prior art “taught away” from specific claim limitations.
Focusing on the benefits of specific claim limitations touted in the file history or specification may therefore increase the chances of eligibility. Under this approach, specific limitations or combinations of limitations should be characterized as something separate from, and providing distinct advantages over, any identified abstract idea. This may be most helpful when those limitations present concrete, independent differences over the prior art.
In this second approach, the important directive of Alice to consider claims as an ordered combination may be leveraged, focusing on why specific steps or elements in combination are larger than the sum of the parts, as one would do to defeat an obviousness challenge. The importance of focusing on the claim as a whole is borne out in each of Bascom and Rapid Litigation, where § 103 factors were referenced in concluding the claims were drawn to “something more.” These factors outweighed that the individual limitations recited known, conventional technologies.
Of course, this approach is limited in part by the specification and prior art, but litigators and prosecutors seeking to overcome a § 101 challenge should mine the record to establish a holistic advance separate from the abstract idea identified in a challenge.
3. The Problem/Solution Approach
One theme runs through all four Federal Circuit decisions in DDR Holdings, Enfish, Bascom and Rapid Litigation: namely, the importance of specific claim limitations describing a technological solution to a technological problem. Using the problem/solution approach, the specification may be as important as the claims.
Under this approach, the specification describes advantages of the invention in the context of a specific solution to a particular problem. The problem (and prior art solutions) are described in detail. Perhaps most importantly, the specification relates that solution and its benefits to specific limitations or combinations of limitations in the claims, such that the problem/solution discussion clearly supports a conclusion that those limitations reflect an inventive concept and satisfy the Alice test. Multiple problems/solutions may be identified, for different limitations that are included in or may be added to the claims.
Of course, different types of problems may carry different weight; Federal Circuit decisions show that technical or technological problems rank highest. In Enfish, Bascom and Rapid Litigation, for example, the court described at length technical problems faced by databases, content filtering systems, and producing a population of liver cells. In holding the claims eligible, the court identified specific claim limitations addressing those technical problems.
A significant number of software-implemented inventions provide benefits that are largely commercial, and the Federal Circuit has repeatedly declared such claims to be patent ineligible. The court’s decision in DDR Holdings, however, suggests that commercially beneficial software claims may be best positioned by demonstrating how the commercial problem is resolved in a particular technological context and how the invention, for example, addresses the problem with an improvement to computer functionality.
When building a case for patent eligibility using the problem/solution approach, it may be helpful to consider the Federal Circuit’s common perception that a particular claim element or step is merely “conventional” or involves “insignificant post-solution activity” that does not contribute to inventiveness. A specification that describes how such an element or step corresponds to a particular “solution”/“invention” may help overcome this perception.
These three approaches should not be considered siloed from one another — using the approaches together may put the best foot forward for patentability, particularly for new applications. Some approaches may overlap, such as by using the problem/solution approach to aid in the independent patentability approach. In addition, for some inventions, some of these options may work better than others. Attentive attorneys should carefully evaluate how to put the best foot forward for each application or patent, and patent applicants/owners should take care to work with an attorney who understands how to do so for their specific inventions.
 Mayo Collaborative Servs. v. Prometheus Labs., 132 S.Ct. 1289, 1299 (2012) (“Unlike the [patent eligible] process in Diehr, [the process in Flook] did not explain how the variables used in the formula were to be selected, nor did the claim contain any disclosure relating to chemical processes at work or the means of setting off an alarm or adjusting the alarm limit.”).
 This judicial concern with overbreadth is not new — it extends back to the nineteenth century. See O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853) (invalidating claim: “If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification.”).
 Enfish, LLC v. Microsoft Corp., 2016 WL 2756255, at *5-6 (Fed. Cir. May 12, 2016).
 Bascom, 2016 WL 3514158, at *8.
 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
 In re TLI Commc’n Patent Lit., 2016 WL 2865693, at *4-5 (Fed. Cir. May 17, 2016).
 Parker v. Flook, 437 U.S. 584, 594 (1978) (“Respondent's process is unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains **2528 no patentable invention.”).
 Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
 Enfish, 2016 WL 2756255, at *6.
 Bascom, 2016 WL 3514158, at *7 (“BASCOM asserts that the inventors recognized there could be a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location. Thus, construed in favor of the nonmovant—BASCOM—the claims are more than a drafting effort designed to monopolize the [abstract idea].”) (quotation omitted)
 Rapid Litigation Mgmt. Ltd. v. Cellzdirect, Inc., 2016 WL 3606624, at *7 (Fed. Cir. July 5, 2016) (citing Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922, 928 (Fed. Cir. 2012)).
Alice, 134 S.Ct. at 2355 n.3; Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)
 DDR Holdings, 773 F.3d at 1256.