Alice v. CLS Bank: United States Supreme Court Establishes General Patentability Test
By Julia Powles, Researcher, University of Cambridge, UK
Every patent must satisfy the requirement for patentable subject-matter – or, as it is sometimes known, patent eligibility, or the requirement for “an invention”. In effect, the claimed invention must be the sort of thing that could lead to a patent.
Most countries define subject-matter negatively – things are patentable unless they are excluded by statute or case law. Once this requirement is satisfied, the assessment then turns to fact-specific criteria such as novelty, non-obviousness, industrial applicability, and sufficient description. If the subject-matter requirement is not satisfied, then it’s game-over for the patent.
Subject-matter is a negligible concern for the vast majority of patents. However, due to either express or implied exclusions, it can be a real sticking point in particular domains – most notably, software, biotechnology, and diagnostic and business methods. As an early ground for striking out patents, the subject-matter requirement may seem attractive to patent systems suffering intense backlogs and perceived misuse and abuse. This broader context may reflect why, in the last five years, the United States Supreme Court has issued four influential subject-matter rulings after a nearly 30-year hiatus: Bilski v. Kappos, Mayo v. Prometheus, AMP v. Myriad – all covered in previous editions of this magazine – and, most recently, the highly-anticipated case of Alice v. CLS Bank .
Alice’s abstract ideas
Alice attracted a great deal of interest largely because the patents in issue involved a business method implemented by a computer. Many pundits seized on the case as an opportunity for much-needed guidance on software patenting. However, it was clear from the facts and the hearing that this was unlikely to happen. When the Supreme Court issued its ruling on June 19, 2014, it opted for a narrow basis for its decision, closely tied to the facts at hand, and omitting broader guidance (or, indeed, any mention of the word “software”.)
The four patents in Alice concerned intermediated financial risk settlement (i.e. mitigating the risk that one party to an agreed transaction fails to pay or to satisfy other conditions). The Supreme Court distilled the claims as variants on: a method for exchanging financial obligations; a computer system configured to carry out the method; and a computer-readable medium containing program code for performing the method. The parties to the case were the patentee, Melbourne-based Alice Corp, which had no relevant trading activity in relation to the patents, and New York-based CLS Bank International, which engaged in $US 5 trillion settlements daily employing the patented methods.
Under section 101 of the US Patent Act, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may be eligible for patent protection.” The US courts have developed three exclusions to this broad provision: laws of nature, natural phenomena, and abstract ideas. In the Alice decision, which concerned the “abstract ideas” exclusion, the Supreme Court stated that the principle undergirding these exclusions is “pre-emption”, which it related to the notion that the basic tools, or building blocks, of scientific and technological work must remain in the public domain.
The Court recognized, however, that at some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Lest the exclusions “swallow all of patent law”, the Court sought to distinguish patents that claim the building blocks of human ingenuity from those that integrate those building blocks into “something more”.
Bilski reloaded, with dashings of Mayo
One of the primary reasons the Supreme Court heard the Alice case was that the Federal Circuit en banc decision , issued on May 10, 2013, had yielded a deeply fractured set of opinions, failing to agree the nuances of the appropriate test for patent eligibility. Among the causes were perceived inconsistencies in the Supreme Court’s precedent. The Supreme Court in Alice therefore took the opportunity to articulate a single, uniform subject-matter test. That test, itself a generalization from the earlier case of Mayo v. Prometheus, involves two parts:
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts [i.e. law of nature, natural phenomena, or abstract idea].
If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “inventive concept”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
Applying this two- step test led the nine justices of the Supreme Court to find unanimously that Alice’s patents were invalid for lack of patentable subject-matter. Unhelpfully for future guidance, the Court considered it need not “labor to delimit the precise contours of the “abstract ideas” category”. Within its reasons, however, it gave several examples of abstract ideas: fundamental economic practices; certain methods of organizing human activities; an idea in itself; and mathematical relationships/formulas. Turning to the second step, the Court concluded:
We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation [i.e. a data processing system, a communications controller, and a data storage unit] fails to transform that abstract idea into a patent-eligible invention.
In the end, the Alice ruling is remarkably proximate to the factual findings in Bilski v. Kappos – where a risk-hedging business method was found to be an ineligible abstract idea – as well as to the legal findings in Mayo, where, in applying the two-step test, a diagnostic method was deemed an ineligible law of nature, applied with only conventional steps, and was therefore ineligible.
By contrast, Alice sits somewhat less comfortably with AMP v. Myriad, a decision subsequent to Mayo that notably omitted reference to the two-step test. Instead, Myriad was decided in accordance with older authorities that involved biological subject-matter – Diamond v. Chakrabarty and Funk v. Kalo. In Myriad, the Court held that isolated genes were unpatentable natural phenomena. More problematic, particularly in light of the Mayo/Alice test, was its finding that lab-generated cDNA is patent eligible, despite the fact that it is produced from isolated genes (i.e. natural phenomena), with the addition of only conventional, routine steps.
Implications for software patents
More meritorious computer-implemented inventions were not directly addressed in the Alice decision, except to the extent that the Court confirmed the uncontroversial proposition, established by cases in the 1970s and 80s, that inventions improving the functioning of a computer itself (i.e. for speed, efficiency, or security), or effecting an improvement in any other technology or technical field, are patentable.
Alice emphasized very strongly that merely stating an abstract idea, while adding the words “apply it” with a generic computer and generic computer functions, is not sufficient. This emphasis, while it holds instinctive appeal, creates difficulties if applied to other types of non-computer-based inventions. It also fails to accommodate the way in which computer-implementation may allow an idea to be realized at a scale and speed impossible through other means, with considerable programming skill required in order to achieve such an outcome.
Incongruously, it is plausible under the Mayo/Alice test that a sophisticated idea, implemented using generic code and computing platforms, might not be patentable; while a generic idea, implemented using unusual platforms, may be.
An interesting aspect of the Alice ruling is the way that the Court characterized Diamond v. Diehr. This is an important Supreme Court authority from 1981, concerning a computer-implemented method for calculating temperature within a rubber mould during a step-wise rubber curing process that was found to be patentable. Adopting a reading of Diehr that appears to be novel within US Supreme Court precedent – even if it chimes with international authorities – the Court in Alice described the invention in Diehr as patentable because it used an otherwise unpatentable equation to “solve a technological problem” and “improve an existing technological process”. This reflects an interesting shift in the US jurisprudence, and a possible gravitation towards the approach of Europe and other jurisdictions.
A decision of the Federal Circuit shortly after Alice gave an indication of how it may be applied more broadly. In Digitech v. Electronics for Imaging, the Federal Circuit rejected a patent that claimed a method for manipulating data in a digital image processing system. The reasoning was that the patent claim:
recites an ineligible abstract process of gathering and combining data that does not require input from a physical device… Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.
The bounds of expressions used in the Alice decision, such as “generic”, “technological”, “inventive concept” – and the magical quality of “transformation” into “something more” – will doubtless be picked over in cases to come.
The merits of a subject-matter requirement
One question not explored in Alice, but worthy of broader reflection, is whether the requirement for patentable subject-matter is even useful to the patent system at all. The problem with the requirement is that it is a coarse filter and encourages satellite debate of the nature described above. It involves potentially eliminating patents based on limited information and deprives the patent system of its best qualities – namely, taking a set of claims at a particular point in time and comparing them against hard evidence to determine whether they objectively satisfy novelty, non-obviousness, industrial applicability, and sufficient description. Instead, subject-matter is an impressionistic, somewhat unpredictable assessment, and overlaps dangerously with novelty and inventive step. This is seen in the Alice case itself, where the Court was clearly influenced by the fact that intermediated settlement was a long-occurring practice.
The utility and application of the subject-matter criterion differs between jurisdictions. In Europe, it has led to a considerable standoff between the UK courts and the European Patent Office. The UK courts take the view that subject-matter should be a real threshold and have devised complicated tests for its assessment, while the EPO has a considerably lower bar for subject-matter, but it then considers exclusions on software, business methods, and other express exclusions “as such” at the novelty and non-obviousness stages, finding this a more practically workable solution.
One of the principal lures of the subject-matter criterion is that it stops weak patents from clogging the system. The problem is that it is rather an inefficient and ineffective tool for doing so. Tests such as that expounded in Alice and analogues in jurisdictions such as the UK might appear simple, but they turn on tortuous analyses of undefined and unspecific, yet familiar, terms. Particularly in the case of expressions such as “technological”, “technical” and “inventive concept”, there are further issues when these expressions are used in other parts of patent law in very different ways. This all confuses, rather than assists, understanding, and can mask what are in the end very subjective decisions.
Overall, Alice’s enduring significance comes from establishing Mayo’s two-step test as a general test for US patentable subject-matter. It will be fascinating to see if this produces any significant changes in software, biotechnology, and diagnostic and business method patenting, both in the US and internationally.