The Effect of the Alice Decision on Software and 3D Printing Patents

The Federal Circuit continues to shape the boundaries of patent subject matter eligibility following the Supreme Court’s Alice decision. Whether an invention is patentable or not often depends on the specific technology at issue, how the claims were drafted, and the parties’ arguments defining the “inventive concept.” Our chart below highlights the technology in each case and whether the claims passed each step of Alice. We will update this chart as new Federal Circuit decisions are issued, to provide a useful guide for companies evaluating the strength of their own inventions or those asserted against them.

3D printing technology evolves through advances in software, hardware, materials, or some combination of those three.  Inventions in 3D printing hardware and materials are eligible for U.S. patent protection.  Software is a different story.  The U.S. Supreme Court’s Alice decision sets a tough-to-meet standard for patenting software-implemented inventions. Under Alice, if an invention is directed to an “abstract idea”—and many software-implemented inventions are—then to be patent-eligible the invention must contain an “inventive concept” that transcends mere computer implementation of code.

Many in the patent world feared that Alice had sounded the death knell for software patents.  While Alice’s consequences have not been quite that dire, software patents are in trouble.  The Court of Appeals for the Federal Circuit has invalidated most software-implemented patents it has examined under Alice’s “inventive concept” test.  

In the field of 3D printing, Alice and its progeny have far-reaching implications. If software is at the heart of a 3D printing process, then it may be difficult to acquire patent protection at all.  Even if parts of the software are patentable, unprotected elements may create a loophole for duplication.  But Alice did not extinguish all hope.  3D printing software that works to improve existing printing processes and solve current printing problems could be found to pass Alice’s test, and would therefore be patent eligible.

Nearly three years after Alice, the state of software patenting remains unsettled. Mistakes in describing and claiming an invention may doom a meritorious patent application. Inventors should consult experienced patent counsel who understand both Alice and 3D printing technology when planning and executing their intellectual property strategy.

The graphic below illustrates the Alice test.  Following that graphic is a chart summarizing all precedential decisions from the Federal Circuit post-Alice determining whether or not claims are patent-eligible.  We will keep this chart updated as new decisions are issued.

The Alice Test

The Alice Test

 

Evolution of the Alice Standard in Federal Circuit Case Law


Case Claimed Invention Result
Alice Corp. v. CLS Bank
(June 19, 2014)
Method of computerized risk mitigation in financial settlements

Step 1
Step 2

NOT Patent Eligible
Why? Risk mitigation is a long-standing “fundamental economic practice” (step 1) and the claims merely required generic computer implementation (step 2) 
Digitech
(July 11, 2014)
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Method of digital image processing; used “device profiles” to organize devices’ spatial and color properties

Step 1
Step 2

NOT Patent Eligible
Why? Claimed “device profile” was intangible; method claims covered organization of information untethered to specific structure.

buySAFE v. Google
(Sep. 3, 2014)
Online transaction performance guarantee

Step 1
Step 2

NOT Patent Eligible
Why? The claims are about creating a contractual relationship that is performed by any general purpose computer.

Ultramerical v. Hulu
(Nov. 14, 2014)
Internet-distribution of copyright material

Step 1
Step 2

NOT Patent Eligible
Why? Offering media in exchange for viewing an advertisement is an abstract idea. Implementing it on the internet does not transform it into patent eligible.

DDR Holdings v. Hotels.com
(Dec. 5, 2014)
Method of retaining website visitors

Step 1
Step 2

Patent Eligible
Why? Claims addressed a specific internet problem, not a longstanding business practice, and provided a specific technical solution.

Univ. of Utah Research Found. v. Ambry Genetics
(Dec. 17, 2014)
DNA primers for breast and ovarian cancer genes

Step 1
Step 2

NOT Patent Eligible
Why? The method claims were "directed to the patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations," which "require merely comparing the patient's gene with the wild-type [sequences] and identifying any differences that arise."

Content Extraction v. Wells Fargo
(Dec. 23, 2014)
Method for organizing data in a computer

Step 1
Step 2

NOT Patent Eligible
Why? “Data collection, recognition, and storage is undisputedly well-known” and “humans have always performed these functions.”

OIP Technologies, Inc. v. Amazon.com
(June 11, 2015)
E-commerce price determination

Step 1
Step 2

NOT Patent Eligible
Why? Beyond the abstract idea of offer-based price optimization, the claims merely recite “well-understood, routine conventional activit[ies],” either by requiring conventional computer activities or routine data-gathering steps.”

Ariosa Diagnostics, Inc. v. Sequenom,
(June 12, 2015)
Prenatal genetic testing

Step 1
Step 2

NOT Patent Eligible
Why? “Where claims of a method patent are directed to an application that starts and ends with a naturally occurring phenomenon, the patent fails to disclose patent eligible subject matter if the methods themselves are conventional, routine and well understood applications in the art.”

Internet Patents v. Active Network
(June 23, 2015)
Dynamic tabs in a GUI

Step 1
Step 2

NOT Patent Eligible
Why? The patent attempted to claim all methods of retaining data in an online form with no restriction.

Intellectual Ventures I LLC  v. Capital One Bank
(July 6, 2015)
Customized webpages for financial account services

Step 1
Step 2

NOT Patent Eligible
Why? “The budgeting calculations at issue here are unpatentable because they “could still be made using a pencil and paper” with a simple notification device.”

Versata Development Group v. SAP America
(July 9, 2015)
Method to determine price of products

Step 1
Step 2

NOT Patent Eligible
Why? The abstract ideas of determining a price for a product were all routine and conventional ideas well-known to the industry and simply performed by a computer.

Mortgage Grader, Inc. v. First Choice Loan Services Inc.
(Jan. 20, 2016)
Loan financing evaluator

Step 1
Step 2

NOT Patent Eligible
Why? Each step of the claims could be performed by a human without a computer. Simply adding a computer does not make the claims patent-eligible.

In re Smith
(Mar. 10, 2016)
Method for operating blackjack game

Step 1
Step 2

NOT Patent Eligible
Why? The claims recited rules for playing blackjack and adding elements regarding shuffling and dealing physical cards did not make them patent-eligible.

Genetic Tech. Ltd. v. Merial LLC
(Apr. 8, 2016)
DNA sequence analysis

Step 1
Step 2

NOT Patent Eligible
Why? “The claim is directed to a natural law—the principle that certain non-coding and coding sequences are in linkage disequilibrium with one another.”

Enfish v. Microsoft
(May 12, 2016)
Improvement to database system’s memory configuration

Step 1

Patent Eligible
Why? Claims direct to specific improvements to computer functionality, rather than abstract ideas where computers are merely invoked as a tool, are patent-eligible.

In re TLI Communications Patent Litigation
(May 17, 2016)
Method for taking, transmitting and organizing digital images

Step 1
Step 2

NOT Patent Eligible
Why? The claims were directed to the use of conventional technology in a well-known environment, and did not set forth an inventive solution to any problem.

Bascom
(June 27, 2016)
Method for filtering content on the internet through an ISP server

Step 1
Step 2

Patent Eligible
Why? The arrangement of the filtering tool recited in the claims was unconventional, and the patent specification discussed how this particular arrangement was an improvement over the prior art.

Rapid Litigation Management v. Cellzdirect
(July 5, 2016)
Cryogenically freezing liver cells

Step 1

Patent Eligible
Why? The claims were directed to “new and useful laboratory technique for preserving hepatocytes.”

Electric Power Group v. Alstom
(Aug. 1, 2016)
Method of analyzing data to determine power grid stability, and displaying that data in a human-readable format

Step 1
Step 2

NOT Patent Eligible
Why? Claims that merely require the selection and manipulation of information do not render patent-eligible the abstract processes of information collection and analysis.

McRO v. Sony
(Sept. 13, 2016)
Methods for automatically animating 3D characters’ lip synchronization and facial expressions

Step 1

Patent Eligible
Why? Claims are patent-eligible when they provide a specific method of improving computer technology, and rely upon their particular technologies to make those improvements.

Affinity Labs v. DirecTV
(Sept. 23, 2016)
Method for streaming regional broadcast signals to faraway cell phones

Step 1
Step 2

NOT Patent Eligible
Why? Implementing an abstract idea on a generic computer will not transform it into something patent-eligible, even if that idea is limited to a technical field of use.

Affinity Labs v. Amazon
(Sept. 23, 2016)
System for delivering streaming media on-demand to a handheld wireless electronic device

Step 1
Step 2

NOT Patent Eligible
Why? The claims did not provide a concrete solution to the patent’s proposed problem; they simply claimed an abstract idea with no inventive concept to transform the patent.

Intellectual Ventures v. Symantec
(Sept. 30, 2016)
Method for detecting a computer virus in communications, and inhibiting the infected communication

Step 1
Step 2

NOT Patent Eligible
Why? Implementing an abstract idea on an internet network or generic computer will not transform it into something patent-eligible.

FairWarning IP v. Iatric Systems
(Oct. 11, 2016)
Method for fraud detection that scans for unusual patterns in users’ accessing sensitive data

Step 1
Step 2

NOT Patent Eligible
Why? Claims did not solve a problem specifically arising in computer technology; they were directed to the broad concept of monitoring audit log data.

Synopsys v. Mentor Graphics Corp.
(Oct. 17, 2016)
Logic circuit generation from hardware description

Step 1
Step 2

NOT Patent Eligible
Why? “The Asserted Claims make no mention of employing a computer or any other physical device, they are so broad as to read on an individual performing the claimed steps mentally or with pencil and paper.”

Amdocs v. Openet Telecom
(Nov. 4, 2016)
Method for helping ISPs track customer usage and generate bills without congesting the network or limiting data accessibility

? Step 1
Step 2

Patent Eligible
Note: The court assumed without deciding that Step 1 was not met.

Why? The claims did not combine the components in a generic manner, and most of the claims included sufficient structural limitations to render them patent eligible.

Apple v. Ameranth
(Nov. 29, 2016)
Menu transmission and generation

Step 1
Step 2

NOT Patent Eligible
Why? “The invention merely claims the addition of conventional computer components to well-known business Practices.”

Intellectual Ventures v. Capital One
(March 7, 2017)
Editing XML documents

Step 1
Step 2

NOT Patent Eligible
Why? The claims were directed to the abstract idea of collecting, displaying, and manipulating data, using generic computer components and conventional computer data processing.

Intellectual Ventures v. Erie Indemnity
(March 7, 2017)
Using an index to locate desired information in a computer database

Step 1
Step 2

NOT Patent Eligible
Why? The claims recited “no more than routine steps involving generic computer components and conventional computer data processing activities to accomplish the well-known concept of creating and using an index to search for and retrieve data.”

Intellectual Ventures v. Erie Indemnity
(March 7, 2017)
A mobile interface for accessing a user’s remotely stored data and files

Step 1
Step 2

NOT Patent Eligible
Why? Remotely accessing and retrieving information is an “age-old practice,” and the claims merely recite generic computer implementations of the abstract idea.

Thales Visionix v. United States
(March 8, 2017)
Inertial tracking system for tracking the motion of an object relative to a moving reference frame

Step 1

Patent Eligible
Why? Claims were directed to a new and useful technique for using sensors to more efficiently track movement; they were directed to the application of physics, not an equation itself.

Mentor Graphics v EVE-USA
(Mar. 16, 2017)
Method for debugging source code after synthesis

? Step 1
? Step 2

NOT Patent Eligible
Note: The court found the patent invalid under In re Nuijten (2007), rather than under Alice.

Why? “Carrier waves” are similar to transitory signals, which are not a patent-eligible “process, machine, manufacture, or composition of matter.”

Recognicorp v. Nintendo
(Apr. 28, 2017)
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Methods for encoding and decoding image data to create and reproduce a composite image

Step 1
Step 2

NOT Patent Eligible
Why? Encoding and decoding data is abstract, and the addition of an equation to derive an image code based on a “multiplication operation” is not an inventive concept that makes the claims patent eligible.

Credit Acceptance v. Westlake Services
(June 9, 2017)
System and method for generating finance packages for dealer car inventory

Step 1
Step 2

NOT Patent Eligible
Why? Claims are directed to the abstract idea of processing an application for a purchase (similar to intermediated settlement in Alice) using conventional computer elements.

Cleveland Clinic v. True Health Diagnostics
(June 16, 2017)
Methods for detecting MPO in blood and determine risk of cardiovascular disease

Step 1
Step 2

NOT Patent Eligible
Why? The claims related to observing a law of nature and then simply comparing those observations to control values.

Visual Memory v. NVIDIA
(Aug. 15, 2017)
Memory system configurable for use with multiple processors

Step 1

Patent Eligible
Why? Claims are directed to an improved computer memory storage system, rather than to the abstract idea of categorical data storage.

Return Mail v. U.S. Postal Service
(Aug. 28, 2017)
Method for processing “undeliverable” mail

Step 1
Step 2

NOT Patent Eligible
Why? Claims recited the abstract idea of relaying mailing address data through conventional encoding and decoding, and contained no meaningful hardware limitations.

Secured Mail Solutions v. Universal Wilde
(Oct. 16, 2017)
Methods for mail tracking and identification

Step 1
Step 2

NOT Patent Eligible
Why? Claims were directed to the abstract idea of using marking to communicate information about a mail object, and routine steps failed to set them apart from conventional labeling or barcoding.

Smart Systems Innovations v. Chicago Transit Authority, et al.
(Oct. 18, 2017)
System and method for implementing open-payment fare systems in mass transit networks

Step 1
Step 2

NOT Patent Eligible
Why? Claims were directed to the abstract ideas of collecting data and forming financial transactions in a particular field, and there was no inventive concept in generic “processor[s],” “interface[s],” “memory,” and “data.”

Two-Way Media v. Comcast
(Nov. 1, 2017)
System for streaming audio/visual data over a communications system

Step 1
Step 2

NOT Patent Eligible
Why? Claims required functional results of “converting,” “routing,” “controlling,” “monitoring,” and “accumulating records,” but did not describe how to achieve those results in a non-abstract way, and any potential inventive concept appeared in the specification, rather than in the claims.

Finjan, Inc. v. Blue Coat Sys.
(Jan. 10, 2018)
Computer security method that scans a downloadable file and creates a “security profile”

Step 1

Patent Eligible
Why? Claims not abstract because they recited specific steps to accomplish desired result, and there was no contention that patent only disclosed the result, rather than disclosing an inventive arrangement for accomplishing it.

Core Wireless Licensing S.A.R.L. v. LG Electronics
(Jan. 25, 2018)
Display interfaces that make data more easily accessible

Step 1

Patent Eligible
Why? Disclosed invention improved the functioning of the electronic device, as well as the efficiency of using that device.

Berkheimer v. HP
(Feb. 8, 2018)
Method for archiving an item in a computer

Step 1
? Step 2

Undecided – Presented Factual Issue Not Appropriate for SJ
Why? Claims were directed to the abstract idea of parsing, comparing, storing, and editing data, but conventionality of technology required fact determination that could not be made at the summary judgment stage based on the evidence at record.

Vanda Pharms. v. West-Ward Pharms
(Apr. 13, 2018)
Method of treating schizophrenia patients with dosage of iloperidone based on patient’s genotype

Step 1

Patent Eligible
Why?
Claims not abstract because they were directed to “a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.”

Voter Verified, Inc. v. Election Sys. & Software
(Apr. 20, 2018)
Methods and systems for “auto-verification” of voters’ ballots

Step 1
Step 2

NOT Patent Eligible
Why?
Voting, verifying the vote, and submitting it for tabulation are fundamental activities that have “form[ed] the basis of our democracy for hundreds of years,” and claims implemented these activities on generic computer components.

Interval Licensing v. AOL (Jul. 20, 2018) Attention manager that displays content in device’s unused capacity as a wallpaper or screensaver

Step 1
Step 2

NOT Patent Eligible
Why?
Claims were directed to abstract idea of displaying one set of data without interfering with another set of data, and their addition of conventional features, such as user customization, did not constitute an inventive concept.

SAP America, Inc. v. InvestPic, LLC
(Aug. 2, 2018)
System and methods for performing statistical analysis of financial data

Step 1
Step 2

NOT Patent Eligible
Why?
Claims directed to abstract idea of using selected information to perform mathematical calculations and present their results; recitation of generic parallel processing components, even when used to perform an improved mathematical analysis, did not add an inventive concept.

BSG Tech v. Buyseasons
(Aug. 15, 2018)
Systems and methods for indexing database information

Step 1
Step 2

NOT Patent Eligible
Why?
Claims were directed to abstract idea of considering historical usage information while inputting data, and any non-abstract features were well-understood, routine, and conventional database structures and activities.

Data Engine Techs. LLC v. Google LLC
(Oct. 9, 2018)
(1) Specific improved method for navigating through complex three-dimensional electronic spreadsheets

(2) Method for (i) organizing a three-dimensional spreadsheet, and (ii) tracking changes to data in spreadsheets

 

Step 1

Step 1
Step 2

(1) Patent Eligible
Why? Claims not directed to an abstract idea because they provide a specific technical solution and improvement in electronic spreadsheet functionality over prior art electronic spreadsheets.

(2) NOT Patent Eligible
Why? Claims are directed to abstract idea of (i) “identifying and storing electronic spreadsheet pages,” and (ii) “collecting, recognizing, and storing changed information,” and merely recite generic steps for implementing each abstract idea itself.

Roche Molecular Sys., Inc. v. Cepheid
(Oct. 9, 2018)

Methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (“MTB”)

Step 1
Step 2

NOT Patent Eligible
Why? Claims are directed to a “naturally occurring phenomena” because they are directed to a relationship between certain nucleotides and the presence of MTB in a sample, i.e., “a phenomenon that exists in nature apart from any human action.”

Ancora Techs., Inc. v. HTC America, Inc.
(Nov. 16, 2018)

Methods of limiting a computer’s running of software not authorized for that computer to run

Step 1

Patent Eligible
Why? Claims are directed to an improvement in computer functionality, namely, “a concrete assignment of specified functions among a computer’s components to improve computer security,” and address a technological problem (vulnerability of license-authorization software to hacking)

In re Marco Guldenaar Holding B.V.
(Dec. 28, 2018)

Method of playing a dice game

Step 1
Step 2

NOT Patent Eligible
Why? Claims are directed to the abstract idea of “rules for playing a dice game,” a type of method of organizing human activity, and recite conventional steps of “placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs.”

Athena Diagnostics, Inc. v. Mayo Collab Svcs, LLC
(Feb. 6, 2019)

Methods for diagnosing neurological disorders by detecting antibodies to a certain protein (muscle-specific tyrosine kinase (“MuSK”))

Step 1
Step 2

NOT Patent Eligible
Why? Claims are directed to a natural law because they relate to a correlation that exists in nature apart from any human action (the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK-related neurological diseases), and recite steps that only apply conventional techniques to detect that natural law.

Univ. of Florida Research Foundation, Inc. v. General Electric Co.
(Feb. 26, 2019)

Method for integrating physiologic treatment data

Step 1
Step 2

NOT Patent Eligible
Why? Claims are directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data” using a computer and do not describe any specific improvement to computer functionality, and the patent proposes using “a general-purpose computer” to carry out the claimed steps.

Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC
(Mar. 15, 2019)

Methods of treatment using beta-alanine, dietary supplements incorporating beta-alanine, and the use of beta-alanine to manufacture dietary supplements

Step 1

Patent Eligible
Why? With respect to the method claims, they are “treatment claims” and therefore patent eligible because they are directed to new ways of using an existing product and “require that an infringer actually administer the dosage form claimed in the manner claimed, altering the athlete’s physiology to provide the described benefits.” With respect to the dietary supplement and manufacturing claims, neither is directed to a law of nature or a natural product, as the dietary supplement is based on “specific treatment formulations” and is not a product of nature (it can be used in a manner that beta-alanine as it appears in nature cannot).

SRI Int’l, Inc. v. Cisco Sys., Inc.
(Mar. 20, 2019)

Method of hierarchical event monitoring and analysis within an enterprise network

Step 1

Patent Eligible
Why? Claims are not directed to an abstract idea because they are “necessarily rooted in computer technology” and “solve a specific problem in the realm of computer networks,” namely, using multiple network monitors that analyze specific types of data on the network and integrate reports from the monitors, in order to identify hackers or potential network intruders.

Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc.
(Mar. 28, 2019)

Method of using oxymorphone to treat pain in patients with impaired kidney function

Step 1

Patent Eligible
Why? Claims are patent eligible because they recite a method for treating a patient (carrying out a specific dosage regiment based on the results of kidney function testing) and are directed to an application of a natural relationship (between oxymorphone and patients with renal impairment).

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Authors

8103_740x360

Practice:

  • Patents
  • 3D Printing
  • Intellectual Property
  • U.S. International Trade Commission
  • Inter Partes Review (IPR)
  • Automotive Technology & Mobility

T. Vann Pearce, Jr. Partner Patents, 3D Printing

Washington, D.C.

Vann wins difficult intellectual property disputes, and helps clients use their intellectual property to build their companies.

As a litigator of patent infringement and related matters, he has obtained judgments, dismissals, and favorable outcomes in federal district courts, the Federal Circuit, the ITC, and in inter partes review proceedings. As a counselor on patent licensing and portfolio development, Vann crafts precise strategies which minimize legal threats and capitalize on emerging industry trends. Whether resolving today’s disputes or helping his clients plan for the future, Vann understands how to lead teams to successful outcomes, on budget, and in demanding circumstances.

Like his clients, Vann approaches his work with an entrepreneur’s mindset. Vann co-founded and is Co-Chair of Orrick's 3D Printing practice. Vann frequently speaks at conferences and universities around the world about the intersection of 3D printing/additive manufacturing and intellectual property law.

Vann draws upon his technical background to quickly understand complex inventions ranging from semiconductors, to imaging and displays, to chemistry. He holds a chemical engineering degree and worked in the medical device and biotech fields before law school.

13740_740x360

Practice:

  • 3D Printing
  • Intellectual Property
  • IP Counseling & Due Diligence
  • Inter Partes Review (IPR)

Christopher Higgins Partner 3D Printing, Intellectual Property

Washington, D.C.

Chris Higgins is a patent litigator and co-leader of the 3D Printing Group at Orrick. Chris is a trial lawyer with an electrical engineering degree, giving him a unique set of skills to represent clients in disputes involving complex technologies such as 3D printing and 3D scanning, graphics processing, semiconductors, medical devices, LCD displays, and data encryption.


Chris has developed a global reputation as an authoritative source on legal issues in 3D printing, and has been a featured speaker at 3D printing events around the world. His 3D printing practice includes advising startups and established 3D printing companies on all aspects of intellectual property law, cybersecurity, and technology transactions. Chris helps 3D printing clients grow their businesses and capitalize on market opportunities and represents them in court to defend or enforce IP rights.

Chris' patent litigation and IPR practice also covers a wide range of other technologies including graphics processing, digital image processing and printing, semiconductor devices and semiconductor manufacturing, data encryption, high-definition television, digital content recognition, and medical devices. Chris has also assisted clients with licensing and patent prosecution related to digital imaging, wireless technology, mobile communication devices, encryption, high-definition television and medical devices.

Prior to law school, Chris worked in the patent department of a medical device company and as an engineer designing electronic components for missiles, projectiles, and bombs.

Erica Rothenberg

Practice:

  • Patents
  • Trade Secrets Litigation
  • Intellectual Property
  • U.S. International Trade Commission
  • Inter Partes Review (IPR)

Erica Rothenberg Associate Patents, Trade Secrets Litigation

Silicon Valley

Erica Rothenberg is an associate in Orrick’s Silicon Valley office and a member of the Intellectual Property Group.

Erica’s practice focuses on patent infringement litigation in federal district court and Section 337 proceedings before the ITC. Although her emphasis is in computer software, Erica counsels clients on a wide range of technologies, including semiconductors, printers, graphics processors and medical devices.

Before joining Orrick, Erica served as a law clerk at The White House and an intellectual property legal intern at LinkedIn. She taught herself Python programming at a young age and worked in database development prior to law school.