Patent owners are still enjoying a measure of relief as the effects of the Supreme Court’s monumental Alice decision continue to wear off.
The 2014 ruling (0) held that an invention must involve something “significantly more” than a mere natural phenomenon, abstract idea, or law of nature in order to merit patent protection.
Importantly, Justice Clarence Thomas, writing for a unanimous court, memorably held that:
[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. . . Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result.
Initially, the decision spelled trouble for so-called “business method” patents, as well as many software patents.
But as I reported (1) last September, the invalidation rate of patents at the trial court level fell over the first few years from 90 percent to 70 percent, as “the initial one-to-two years of Alice really washed out some horrible patents being litigated,” but “the initial swath of patents being crushed seems to be slowing,” in the words of my former law partner Ryan McCarthy.
That trend has continued into 2017 as well. As one law firm (2) has noted:
While the number of motions to dismiss has continued to climb, the rate at which courts are granting dismissal has decreased, falling from 71 percent in 2015 to 53 percent in 2016, according to an analysis of roughly 150 federal district court decisions.
Even as the burden has eased, patent owners have struggled over the last four years to discern exactly what types of inventions will pass muster under Alice. The best guidance the Patent Office has given them involves reasoning by analogy: Look at the patents that have withstood Alice challenges thus far, the Patent Office says in its guidelines, and try to make your patents resemble them.
Last September, I detailed one such invention that survived in the field of automating lip synchronization in computer animation. Then, just a few months ago, I explored two patents owned by Fitbit that a California court invalidated.
But essentially, every time a patent withstands an Alice challenge, it makes news in the patent world. And this is exactly what happened earlier this month, when a Massachusetts court upheld (3) two patents for efficiently monitoring and transmitting patient data.
There, a medical device and services company called CardioNet alleged that InfoBionic, a competitor, infringed four of its patents. InfoBionic sought to terminate the case on the ground that the patents didn’t qualify under Alice.
The court held that several of the patent claims were “directed to using computers as tools to perform the abstract idea of monitoring patient data[,]” which merely “reflects the mental analysis that medical professionals long have performed.”
However, because the claims at issue “purport to improve upon the previous technology, which did not allow for selectivity in determining the data set that would be transmitted to the central unit,” the court ruled that the patents did not run afoul of Alice’s strictures.
Still, other claims did not pass muster under Alice and were invalidated by the court.
And so, while the law of patent eligibility remains in flux, there continue to be glimmers of hope for patent owners in several fields.