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What is Alice?

In Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the Supreme Court articulated a two-part analytical framework for determining whether a claim is patent-eligible under 35 U.S.C. § 101 (the “Mayo-test”). Mayo dealt with laws of nature and natural phenomena, two of the three judicial exceptions to patent-eligibility. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court applied the Mayo-test to abstract ideas, the third of the three judicial exceptions.

“First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, ‘what else is there in the claims before us?’” 134 S. Ct. at 2355. In Mayo, the Supreme Court established the principle underlying eligibility as whether a claim “forecloses more future invention than the underlying discovery could reasonably justify.” 132 S. Ct. at 1301. In Alice, the Supreme Court confirmed that preemption is “the concern that drives this exclusionary principle.” 134 S. Ct. at 2354. In short, patents “that integrate the building blocks [of human ingenuity] into something more … pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.” 134 S. Ct. at 2355, citing 132 S. Ct. at 1303.

Although Alice dealt with software, Alice was not about software per se. Instead, it was about the patent-eligibility of an invention encompassing an abstract idea, regardless of whether the abstract idea is implemented in software. An example of this is Ex Parte Edward L. Palmer, Appeal 2012-003262, February 26, 2015 (2015 WL 933401), in which the PTAB upheld claims directed to “a poker game method of play” as patent-eligible under Alice.

Alice has changed the landscape for prosecutors and litigators alike. Since the decision, courts have struggled with identifying abstract ideas, as well as the “something more” required to meet part two of the test. With respect to Internet-based, software-implemented inventions, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Dec. 5, 2014) is the water-mark for patent-eligibility, while Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Nov. 14, 2014) is the water-mark for patent-ineligibility.