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What is Alice?

Alice Banner

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.

Name Date Court Category Abstract Idea Something More
Visual Memory LLC v. NVIDIA Corporation 8/15/2017 Fed. Cir. None No N/A
Recognicorp, LLC v. Nintendo Co., Ltd. 4/28/2017 Fed. Cir. Mathematical Formula Yes No
Thales Visionix, Inc. v. The United States 3/8/2017 Fed. Cir. None No N/A
Apple, Inc. et al. v. Ameranth, Inc. 11/29/2016 Fed. Cir. None Yes No
Tranxition, Inc. v. Lenovo Inc. 11/16/2016 Fed. Cir. Organizing Human Activity Yes No
Amdocs (Israel) Limited v. Opennet Telecom, Inc., et al. 11/1/2016 Fed. Cir. None Undecided Yes
Synopsys, Inc. v. Mentor Graphics Corp. 10/19/2016 Fed. Cir. Organizing Human Activity Yes No
FairWarning IP, LLC v. Iatric Systems, Inc. 10/11/2016 Fed. Cir. Organizing Human Activity Yes No
MCRO, Inc. v. Bandai Namco Games America Inc., et. al. 9/13/2016 Fed. Cir. Organizing Human Behavior No N/A
Vanda Pharmaceuticals Inc. et al. v. Roxane Laboratories, Inc. 8/25/2016 D. Del. None Yes Yes
In the Matter of: Certain Activity Tracking Devices, Systems, and Components Thereof (Fitbit v. Jawbone) 8/9/2016 ITC None Yes No
Core Wireless Licensing SARLl v. LG Electronics, Inc. et al 8/8/2016 E.D. Tex. None No N/A
Electric Power Group, LLC v. Alstom S.A. 8/1/2016 Fed. Cir. Organizing Human Activity Yes No
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, AT&T Corp. 6/27/2016 Fed. Cir. Organizing Human Activity Yes Yes
Enfish, LLC v. Microsoft Corporation, et al. 5/12/2016 Fed. Cir. None No N/A
Avago Technologies General IP (Singapore) PTE Ltd. v. Asustek Computer, Inc., et al. 4/25/2016 N.D. Cal. None No N/A
Intellectual Ventures I LLC, v. Ricoh Americas Corporation and Ricoh Electronics, Inc. 3/22/2016 D. Del. None No Yes
Motorola Mobility, LLC. v. Intellectual Ventures I, LLC. 3/21/2016 PTAB None Yes No
Core Wireless Licensing v. LG Electronics, Inc. 3/20/2016 E.D. Tex. None No Yes
ContourMed Inc. v. American Breast Care L.P. 3/17/2016 S.D. Tex. None No N/A
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