Forget about whether you are a software patent lover or hater. To me, the worst thing about the current mess in the law of patent-eligibility under 35 U.S.C. § 101 is that practitioners are left unable to counsel our clients with regard to the likelihood of patent-eligibility of a vast swath of software patent claims, whether in pending patent applications, issued patents, or contemplated filings. Because I am coming to the view that the only way to understand how Mayo and Alice will be applied is by considering examples, I recommend this recent post on the PatentlyO blog, covering three recent PTAB decisions holding claims of three patent applications patent-ineligible under 35 U.S.C. § 101. Two of these three cases involved claims directed to computer-implemented inventions. Yet I suspect that those of us who have read a lot of Alice cases will not be surprised at these results. Akin to Justice Potter Stewart (in a different era and in a different context), in many cases we know patent-ineligibility when we see it.
The Mayo/Alice test may seem simple and straightforward: is there an abstract idea or law of nature without “significantly more”? Yet when faced with seemingly similar patent claims, different adjudicators applying that same simple test reach different results. The (in my view) irreconcilable results in the Ultramercial and DDR Holdings cases provide perhaps the most blatant example from many of this challenge. Nonetheless, as those of us who attended the recent AIPLA annual meeting heard repeatedly, many more patents and applications than not, when challenged under 35 U.S.C. § 101, are being extinguished. Outliers that create confusion and unpredictability –to me, the DDR case is a prime example — will continue to rear up in the courts, at the PTAB, and in various art units at the USPTO. With that said, look at the claims in the above post. If, like me, you find these three cases unsurprising, then perhaps we are coming to some measure of predictability in the law of patent-eligibility in the United States.