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Overview of Section 101 Patent Cases Decided After Alice V

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Overview of Section 101 Patent Cases Decided After Alice V CHART OF POST-ALICE CASES (as of March 1, 2019) OVERVIEW PAGE I. CLAIMS INELIGIBLE UNDER ALICE ........................................................................................................................................... 2 A. Software/Tech Patents (359 total) 1. Federal Circuit Decisions (52 total) ....................................................................................................................................2 2. District Court Decisions (307 total) ..................................................................................................................................24 B. Biotechnology/Life Sciences Patents (37 total) 1. Federal Circuit Decisions (6 total) .....................................................................................................................................86 2. District Court Decisions (31 total) .....................................................................................................................................90 II. CLAIMS ELIGIBLE UNDER ALICE ............................................................................................................................................ 99 A. Software/Tech Patents (170 total) 1. Federal Circuit Decisions (13 total) ...................................................................................................................................99 2. District Court Decisions (157) .........................................................................................................................................105 B. Biotechnology/Life Sciences Patents (27 total) 1. Federal Circuit Decisions (3 total) ...................................................................................................................................147 2. District Court Decisions (24 total) ...................................................................................................................................150 III. ALICE DETERMINATION PREMATURE .............................................................................................................................. 157 A. Software/Tech Patents (97 total) 1. Federal Circuit Decisions (2 total) ...................................................................................................................................157 2. District Court Decisions (95 total) ...................................................................................................................................159 B. Biotechnology/Life Sciences Patents (15 total)…………………………………………………………………………….178 IV. COVERED BUSINESS METHOD REVIEW FINAL DECISIONS AFTER ALICE (113 total) .......................................... 182 V. FEDERAL CIRCUIT DECISIONS ON CBM REVIEW FINAL WRITTEN DECISIONS (13 total) ................................... 200 GIBSON, DUNN & CRUTCHER LLP I. CLAIMS INELIGIBLE UNDER ALICE1 A. Software/Tech Patents 1. Federal Circuit Decisions CASE DATE PETITION FOR PETITION FOR HOLDING REHEARING WRIT OF EN BANC CERTIORARI Digitech Image Techs., 07/11/2014 No petition No petition Affirming the district court’s grant of summary LLC v. Elecs. For found found judgment on the basis that the asserted device profile Imaging, Inc., 758 F.3d patent claims were ineligible. Held that a “device 1344 (Fed. Cir. 2014) profile” within a digital image processing system “is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter. I/P Engine, Inc. v. AOL 08/15/2014 12/15/2014 10/05/2015 The majority opinion held that the asserted claims, Inc., 576 F. App’x 982 (denied) (denied) which related to a method of filtering Internet search (Fed. Cir. 2014) (non- results, were invalid as obvious. The majority did not precedential) address the issue of eligibility. However, Judge Mayer wrote in his concurrence that he would have also held that the claims were ineligible. Planet Bingo, LLC v. 08/26/2014 No petition No petition Affirming the district court’s grant of summary VKGS, LLC, 576 F. found found judgment on the basis that the asserted claims reciting App’x 1005 (Fed. Cir. “computer-aided methods and systems for managing 2014) (non-precedential) the game of bingo” were ineligible. Held that the claims were directed to the abstract idea of managing/playing a game of bingo, with no inventive concept. 1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (June 19, 2014). GIBSON, DUNN & CRUTCHER LLP 2 CASE DATE PETITION FOR PETITION FOR HOLDING REHEARING WRIT OF EN BANC CERTIORARI buySAFE, Inc. v. Google, 09/03/2014 No petition No petition Affirming the district court’s grant of judgment on the Inc., 765 F.3d 1350 (Fed. found found pleadings on the basis that the asserted claims, which Cir. 2014) recited “methods and machine-readable media encoded to perform steps for guaranteeing a party's performance of its online transaction,” were ineligible. Held that the claims were directed to the abstract idea of a “transaction performance guaranty,” with no inventive concept. Ultramercial, Inc. v. 11/14/2014 02/20/2015 06/30/2015 Affirming the district court’s grant of dismissal on the Hulu, LLC, 772 F.3d 709 (denied) (denied) basis that the asserted claims, which recited a method (Fed. Cir. 2014) of distributing copyrighted materials over the Internet, were ineligible. Held that the claims were directed to the abstract idea of showing an advertisement before delivering free content. Further held that the recitation of “conventional steps, specified at a high level of generality, which is insufficient to supply an ‘inventive concept’” necessary to confer eligibility. Content Extraction & 12/23/2014 03/12/2015 10/05/2015 Affirming the district court’s grant of dismissal on the Transmission LLC v. (denied) (denied) basis that the asserted claims, which recited a method Wells Fargo Bank, Nat. of extracting data from hard copy documents using a Ass'n, 776 F.3d 1343 scanner, recognizing information, and storing the (Fed. Cir. 2014) information, were ineligible. Held that the claims were directed to the abstract idea of “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. Held that the claims did not have an inventive concept because the “use of a scanner or other digitizing device to extract data from a document was well-known at the GIBSON, DUNN & CRUTCHER LLP 3 CASE DATE PETITION FOR PETITION FOR HOLDING REHEARING WRIT OF EN BANC CERTIORARI time of filing, as was the ability of computers to translate the shapes of a physical page into typeface characters.” Allvoice Developments 05/22/2015 07/27/2015 12/14/2015 Affirming the district court’s grant of summary US, LLC v. Microsoft (denied) (denied) judgment on the basis that the asserted speech Corp., 612 F. App’x recognition product patent claims were ineligible. Held 1009 (Fed. Cir. 2015) that the claims merely recited “software instructions (non-precedential) without any hardware limitations.” OIP Technologies, Inc. v. 06/11/2015 08/13/2015 12/14/2015 Affirming the district court’s grant of dismissal on the Amazon.com, Inc., 788 (denied) (denied) basis that the asserted claims, which related to a price- F.3d 1359 (Fed. Cir. optimization method, were ineligible. Held that the 2015) claims were directed to the abstract concept of offer- based price optimization, with no inventive concept. Judge Mayer concurred, supporting the district court’s Section 101 determination on a motion to dismiss. Internet Patents Corp. v. 06/23/2015 No petition No petition Affirming the grant of dismissal of claims as ineligible, Active Network, Inc., 790 found found finding that they were directed to the abstract idea of F.3d 1343 (Fed. Cir. retaining information in the navigation of online forms, 2015) with no inventive concept. Also stated that “pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103 as applied to the particular case.” GIBSON, DUNN & CRUTCHER LLP 4 CASE DATE PETITION FOR PETITION FOR HOLDING REHEARING WRIT OF EN BANC CERTIORARI Intellectual Ventures I 07/06/2015 No petition No petition Affirming the district court’s grant of summary LLC v. Capital One Bank found found judgment on the basis that the asserted claims were (USA), 792 F.3d 1363 ineligible. Held that certain claims were directed to the (Fed. Cir. 2015) abstract idea of tracking financial transactions to determine whether they exceed a pre-set spending limit, with no inventive concept. Held that certain other claims were directed to the abstract idea of tailoring information on a website based on the time of day of viewing, with no inventive concept. The opinion limited the holding of DDR Holdings, stating that DDR Holdings only stated that the claims at issue were eligible because they “(1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement.” Vehicle Intelligence & 12/28/2015 No petition 05/31/2016 Affirming the district court’s grant of judgment on the Safety LLC v. Mercedes- found (denied) pleadings on the basis that claims directed to testing Benz USA, LLC, 635 F. vehicle operator for impairment (i.e., intoxication), and App’x 914 (Fed. Cir. then taking control of the vehicle if impairment is 2015) (non-precedential) detected, were ineligible. Held that the claims were directed to the abstract idea of testing operators of any kind
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