Secured Mail Solutions LLC v. Universal Wilde, Inc.

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court set forth its two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2) if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. The questions presented are:

1. In determining patent-eligible subject matter within the meaning of 35 U.S.C. § 101, when a claim has been found to be directed to an abstract idea (the first part of Alice), should courts consider whether the claim substantially preempts the identified abstract idea in determining whether the claim includes an “inventive concept” (the second part of Alice)?

2. Because “[a]t some level, ‘all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas’” (.id at 2354), does the second part of Alice function as a safeguard, preventing claims that do not substantially preempt the identified abstract idea from falling victim to a misapplication of this exclusionary principle, which is often due to findings on inventiveness that are more properly addressed under 35 U.S.C. §§ 102 and 103.