Solutran, Inc. v. Elavon, Inc., et al.

This Court has held that laws of nature, natural phenomena, and abstract ideas are not patentable subject matter. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Alice set forth a two-step test for determining subject-matter eligibility. Step one determines whether a claimed invention is directed to a patent-eligible concept. Here, the patent-at-issue’s claims, when viewed as a whole, are directed to a patent-eligible concept— an improvement to a physical process for handling tangible, physical items (paper checks). The inventors also identified this physical-process improvement as their advance over the prior art (i.e., what they invented). In the decision below, however, the Federal Circuit did not view the claims as a whole and did not consider the inventors’ claimed advance over the prior art. Instead, the court identified a broadly stated business method underlying one of the claim’s elements as the claim’s focus and found the claim ineligible under Bilski v. Kappos, 561 U.S. 593 (2010). In so doing, the Federal Circuit ignored this Court’s instructions for analyzing subject-matter eligibility and effectively banned all business-method patents. Accordingly, the question presented is this: Does Alice’s step one require that the claims be viewed as a whole and that consideration be given to the claimed advance over the prior art?