Christopher Primbas, et al. v. Andrei Iancu, Director, United States Patent and Trademark Office

This Court has indicated that a patent claim involving an abstract idea is still patent eligible if it contains “an ‘inventive concept’— i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014). This Court has evaluated whether a claim involving an abstract idea contains an “inventive concept in its application” based on whether, “once that [idea] is assumed to be within the prior art, the [claim], considered as a whole, contains no patentable invention.” Parker v. Flook, 437 U.S. 584, 594 (1978). In sharp contrast to this Court’s past precedent, here, the Patent Office held a claim ineligible as directed to an identified idea despite having determined that the claim recites a combination of steps that is inventive over that idea. The Office did so based on explicitly refusing to consider “particulars as to how” the idea is implemented. Pet. App. 7a. The question presented is: Whether recitation in a patent claim of a combination of steps determined to be inventive over an idea is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.