Morris Reese v. Sprint Nextel Corporation, et al.

In both Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), this Court adopted a two-step framework for determining whether an invention is eligible for patent protection under 35 U.S.C. § 101. Both steps are reserved for the court. First, the court determines “whether the claims at issue are directed to one of [the] patent-ineligible concepts,” excepted from patent eligibility, i.e., laws of nature, natural phenomena, and abstract ideas. Alice, 134 S. Ct. at 2355. Neither this Court nor the Federal Circuit has set forth a standard for determining whether an invention is directed toward an abstract idea. See, e.g., Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019) (stating that the Alice inquiry lacks “precise contours” with respect to abstractness). Second, the court determines whether “additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1291). In this case, the Federal Circuit failed to correctly apply step one. Instead, the Federal Circuit found the asserted claims to be directed to an abstract idea because they consist of generic and conventional elements that fail to convert the abstract idea. Panel Op. at 11a. The Federal Circuit’s judgment conflates the two distinct steps of the Alice inquiry and imports the factual analysis underlying the anticipation and obviousness determinations under §§ 102 and 103.