Oasis Tooling, Inc. v. Siemens Industry Software Inc., et al.

The Patent Act provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter” may obtain a patent. 35 U.S.C. § 101 (emphasis added). In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), this Court held that claims directed to “abstract ideas” are not patentable but did not define the boundaries of that exception to § 101. The United States Court of Appeals for the Federal Circuit has struggled to apply this exception in the context of computer-based inventions, which are a critical segment of innovation and research today. One line of cases holds that inventions that improve formerly mental processes, such as recognizing security threats or animating cartoons, are patentable when they are based on a new and improved technological process that is distinct from conventional approaches. A second line of cases, however, holds that, no matter how new or useful a computer-based invention is, it is necessarily ineligible for patenting as abstract if it is directed to a task that people used to perform manually. The question presented is: Whether a specific, multi-step computerimplemented process is patent eligible under 35 U.S.C. § 101 when it performs a task in a way fundamentally different from how people previously did it—or whether such a claim is necessarily directed to an unpatentable abstract idea merely because a person could perform a similar task through a different and inferior mental process.