The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable” under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In Alice, 573 U.S. at 218, and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–78 (2012), the Supreme Court explicated a two-step test for determining whether claimed subject matter falls within one of the judicial exceptions to patent eligibility.

Two-Step Alice/Mayo Test

First, “determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 573 U.S. at 218. Mental processes are abstract ideas under Alice/Mayo step one. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011); Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).

Second, if the claims are directed to a patent-ineligible concept, “examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” Id. at 221 (internal quotation marks omitted) (quoting Mayo, 566 U.S. at 72, 80).

Abstract Idea in the Human Mind

Where the “focus of the claimed advance over the prior art” shows that “the claim's ‘character as a whole' is directed to” steps that “can be performed in the human mind, or by a human using a pen and paper” the claim is for a patent-ineligible abstract idea. Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353) (other citations omitted).

Myriad Arguments in Killian Appeal

In what Professor Crouch has called “something of a tour-de-force rejecting a large number of spurious eligibility arguments,” the Federal Circuit affirmed the rejection of claims directed to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” In re Killian, No. 2021-2113, __ F.4th __ (Fed. Cir. Aug. 23, 2022).

The Court noted that the Applicant, Mr. Killian, “raises myriad arguments on appeal” but that “[m]ost of his arguments are directed not to the specifics of the claims of the '042 application but to the corpus of § 101 jurisprudence.”

Following Alice/Mayo

Regardless of whether the Alice/Mayo framework itself was “insolubly unclear,” as Killian had argued, the Court noted it “would still be bound to follow the Supreme Court's § 101 jurisprudence as best we can as we must follow the Supreme Court's precedent unless and until it is overruled by the Supreme Court.” Furthermore, the Court noted that although there is no single, inflexible rule for the abstract idea inquiry, its prior decisions have “provided guidance as to what constitutes an abstract idea” under the Alice/Mayo framework.

At Alice/Mayo step one, the Court found that “a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving” was a patent-ineligible abstract mental process. The Court distinguished between eligible claims “directed to an improvement in the functioning of a computer,” versus ineligible claims that simply recite “generalized steps to be performed on a computer using conventional computer activity.” See In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016). And the Court noted that data gathering, analysis, and notification on generic computers operating in a “normal, expected manner” also would be ineligible. FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016); Elec. Power Grp., 830 F.3d at 1351–54.

At Alice/Mayo step two, the Court found “no inventive concept” in the Killian claims. “Stating an abstract idea while adding the words ‘apply it with a computer'” is not enough. Alice, 573 U.S. at 223. Here, the claims merely require comparing information against eligibility requirements—the same process that humans seeking to determine benefit eligibility must follow either with or without a computer. See FairWarning¸ 839 F.3d at 1095.

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