A little patent quiz: Can the recitation of a generic computer process transform a patent-ineligible abstract idea into a patent-eligible invention? 

If the answer to that question seemed easy, gold star for you. You’re an Alice pro. The bigger, harder question to answer, is: What exactly does that mean? How do you differentiate the mere implementation of an abstract idea on a computer from a patentable new computer program?

That is the question courts were struggling with post-Alice v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), and one the circuits are now split on. That may change with a recent petition to SCOTUS to resolve the lingering confusion and discordant post-Alice precedent over the ever-elusive “abstract idea.”

An Abstract Idea

After entry of two summary judgments finding its computer software patent ineligible as an “abstract idea” and a refusal by the Federal Circuit to resolve splits among the circuits on the issue, Broadband iTV, Inc. (“BBiTV”) said enough is enough and appealed to the high court. The “idea” at issue in BBiTV’s case was a method “for converting, navigating and displaying video content uploaded from the internet to a digital TV video-on-demand platform.” Broadband iTV, Inc. v. Hawaiian Telcom, Inc., Case No. 16-1082 (Fed. Circ. 2016). Does that sound like a mere computer implementation of an abstract idea to you? Or, are you wondering what process ever could, unequivocally? The Federal Circuit seemed to see things more clearly and found BBiTV’s method was directed to an abstract idea because it used the “same hierarchical ordering based on metadata to facilitate the display and locating of video content.” Id. And just like that, BBiTV’s patent is ineligible.

SCOTUS

In its appeal to SCOTUS, however, BBiTV does not specifically seek redress of this finding. Rather, it has posed three very specific questions to SCOTUS which highlight the stark split among the federal circuit courts on this issue and seek clarity on what procedural burdens and presumptions courts should apply when reviewing an allegedly-ineligible “abstract idea” patent:

1. Whether the statutory presumption of validity set forth in 35 U.S.C. § 282 applies to claims challenged under 35 U.S.C. § 101, as set forth by this Court in Microsoft Corp. v. i4i L.P., 564 U.S. 91 (2011).  BBiTV posed this question because while some courts have found all patents are afforded a presumption of validity under 35 U.S.C. § 282, others have held no presumption applies in a § 101 analysis.

2. Whether, unlike other areas of law involving motions for summary judgment, as set forth by Fed. R. Civ. P. 56 and Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986), a district court may resolve material underlying fact disputes against the non-movant party on a summary judgment motion for lack of patent-eligibility under § 101. BBiTV asks this question because some courts have found material issues of fact as to the conventionality of the claimed technology may preclude entry summary judgment finding invalidity under § 101.

3. Whether the judicially-created exception for “abstract ideas” broadly includes any abstraction of a claim (including novel business practices or methods of organizing human activities) or only “fundamental” and “long-standing” (i.e., pre-existing) practices and methods, as recognized by this Court in Bilski v. Kappos, 561 U.S. 593, 611 (2010) and Alice. BBiTV seeks clarity here as some courts have ignored precedent set by Bilski and Alice and confuse any abstraction of a claim with an abstract idea.

It will be interesting to see if SCOTUS takes this case, and, if so, what light they will be able to shed on this very confusing area of patent litigation. It was likely wise of BBiTV to present this to the high court not as an attempt to seek redress for what it believes was an unfavorable ruling in its own case, but to highlight the very stark splits among the courts in an area of patent law that is growing so quickly and getting muddier by the day. If you have an inclination, let us know what you think the high court will or should do with this petition.

Conclusion

However this shakes out, one element we find particularly interesting is this continually-evolving concept of a patent-ineligible “mere recitation of an abstract idea through a computer process” versus the patent-eligible “computer invention that merely involves an abstract concept.” The more this specific issue is litigated, the greater will be the need for experts specifically trained and able to speak to this issue. Call them “abstract idea” experts if you will: industry or academic leaders who can truly attest to whether a software program merely performs an act that can be done without a computer, or whether it, in fact, is a new computer invention worthy of a patent. What type of training or background would make the best “abstract idea” expert in your opinion? Industry experts familiar with the method the applicant is trying to patent—say converting or displaying video content. Or would the expert need be only a computer coding guru who could speak to the computer recitation of any method, across all industries? Pondering this and the future of computer invention patent eligibility is, at the very least, a nice abstraction.