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Abstract

Mayo v. Prometheus and Alice v. CLS are landmark Supreme Court decisions which respectively introduced and then instituted a new, two-step patent-eligibility test. Step One tests the patent claims for abstractness, while Step Two tests for inventive application. This new test was so demanding that in the one-year period after Alice was decided, over 80 percent of all challenged patents had one or more claims invalidated. In fact, at the Federal Circuit over the same time period, only one recorded case of a successful Alice defense exists—DDR Holdings v. Hotels.com. This note explains DDR’s success as an inconsistency in the Federal Circuit’s application of Alice, and also as the first time that the Federal Circuit placed greater emphasis on the claim steps “as an ordered combination” than individually under Alice Step Two. To resolve this inconsistency with the Federal Circuit’s other decisions, a possible resolution is proposed which takes into account the “unexpected effects” uniquely present in DDR’s ordered combination of steps. The logical implication of DDR is that claims may be saved from invalidation if the individual steps are unconventional, or if the steps as an ordered combination produce “unexpected effects.” A four-box matrix is presented to visually represent the realm of logical possibilities when the conventionality of the individual steps is squared off against the expectedness of the effects of the ordered combination of steps. This note also briefly explores the 19th century historical underpinnings of the two-part abstractness and inventive concept test, and shows how the concept of abstractness evolved over a trilogy of Supreme Court cases in the 20th century. It brings to light and questions the Mayo Court’s unreasoned decision to select—and the Alice Court’s blind decision to endorse—Flook’s “inventive application” abstractness standard, when before Mayo, there existed at least four distinct patent-eligibility standards (arranged in ascending order of exigency)— practical application (Le Roy v. Tatham); scope-limited practical application (Gottschalk v. Benson); process application (Diamond v. Diehr); and inventive application (Parker v. Flook). The Court’s decision is especially questionable because it was Diehr’s “process application” standard that was latest-in-time, and because Diehr had explicitly denounced Flook’s “inventive application” standard.

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