By Michael Borella --
The last 11 years have taught us much about the Federal Circuit; namely, that a majority of the judges simply do not seem to appreciate software. Given the statements that several have made in opinions, one might be able to go as far as saying that some of these judges appear to fundamentally misunderstand how software is developed and works in practice.
Like creeping autocracy, those of us subject to their rule have watched the gradual erosion of what types of inventions are eligible for patenting under 35 U.S.C. § 101. Initially, business methods were found largely ineligible, then software executable on a general purpose computer, then software executable on any platform, and then non-software inventions as well. The consequences of the subjectivity the Court has engendered include a highly unpredictable examination process at the U.S. Patent and Trademark Office and that the validity of any invention under § 101 can be challenged with a straight face.
The vast majority of those in the patent legal community are aware of this slow-moving coup, and their reactions vary from disapproving frowns to recoiling in shock. The few voices in favor of the status quo include non-practitioners from academia and those who financially benefit from things remaining the way they are. The piecemeal nature of this death by 1000 cuts results in absurd rulings occurring before the legal community is generally aware that the velociraptors were testing the fences. And by then, mechanisms for reversing course are compromised.
To put some numbers to the situation, we considered all substantive § 101 decisions that came down from the Federal Circuit in 2024.
We considered 23 cases, of which only 2 involve claims that were found eligible. Thus, the Federal Circuit determined that claims were not eligible an astounding 91.3% of the time. To be fair, one of the cases in which claims remained eligible -- EcoFactor, Inc. v. Google LLC -- was decided on procedural grounds. Thus its inclusion in this list is for purposes of completeness. Recalculating with this case removed results in a 95.5% invalidity rate.
The fact that the Federal Circuit is a brutal venue for patentees with § 101 challenges should come as no surprise. The Court has been willing to view the exceptions of Alice v. CLS Bank Int'l expansively for years. Despite the Supreme Court's warning to "tread carefully in construing this exclusionary principle lest it swallow all of patent law," said law is now curled up like the mythical ouroborous worm.
Put in context, between 2021 and 2023, the USPTO's Patent Trial and Appeal Board (PTAB) affirmed examiner's § 101 decisions about 90% of the time. Thus, the appeals process for § 101 offers scant hope that patents survive.
But it is instructive to take a deeper dive into the one case where the Federal Circuit substantively reviewed the claims and found them eligible. Claim 11 of Contour IP Holding LLC v. GoPro, Inc. recites:
11. A portable, point of view digital video camera, comprising:
a lens;
an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene;
a wireless connection protocol device configured to send real time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and
a camera processor configured to:
receive the video image data directly or indirectly from the image sensor, generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,
cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera, and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,
receive the control signals from the personal portable computing device, and
adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.
Here, the Court found that "when read as a whole, claim 11 is directed to a specific means that improves the relevant technology . . . an improved POV camera through its combination of claim limitations and requirement that the claimed POV camera processor be configured to record low- and high-quality data streams in parallel, followed by the low-quality data stream's wireless transfer to a remote device." According to the Court, "[t]he claims thus require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera's recordings on a remote device."
Notably, the District Court construed the claim term "generate" to require parallel recording of video streams. Apparently, this led the Federal Circuit to find that the claim language was sufficiently specific. The Court also looked to the specification to find that it "discloses improving POV camera technology through specific means of generating high- and low-quality video streams in parallel and transferring a low-quality video stream to a remote device, and the claims reflect this improvement."
Accordingly, the claim is not directed to an abstract idea, and the Court did not need to opine on whether it included an inventive concept.
Ultimately, this decision remains frustrating, as it does not clearly delineate what level of detail is required for a software-based claim to be patent eligible. The claim certainly had a few factors going for it, including that it was reasonably narrow, directed to a physical device, benefited from a claim construction that invoked a technical improvement, and that the claim’s technical improvement was described as such in the specification. A sampling of the other cases in the above table finds that the majority involve claims that are directed to business methods operating on general purpose computers, include eligibility arguments not supported by the claim language, omit describing the alleged technical improvement in the specification, and/or exhibit claim language that is outcome oriented.
These distinctions reinforce what has become the norm in modern patent drafting -- submit claims that are not overly broad or vague, explicitly recite a technical improvement not believed to be in the prior art, and describe how the technical improvement solves a technical problem. Even by doing all of this, a determination of patent eligibility is not guaranteed in the presence of such an uncertain test, but it may push the odds in the applicant's favor.
Indeed, all patent applications are now being prosecuted with bated breath, because a poor prosecutor never knows what fate awaits them when prosecuting an application.
On the other hand, an Examiner can get a case off their desk by simply rejecting under 101 based on Alice.
Posted by: Shamim Halim | June 16, 2025 at 06:22 PM