Bonum Certa Men Certa

In the United States, Software Patents Are Still Consistently Invalidated Under 35 U.S.C. €§ 101

No entry sign



Summary: A look at some of the latest decisions, rants, and frustration expressed by the patent microcosm over the elimination of many software patents in the United States (US)

PATENT certainty matters. Consistency across judgments matters. Predictability matters. If all those software patents perish in courts, will their holders bother asserting anymore (i.e. suing)? The patent litigation numbers are already down and they go down every year. Ever since Alice we are seeing an encouraging pattern; the US Supreme Court objects to revisiting the matter and the Court of Appeals for the Federal Circuit (CAFC) gets more hostile towards software patents each year. This shapes so-called 'caselaw' in a favourable fashion because software patents are ebbing away.



Most of the articles and tweets we find are rants about Alice and/or promotion of software patents, courtesy of people who never developed any software in their entire lifetime. It's almost amusing to watch their agony; they try to attribute this loss to "software", but in reality people who actually develop software are pleased to see the demise of software patents.

"Challenges to patent eligibility under 35 U.S.C. €§ 101 have become so routine in patent litigation," says the patent microcosm, expressing the usual concern over Alice Corp. Pty. Ltd. v CLS Bank Int’l. To quote this new example:

Challenges to patent eligibility under 35 U.S.C. €§ 101 have become so routine in patent litigation that it is easy to overlook the opinions that seem to issue almost daily from the district courts and, less frequently, from the Federal Circuit. If one were to judge solely by the tenor of recent cert petitions filed with the Supreme Court, however, one would likely conclude that the lower courts are still fundamentally confused as to how to properly apply the Supreme Court’s two-step analysis for ineligible “abstract ideas” set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). For example, an amicus brief in support of a cert petition in Recognicorp, LLC v. Nintendo, No. 17-645 (denied, Jan. 8, 2018) argues that, at least in the context of data processing patents, “[t]he lower courts and the PTO have misunderstood the Mayo-Alice test and have created indeterminate and overly restrictive patent eligibility doctrine under Section 101.” Other recent petitions in which cert was denied have taken the lower courts to task for either improperly looking beyond the claims to assess patent eligibility or, to the other extreme, looking only at the claims. This is not to mention the argument that eligibility is not a cognizable defense at all in patent litigation, an issue also denied certiorari by the Supreme Court last year.


That last sentence is correct. The US Supreme Court isn't interested in throwing a lifeline to patent lawyers. The Justices at the US Supreme Court, at least as far as patents are concerned, have been doing the right thing. That cannot be said about all sorts of other domains (copyright law for example), but recently we have been feeling like we have an 'ally' in the highest US court. The Justices often rule unanimously against the maximalists. They overturn CAFC almost every time.

Looking at the reactions from self-described advocates of software patents, we still find words such as "kill" (war narrative); it's almost as if, at least to these people, strict judges or examiners are murderers. How about this: "Cleveland Clinic's Petition for Cert. Challenging 101/Mayo Kill of Cardiovascular Disease Detection Tests..."

It's quite likely that this so-called 'kill' will actually help save lives by denying a monopoly on detection of heart problems. Here's another one: "Search Engine Optimization Patents Held Patent Ineligible under 101/Alice..."

So another one bites the dust, as usual. We aren't even skipping any of the decisions that are inconvenient to us! Alice and Mayo are having the intended effect.

It certainly sounds like Nike now uses a bogus software patent to taunt small rivals. To quote a report about a lawsuit filed last Saturday:

Sports brand Nike is being sued for patent infringement over an app that tracks users’ fitness.

US-based Personal Beasties Group (PDG) alleged that Nike infringes on US patent number 6,769,915, in a case filed at the US District Court for the Southern District of New York on Saturday, January 20.

The patent, known as the “Interactive system for personal life patterns”, covers an app developed by PDG that helps track the fitness goals and achievements of the user.


Just use 35 U.S.C. €§ 101. That might eliminate this patent altogether. Without looking at the pertinent details, it sounds like a software-only surveillance patent. Many such patents have already been invalidated; we can recall some.

There are obvious cases where €§ 101 is brought up inappropriately -- cases where Alice and Mayo are simply inapplicable. But just because the €§ 101 challenge does not pass muster doesn't necessarily mean it has been defeated; it may simply mean poor defense strategy. Consider this coverage of a district court case: (Free Stream Media Corp. v Alphonso Inc.)

In a recent decision from the U.S. District Court Northern District of California, involving Free Stream Media Corp. v. Alphonso Inc., claims of a television system patent survived a motion to dismiss under 35 U.S.C. €§ 101.

[...]

Samba relied heavily on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which supports the notion that a dividing line can be drawn between patents which merely describe using a computer and/or the internet to carry out pre-existing and well-known tasks and techniques, and those that relate to the functioning of computers themselves (e.g., specific asserted improvement in computer capabilities). The former will virtually always fail under Alice unless some "inventive concept" can be found in the second step of the analysis; the latter are substantially less easily characterized as merely abstract ideas.


So Alice was attempted unsuccessfully; the case can probably be appealed/brought to CAFC. Maybe try another legal strategy this time around. We were dumbfounded to see this other new case where €§ 101 did not work. It's just hard to understand why €§ 101 was even invoked in this context (against patents on night vision):

The court denied defendant's motion to dismiss on the ground that plaintiff’s night vision patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea.


Seems to make sense.

Here, by contrast, is a new district court case (VOIT) which shows software patents crushed; they are hard to get and then also defend in US courts. Alice is cited:

Patent claims directed to “buying and selling an item relating to unique subjects” were held patent-ineligible under the Alice abstract idea test and 35 USC €§ 101 in VOIT Technologies, LLC v. Del-Ton, Inc., No. 5:17-CV-259-BO, (E.D. N.C. Jan. 10, 2018). The court therefore granted a motion to dismiss under FRCP 12(b)(6). Among the interesting aspects of this case are that U.S. Patent No. 6,226,412 includes a 330 word independent claim, and that claim includes a lot of technical terminology relating to storing and processing text and image data. Neither of these things saved the claim from Alice.

The ’412 patent is directed to “secure interactive communication of text and image information between a central server computer and one or more client computers located at remote sites for the purpose of storing and retrieving files describing unique products, services or individuals.” Claim 1, reproduced at the bottom of this post, recites numerous steps for achieving this secure interactive communication relating to unique products.


No matter how hard they try to defend software patents (or abstract patents), they almost always fail. Why would they even assure clients that such patents are worth pursuing in the first place? Or such lawsuits?

Charles Bieneman, like many in his profession, looks for new ways to bamboozle software developers with advocacy of post-Alice software patents. Here is what he wrote some days ago:

Perhaps the single most useful resource summarizing the law of patent-eligibility under the Alice abstract idea test is this chart of Federal Circuit cases under 35 U.S.C. €§ 101, found on the USPTO’s very helpful web page providing guidance on analyzing claims for patent-eligible subject matter. This blog has previously covered the USPTO’s guidance on patent-eligibility; I am discussing it again to note that the afore-mentioned chart of patent-eligibility case was updated on January 4. If you are responding to – and especially if you are appealing – a rejection under the Alice abstract idea test, this chart is the place to start.

[...]

A recent post on the PatentlyO blog, quoting a PTAB decision to the effect that the USPTO is not required to provide facts supporting patent-eligibility rejections, further drives home the reality. As the Federal Circuit has explained in many cases (see, e.g. OIP Techs., Inc. v. Amazon.com, a 2015 case holding claims directed to price optimization patent-ineligible), patent-eligibility is a question of law. In practice, this means that it is like interpreting or construing claims – every adjudicator, from patent examiners up to the US Supreme Court, gets to look at it anew. Every adjudicator can apply his or her own gloss, a nightmare for patent applicants, patent owners, and potential infringers alike.


Watch how they resort to PTAB-bashing -- a subject we shall cover later in the weekend. PTAB too is enforcing €§ 101, so even patent holders that sue nobody may see their already-granted patents invalidated.

Is the following good news? "PTAB Reversed Examiner on 101 Rejection of SAP Claims for Modeling Service Endpoints of Process Based on BPMN," wrote a patent maximalist. So basically, this is not a granted patent, there is no lawsuit, and PTAB basically said OK to one single patent (for now, it can be squashed even in the lowest of patent courts later on).

A patent troll from Dominion Harbor responded with: "A good day, but a little sad that this is what we're reduced to celebrating..."

It's actually somewhat hilarious.

The maximalist then responded: "So true. I bit more good news with the PTAB reversing an examiner on 101 in an SAP application. This does not happen very often."

In other words, PTAB very often rejects patents that examiners decided to accept.

In a sense, anyone can sense the frustration there. They really struggle to find any "good news" (for them).

Here comes €§ 103 to invalidate a Microsoft patent (well, application that nearly got granted). "PTAB Reversed Examiner on 101/Alice Rejection of Microsoft Patent Application but Affirmed Examiner on 103 Rejection," he wrote.

Then came more PTAB bashing from a person connected to the above patent troll (Dominion Harbor). "Patent practitioners BEWARE," he shouted, then taking note of someone who lost a rehearing at PTAB (on €§ 101). Here's another rant (with ALL CAPS) about €§ 101 invalidations ("crazy rejections under €§101 continue," he later added). Here's another ALL CAPS and a rant about PTAB invalidation. He said that "the definition of the "abstract" idea takes up almost a whole paragraph" as if the length of that somehow voids the decision.

The above are just some among many tweets that highlight the tough time trolls and law firms are having (they're connected to each other). €§ 101 in particular drives them crazy. Then there's also €§ 102, which was mentioned in another context 5 days ago.

Rule 130 declarations are the mechanism by which applicants can invoke many of the prior art exceptions embodied in the AIA version of 35 USC €§ 102(b)...


So we've seen how €§ 101, €§ 102 and €§ 103 generally raise the bar, if not at the patent office, then at PTAB or the courts. No wonder the number of lawsuits in the US has nosedived. In Texas it fell by more than half.

Recent Techrights' Posts

European Patent Office (EPO) Series: London Calling...
EPO Vice-President in charge of the "Patent Granting Process" is likely to have been a pay-off for the support which the UK gave to Campinos in 2017
Faking Productivity With Slop and Wasting Money on Faking 'Productivity': A Microsoft Story
If the quality of everything at Microsoft goes down
Wikipedia - Like Some Free Software Projects Infiltrated and Bribed - Bans Its Own Founder
Over the years we've named (not shamed) some projects and organisations that got corrupted by money and ended up banning their own founders
The “Aktion T4” at the European Patent Office (EPO) Saves Money for the President's Own Purse
Call for parents of children with special needs
 
Don the Con Meets the Conman From IBM, Shares of IBM Continue Sliding Some More
The "Quantum" hype did not last long [...] PIPs are the new layoffs
Retaliatory Whistleblowing Expected at Microsoft During or After the Mass Layoffs
Retaliatory behaviour by Microsoft will backfire
Gemini Links 24/06/2026: Heatwave, Steam Next Fest, and Year of Buying Guitar Pedals
Links for the day
Links 24/06/2026: China Tops "TOP500", Impact of Microsoft’s Massive Layoffs Extends Further, Internet Society's Community Snapshot
Links for the day
While Thousands at IBM Lose Their Jobs ("Silent Layoffs") IBM's CEO Goes Begging the Dictator for Bailouts, Based on Deliberate Lies About "Quantum"
Many who claim to be retiring are only in their 40s and 50s. They're too proud to publicly admit what IBM did to them.
IBM Sends Workers 'Packing', Sometimes With the "Low Performer" Label That Imperils Their Future
To many people out there, IBM correlates with deceit
Links 24/06/2026: Four-Day Workweeks, GM Cut 1,000 Workers at Its EV Plant, 21,000+ Oracle Layoffs
Links for the day
A Step in the Right Direction (EU) in the Fight Against LLM Slop From GAFAM (US)
We've already mentioned this in Daily Links, but let's discuss this a little further
SLAPP Censorship - Part 117 Out of 200: Libel Tourism or Defamation Forum-Shopping in the United Kingdom Condemned by the European Union (EU)
Last week we reminded readers that the EU had criticised UK defamation law
Demonstration Next Week at the European Patent Office (EPO), Administrative Council Seen as Complicit
Corruption in Europe hurts all of us
IBM is Now Hinged on False Accounting and False Promises
This is the legacy of the current CEO
"PARTNER CONTENT" or 'Content Farms' That Promote Slop and Misinformation (The Register MS)
The Register MS represents a big part of the problem we all face
Turn Off the Slop, It's Wasting Energy and Destroying the Planet (the Only Planet We Have)
Right now we see lots of headlines about energy shortages and drained-up reserves
Lessons From Almost 30 Years of Site-Building Activities
We still strive to become faster and lighter
Do Not Outsource (the Seductive Mirage)
Abandoning so-called 'conventional wisdom'
Media Complicit in IBM Fraud Meant to Prop Up the Share Price Based on Lies, Fabrications
Even IBM insiders are fuming at this
In Some Countries, Windows Has Lost Its Monopoly
Windows fell to an all-time low globally this month
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Tuesday, June 23, 2026
IRC logs for Tuesday, June 23, 2026
Gemini Links 24/06/2026: Motivation, PostScript Printer, and Why Hyperscalers and the Smolnet are Compatible
Links for the day
The Media's "Satya Says" Syndrome Distracts From Grim Reality
how insiders see Microsoft slop
Oracle's Collapse Has Nothing to do With Slop, It's About Its Debt Exploding by Almost 50% in Just 12 Months
How are people meant to trust the media?
SLAPP Censorship - Part 116 Out of 200: 5 Years of Multiparty Lawfare Against Techrights, Funded by Americans and Also by Third Parties (Including Microsoft Salaries)
The public and our government will be informed in full
Now... a Word From Our Sponsor
Powerade
Links 23/06/2026: Microsoft Studio Closures and Journalism Subjected to Further Cuts
Links for the day
Gemini Links 23/06/2026: Gardens, Basketball, Blocking Hyperscaler, and New Commodore Phone
Links for the day
Links 23/06/2026: Apple Price Hikes and Technical Debt in Slop
Links for the day
After IBM's Shares Collapsed the CEO is Trying the "Quantum" Trick Again, Bolstered by a Demented Dictator in the White House
from what we can gather IBM's CEO is trying to get the US government to participate in the scam
Greece Ought to Curb the Threat of Social Control Media
its national discourse seems to be run by an American company called Facebook
State of the GNU/Linux Desktop (and Laptop)
The time to advocate GNU/Linux is now
The 'XBox Narrative' Distracts From Destructive Cuts Across the Whole of Microsoft
Microsoft is preparing to lay off a likely record-breaking number of people [...] this isn't just an XBox problem
SLAPP Censorship - Part 115 Out of 200: Spending the Next Decade Writing About SLAPPs and Trying to Fix the System
It's the same industry that got paid by corrupt EPO officials to try to cover up the corruption
Microsoft's Stock Fell Nearly $200, But the Real Problems Are Just About to Begin
if they dump slop, what will they tell shareholders?
The Cyber Show on Starmer and Software Freedom
The Cyber Show's Andy has just explained why our departing national leader wasn't all bad
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Monday, June 22, 2026
IRC logs for Monday, June 22, 2026
Gemini Links 23/06/2026: Girlrotting, Homeworlds at BGA, Slop Ruins Sites
Links for the day
A Lifetime of Whistleblowing
Ellsberg did not have an easy life, but it was a rewarding life with a rich legacy focusing on justice
European Patent Office (EPO) Series: A Man With Many Missions...
Campinos – accompanied by Gilles Requena and Patrice Pellegrino
Links 22/06/2026: Ubisoft Co-founder Dies, Americans Have Turned Against Slop
Links for the day
Links 22/06/2026: "The Sycophancy Machine" and "Port 22 Open for 54 Days"
Links for the day
When People Who Make the Most Money Are the Best "Boot Lickers" (Sucking Up to Jeffrey Epstein's Circle and the Dictator)
Sucking up to rich people may pay off
The Aim is Not Fame
Reposted from schestowitz.com
"Internally Important, Externally Irrelevant": IBM in a Nutshell
Right now its debt spins out of control and its stock spirals down the drain
SLAPP Censorship - Part 114 Out of 200: Thousands of Long Articles to Come, Properly Covering the SLAPP Industry in the UK and Its Modus Operandi
"Stowell described SLAPPs as ‘a stain on our legal system’."
Finding a Way to Get Paid to Improve LibreJS
So now we have more people resurrecting LibreJS and improving it
Microsoft Can't Even Wait Until July, Shutdowns and Layoffs Already Happening
Mashable speak of "a grim picture for the state of Xbox."
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Sunday, June 21, 2026
IRC logs for Sunday, June 21, 2026
Gemini Links 22/06/2026: Appreciating Simple Things, Perfect Summer Evening, IRIX, Vim and so
Links for the day