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28 Fordham Intell. Prop. Media & Ent. L.J. 109
Note by Matthew B. Hershkowitz*
he Information Age exposed the U.S. patent system to patentable subject matter that it had never considered before. In particular, software tested the courts’ understanding of patentable subject matter under section 101 of title 35 of the U.S. Code. The Supreme Court grappled with this issue in its Alice Corp. v. CLS Bank International decision, which greatly affected the patentability of software. However, the Supreme Court did not define the precise contours of patentable subject matter in Alice, and as a result, the Federal Circuit has wrestled with its meaning ever since. This Note discusses the approaches Federal Circuit judges apply to determine whether a patent claims patentable subject matter. It begins by providing background regarding patents, patent litigation, the Supreme Court’s patentable subject matter cases prior to Alice, and then the Alice decision and its effect. It then examines the Federal Circuit’s post-Alice decisions implementing the two-step test Alice applied. The test first asks whether the claimed invention is directed to an abstract idea and then, if it is, whether the claimed invention contains an inventive concept. Federal Circuit judges have considered different aspects of the claimed invention in making these two determinations. As such, this Note analyzes the Federal Circuit judges’ decisions and discerns trends in their approaches. Relying on these patterns, this Note next suggests to litigators how to better argue the patentability of software before the Federal Circuit. Furthermore, this Note posits that the Federal Circuit judges who implement different consistent approaches in essence ask the same question, and that the judges who do not implement a consistent approach will likely fall in line with the judges who apply consistent approaches. Finally, this Note predicts that the Federal Circuit will continue to expand the definition of patentable subject matter under Alice.
*Managing Editor, Fordham Intellectual Property, Media & Entertainment Law Journal, Volume XXVIII; J.D. Candidate, Fordham University School of Law, 2018; B.S. Mechanical Engineering, Lehigh University, 2014. I would like to thank Professor Janet Freilich for her guidance and feedback through developing this Note, and the IPLJ Editorial Board and staff for their hard work throughout the editorial process, especially E. Alex Kirk and Jillian Roffer.