More Insight into Allowable Claims Under Alice

Over the past few years, we have written on the evolving rulings relative to patentability of business methods, beginning with the Alice case at the U.S. Supreme Court. Since then, several court cases have led to improved understanding of what might or might not qualify for patentability, and we have written about several of these cases and provided guidance, such as in preparation of patent applications.

Another recent case provides additional guidance. In BSG Tech LLC v. Buyseasons, Inc., the U.S. Court of Appeals for the Federal Circuit considered patentability of a self-referential database and concluded it was not patentable under the Alice line of cases, but the reasoning provided insight into patent preparation.

The case involved a dispute over three granted patents, which had been licensed many times over. The patent holder made several arguments regarding patentability, which all fell on deaf ears. The first argument related to the use of a database with slightly more structural detail than that of a generic database, and the Court held that (1) the specification itself indicates that such a database was not novel and (2) the limited detail in the recitation was insufficient for patentability. The Court further held that applying an abstract idea in a narrow way is not a patent-eligible concept.

The next argument was related to the broad use of the term “summary comparison usage information,” which was not defined in any narrow way. The Court held that such a broadly undefined term encompasses “any information,” which brings the claims into the realm of an abstract idea, which is not patentable under Alice.

The final argument related to an improvement in the retrieval of relevant records for users, and the patent holder relied on previous cases where patentability was allowed because of improved storage and access for databases. In this situation, however, the Court found no connection between the claims and database functionality.

This case stands for the importance of detail in the specification. Previously, we have written about the importance of detail in specifications and this case shows that detail can take an invention out of the unpatentable “abstract idea” space to something patentable. In this case, because the specification was lacking in detail, the patent holder was left arguing broadly, which the Court found to be no more than an abstract idea. Consequentially, it is important to provide as much detail as possible in a patent application – provide examples and specific uses to be able to demonstrate that a solution can be specific to a use or a configuration.