Defendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an oversimplification that doesn’t accurately articulate what the claims are actually directed to. This was precisely the government’s error in Thales Visionix Inc. v. United States (Fed. Cir. 2017), where the Federal Circuit found, contrary to the government’s characterization of the claims (which the Claims Court adopted), the asserted claims were not directed to an abstract idea.
As discussed in the latest memorandum, the Federal Circuit in McRO held that the claims at issue are patent eligible under 35 USC § 101 because they are not directed to an abstract idea under the first prong of the two-part Alice test. Under Alice, all claims having an abstract idea are analyzed in two steps:
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