COMMENTS OF THE ELECTRONIC FRONTIER FOUNDATION REGARDING
2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY
Docket No. PTO–P–2014–0058
The Electronic Frontier Foundation (“EFF”) is grateful for this opportunity to respond to
the request by the United States Patent and Trademark Office (“PTO”) for comments regarding
the PTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility.
EFF is a nonprofit civil liberties organization that has worked for more than 20 years to
protect consumer interests, innovation, and free expression in the digital world. EFF and its
approximately 25,000 dues-paying members have a strong interest in helping the courts and
policy-makers in striking the appropriate balance between intellectual property and the public
interest. As an established advocate for consumers and innovators, EFF has a perspective to
share that might not be represented by other persons and entities who submit comments in this
matter, where such other commentators do not speak directly for the interests of consumers or
the public interest generally.
I.

Introduction
EFF welcomes the PTO’s call for public comment regarding its interim guidance on

patentable subject matter. Correctly determining patent-eligibility is critical to ensure that
improper abstract software patents do not issue. On July 31, 2014, EFF submitted comments
regarding the PTO’s preliminary instructions on patentable subject matter.1 In that submission,
we argued that any guidance should clarify that the Supreme Court’s decision in Alice radically
alters the standards for computer-implemented inventions. We also urged the PTO to do more to
ensure that examiners apply Alice and cease allowing applications directed to abstract ideas
claimed on a computer.
EFF believes that the PTO’s latest interim guidance on patentable subject matter suffers
from similar defects. While the interim guidance provides more detail about recent case law, it

1

Available at: http://www.uspto.gov/sites/default/files/patents/law/comments/al-a­
eff20140731.pdf
1


 fails to provide much guidance. Examiners are being left to muddle through on their own without
a clear statement regarding how the law has changed. The PTO’s guidance must reflect this
change and ensure that examiners properly implement the new legal standard.
II. 

The PTO’s summary of decisions does not provide adequate guidance for
examiners.
As drafted, the interim guidance includes a very high-level overview of eligibility

analysis and then summaries of a number of cases. While the high-level overview (and
flowchart) is broadly correct, it will not do much to ensure accuracy and consistency in
examination. The most difficult steps in the decision tree will usually be Step 2A and Step 2B of
the Mayo test. The interim guidance addresses these steps with specific examples from particular
cases. But there is little discussion of how examiners should analogize or apply these examples
to new patent applications.
For similar reasons, the case summaries in the interim guidance do not provide much help
to examiners. Examiners are unlikely to see many claims as broad as the one rejected in O’Reilly
v. Morse, 56 U.S. (15 How.) 62 (1853). And back-to-back summaries of Parker v. Flook, 437
U.S. 584 (1978) and Diamond v. Diehr, 450 U.S. 175 (1981) provide little help given the wellknown tension between these decisions.2 While the PTO obviously cannot make Supreme Court
doctrine more consistent, it should do more than simply summarize cases and leave the task of
reconciling the two cases to examiners. Most helpful would be a discussion of how the law has
changed since the superseded sections of the MPEP were published. Without such a discussion,
examiners are likely to simply continue previous practices.
Given that the law has changed, EFF objects to the inclusion of pre-Alice cases such as
Research Corp. Tech. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). It is far from clear that
the claims in the patent at issue in that case are patent-eligible under Alice. Indeed, then Chief
Judge Rader’s opinion in Research Corp. is strikingly similar to his now overruled opinion in
Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed. Cir. 2011), vacated 132 S. Ct. 2431
(2012). In Ultramercial, the court found the claims patent eligible because the steps “clearly
require specific application to the Internet and a cyber-market environment.” 657 F.3d at 1328.
2

See, e.g., John M. Golden, Flook Says One Thing, Diehr Says Another: A Need for
Housecleaning in the Law of Patentable Subject Matter, 82 Geo. Wash. L. Rev. 1765 (2014).
2


 In Research Corp., the court found the claims patent eligible because they related to “specific
applications or improvements to technologies in the marketplace.” 627 F.3d at 869. This holding
has, at the very least, been brought into question by the Supreme Court’s ruling in Alice.
Including a summary of the facts and holding in Research Corp. can serve only to confuse
examiners and dilute the impact of Alice. The PTO should remove it from the interim guidance.
III.

The PTO should clarify how Alice changed the law of patent eligibility.
As discussed above, EFF believes the most important aspect of any patent eligibility

guidance will be an explanation of recent changes in the law. Thus, the PTO should clarify and
explain that Alice establishes a markedly different substantive framework. For example, the
MPEP previously cited In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) for the principle
that a general purpose computer becomes “a special purpose computer once it is programmed to
perform particular functions pursuant to instructions from program software.” MPEP
2106(II)(B)(1)(a). The MPEP also cited the now vacated decision in Ultramercial v. Hulu, 657
F.3d 1323, 1329 (Fed. Cir. 2011) for a similar proposition. After Alice, these statements are no
longer good law.
When the Federal Circuit considered Alice’s patent en banc, the judges debated whether
Alappat remained good law. See CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
passim (Fed. Cir. 2013). In his concurrence in part, Chief Judge Rader argued that the Federal
Circuit should continue to follow Alappat and therefore should hold the system claims
patentable. See id. at 1305, 1316 (urging that “the Supreme Court has never cast doubt on the
patentability of claims such as those at issue in In re Alappat or the system claims at issue in this
case”). In contrast, five judges voted to invalidate the system claims, reasoning that, in light of
subsequent Supreme Court authority, they could no longer rely on Alappat. Judge Lourie wrote:
We are faced with abstract methods coupled with computers adapted to perform
those methods. And that is the fallacy of relying on Alappat, as the concurrence in
part does. Not only has the world of technology changed, but the legal world has
changed. The Supreme Court has spoken since Alappat on the question of patent
eligibility, and we must take note of that change.
Id. at 1305.

3


 The Supreme Court’s decision in Alice confirmed that Judge Lourie’s concurrence was
correct. As Chief Judge Rader noted, if Alappat remained good law then Alice’s system claims
would have been upheld. To the contrary, the Supreme Court held that “generic computer
components” do not become patent eligible simply upon being “configured” to perform “specific
computerized functions.” Alice, 134 S. Ct. at 2360. This is an express rejection of Alappat’s
holding. The PTO’s guidance should reflect this change and clearly state that a programmed
general purpose computer implementing abstract ideas does not satisfy 35 U.S.C. § 101.
EFF’s previous comments include a detailed discussion of how Alice impacts step 1 and 2
of the Mayo analysis for computer-implemented inventions.3 We continue to believe that interim
guidance should include this information and reiterate those comments here. Ultimately,
examiners should be told that when claims recite only generic computer components—such as a
memory or a processor—for their conventional operations, such claims are almost certainly
invalid.
IV.

The PTO must do more to ensure that Alice is applied to all pending applications.
In our previous comments, EFF noted patents issuing post-Alice that we believe are

plainly ineligible under the Supreme Court’s ruling.4 EFF remains concerned that many invalid
patents are issuing despite the Alice decision.
For example, on Nov. 12, 2014, U.S. Pat. App. No. 11/091,200 received a notice of
allowance.5 However, claims of its parent patent, U.S. Pat. No. 7,096,0036 were invalidated by a
district court for failing to claim patentable subject matter. See Joao Bock Transaction Systems,
LLC v. Jack Henry & Assoc., Inc., Case No. 12-1138-SLR, slip op. (D. Del. Dec. 15, 2014).

3

See Comments of the Electronic Frontier Foundation Regarding Guidance Pertaining
to Patent-Eligible Subject Matter 3-6, Docket No. PTO–P–2014–0036, July 31, 2014, available
at: http://www.uspto.gov/sites/default/files/patents/law/comments/al-a-eff20140731.pdf
4

See id. at 6-7.

5

The applicant has since filed a Request for Continued Examination (RCE), the 12th
RCE filed since the application was first filed in 2005.
6

U.S. App. No. 11/091,200 is a continuation of U.S. Pat. No. 7,096,003.
4


  

 

 

Enormous costs are imposed 

on operating companies when patents such as this issue without adequate review.8
As another example, on January 6, 2015, the Patent Office issued U.S. Patent No.
8,930,459, entitled “Elastic logical groups.” Claim 1 of the patent appears to claim the abstract
idea of using relationships between various members of a group to determine whether someone
belongs in a group. This patent should have been rejected under Alice, yet the file history does
not indicate any such rejection at any point during prosecution.
As a further example, U.S. Pat. No. 8,949,906 issued on February 3, 2015. Claim 1, in its
entirety, consists of the following:
1. A method for selecting a package of videos, the method comprising:
receiving a selection of a first package of videos from a user through a
display screen;
determining whether a second package of videos that is similar to the first
package is available; and
in response to determining that the second package that is similar to the
first package is available, generating for display on the display
screen an identifier of the second package.

8

On April 2, 2015, the PTO contacted EFF to request that we remove a portion of these
comments on the basis that they constituted an improper “protest.” We respectfully disagree that
our comments were a protest under 35 U.S.C. § 122(c). Rather, our comments discussed a
specific application to illustrate our broader points about the importance of applying Alice.
Nevertheless, to ensure these comments are considered by the Office, we have redacted the
relevant discussion in this revised version of our comments. Our original comments remain
available to the public at: https://www.eff.org/files/2015/03/18/eff_comments_regarding_
interim_eligibility_guidance.pdf.
6


 The ‘906 patent did not receive a single rejection, for failure to claim patentable subject
matter or otherwise, before it issued.
Finally, US Patent 8,978,130 issued last Tuesday, March 10, 2015. This patent claims a
“method and system for child authentication.” This patent claims a straightforward system for
allowing children to communicate after confirming parental permission. Figure 7 illustrates the
abstract (and mundane) process at the heart of the patent:

On March 1, 2013, the examiner issued a non-final rejection of some of the claims under
35 U.S.C. § 101. The examiner noted that these claims were directed to a computer program
without any recitation of hardware. The examiner wrote: “Examiner advices [sic] the applicant to
add hardware (i.e., micro-processor or computer processor) to the claim language.” While that
direction may arguably have been accurate under prior Federal Circuit authority such as Alappat,
it is no longer correct under Alice. The Supreme Court has made it clear that merely adding a
processor to an otherwise ineligible claim does not render it ineligible. See Alice, 134 S. Ct. at
2360. Nevertheless, the examiner did not revisit eligibility after the Supreme Court’s decision
and allowed claims that would not survive appropriate scrutiny under existing law.9
9

For example, claim 19 appears to be no more than the abstract idea of asking for and
confirming parental permission but applied using routine computer processes.
7


 Given the extraordinary cost of invalidating improperly-issued patents in post-grant
review or litigation, it is far more efficient for the PTO to diligently review pending applications
to ensure Alice is applied.
V.

Conclusion
EFF again thanks the PTO for the opportunity to comment regarding its interim guidance.

We urge the PTO to adopt clearer guidance that explains how Alice changed the law of patent
eligibility and ensure that this new standard is applied diligently.
Respectfully submitted,
Electronic Frontier Foundation
Daniel Nazer
Staff Attorney
Vera Ranieri
Staff Attorney
March 16, 2015
REVISED April 2, 2015

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