Federal Circuit remands for Alice step-two determination in Optis Cellular Tech.

In yesterday’s post, I discussed how in the Federal Circuit’s two USAA companion cases from June 12, the district court had found that the claims were not directed to an abstract idea, but the Federal Circuit disagreed, striking down the patents. On June 16, the Federal Circuit issued another opinion (Optis Cellular Tech.) again reversing a district court’s determination that the claims were not directed to an abstract idea. In this situation, the Federal Circuit remanded for an Alice step two determination (whether the claims contain an inventive concept beyond “what was ‘well-known,’ ‘routine,’ and ‘conventional'” à la Berkheimer).

When I initially read the USAA cases, I thought it was noteworthy that the district court didn’t find depositing a check using a handheld mobile device to be an abstract idea, because it seemed to fit comfortably into the long list of abstract ideas found by the Federal Circuit since Alice. (I discuss this list in my webinars and I’ll discuss it in a future post.) Well, in Optis, this determination seems a little more puzzling because the claims actually recite a mathematical formula. The district court held that the claims were “directed to applying the equation in a way that offers a technological improvement.” The Federal Circuit was not having it, relying on both Benson and Flook (Supreme Court cases from the 70s!) to find otherwise (e.g., the court cited to Flook: “[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”)

So, perhaps these cases aren’t earth shattering, but it is interesting to note that the USAA cases and the Optis case were all appeals from EDTX.