SNAPSHOT OF USPTO DECIDED CASES ON PATENT ELIGIBLE SUBJECT MATTER

The table is a quick reference to USPTO decided cases between 19th to 21st centuries that have a significant impact in charting a course to today’s popular two-step framework for determining patent eligible subject matter.  The present listing of cases does not constitute an exhaustive sample space of all landmark cases, but are essentially drawn from recently issued USPTO report of July 2017.

S. No.	Case Name		Year	Subject Matter	Decision	Inference
SIGNIFICANT CASES OF 19TH CENTURY
1	O’ Reilly v. Morse	1854		Method for marking or printing intelligible characters, signs or letters at any distances using electromagnetism	Ineligible	The use of magnetism was not restricted to a particular process. Attempt towards Pre-empting the use of principle of electromagnetism
2	The Telephone Cases	1870 to 1880		The claims were directed to use of current in closed circuit for transmission of vocal and other sounds, and using it that condition only for a limited purpose	Eligible	The art of using principle of electricity to reproduce at a distance vibrations caused by the voice, into a practical use or under specified condition, thereby not attempting to pre-empt all other possible solutions
SIGNIFICANT CASES OF 20TH CENTURY
3	American Fruit Growers v. Brogdex	1931		The method involved treatment of citrus fruits with a borax solution to render the fruit resistant to mold	Ineligible	The process could not be called “manufacture” or “manufactured article” within the meaning of Patent Law. The addition of borax to the rind of citrus fruit does not produce from the raw material an article for use which possesses a new or distinctive property, form or quality. The added substance only protects the natural article
4	Funk Bro. Seed v. Kalo Inoculant	1948		The invention claimed an inoculants for plants comprising a combination of different bacterial stains to improve nitrogen fixation	Ineligible	There is no invention in combining species as no new bacteria were produced; rather each species had its same effect as it always had. Thus, there should be more than mere combination as else it will be discovery of some of handiwork of nature
5	Gottschalk v. Benson	1972		The method of programming a general purpose to convert binary coded decimal (BCD) signals to pure binary numbers	Ineligible	Claims were abstract within the statute as they attempt to cover both known and unknown uses of BCD to pure binary conversion. Thus, there is a pre-emption of mathematical formula and hence patent on algorithm strictly
6	Parker v. Flook	1978		A method for updating alarm limits during catalytic conversion using a mathematical formula	Ineligible	A mathematical formula cannot support a patent unless there is some other inventive concept in its application. Any post-solution activity can be appended to almost any mathematical formula. Therefore, its limitation to a specific field shall not suffice; the implementation should be novel and non-obvious
7	Diamond v. Chakraborty	1980		A bacterium genetically engineered with 2 plasmids providing separate hydrocarbon degradative pathways for use in treatment of oil spills	Eligible	Improvement on a composition of matter. It is a first case on allowing a live human-made micro-organism as it constitutes a “manufacture” or a “composition of matter” within the definition of statute.
8	Diamond v. Diehr	1981		A process for molding synthetic rubber product using Arrhenius equation to calculate cure time. It comprises series of steps that enable more efficient solution of Arrhenius equation	Eligible	The process enables transformation of raw, incurred synthetic rubber (an article) into a different state or thing within a specified field.
SIGNIFICANT CASES OF 21st CENTURY
9	In re Bilski	2010		A method of hedging risk in commodities trading. The steps comprises initiating a transaction between a broker and purchaser-users who buy the commodity at a first fixed rate, identifying producer-seller of the commodity, and initiating transaction between the broker and producer-seller at a second fixed rate such that the purchasers and the sellers respective risk position balance out.	Ineligible	This was a business method including an abstract idea of hedging risk in energy market and added only token post-solution components, use of well known random analysis technique to establish input. Hedging was determined as a fundamental economic practice and by patenting this, there was an attempt to pre-empt use of risk hedging in all fields.
10	Research Corp. v. Microsoft	2010		Rendering a halftone image of a digital image by comparing pixel by pixel, the digital image against a blue noise mask	Eligible	It’s a functional and palpable application of a method to computer technology
11	Mayo v. Prometheus	2012		A method for optimizing drug dosages for treatment of autoimmune diseases in humans based on relationship between concentration of metabolite in blood following administration of drug, and likelihood that administered dosage would be ineffective or produce harmful side effects	Ineligible	A two-step framework was introduced for the first time  to determine: i) if the claims were directed to judicially recognized exceptions ii) if the claims do significantly more than simply describe these natural relations
12	Association of Molecular Pathology v. Myriad Genetics	2013		The claims were directed to an isolated DNA associated with an increased risk of breast cancer, and a synthetic DNA created from RNA, known as complementary DNA (cDNA)	Isolation of genes-Ineligible BUT cDNA-eligible	The isolation of genes falls within the law of nature exception and discovering location of genes does not render genes patent eligible, nor does an act of separating them from their surrounding genetic material. There should be a marked difference in the characteristics of a new product resulting from isolation when compared to its natural form. However, cDNA are allowable as they differed from naturally occurring DNA by absence of intron regions.
13	Alice Corp. v. CLS Bank	2014		A computer implemented method for mitigating settlement risk wherein the claims are directed to financial trading systems on which trade between the two parties who are to exchange payment are settled by a third party	Ineligible	Abstract idea of intermediated settlement. Failed the two prong test: 1) determine whether the claims are directed to a patent-ineligible concept; and (2) determine whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application
14	DDR Holdings v. Hotels.com	2014		A system for generating a composite web page by combining certain features of a “host” website with content of a third party merchant. By clicking on advertisement for a third-party product displayed on a host website, the user is directed to a hybrid web page that combines the “look and feel” of the host website and product information from the third party merchant	Eligible	The claimed solution is necessarily rooted in computer technology and do not attempt to pre-empt every application of idea by increasing sales by making two web pages look the same.
15	Ariosa v. Sequenom	2015		A method for detecting cell-free fetal DNA (cff DNA) in maternal blood and diagnosing a pre-natal condition based on such DNA. The method enabled detection of paternally inherited cffDNA in maternal blood to diagnose certain genetic defects	Ineligible	Here, the process begins and ends with a natural phenomena. The claims were too broad, and should have rather be narrowed to cover applications actually reduced to practice
16	Rapid litigation management v. Cellz Direct	2016		A method of cryopreserving hepatocytes (liver cells). The cells are subjected to density gradient fractionation to separate viable and non-viable hepatocytes, recovering the viable cells and refreezing them	Eligible	It is a new and useful technique for preserving hepatocytes and not merely directed to ability of hepatocytes to survive multiple freeze thaw cycles
17	Enfish LLC v. Microsoft	2016		A data storage and retrieval system for a computer memory that incorporate a self referential logical model, for faster searching and more effective storage of data	Eligible	It claimed towards specific improvement in the way computers operate, embodied in self-referential table
18	Bascom v. AT&T	2016		A system for filtering internet content wherein a filtering tool is installed at a specific location, remote from the end-users, with customizable filtering features specific to each end user	Eligible	No pre-emption of all ways of filtering content on internet, but a specific, discrete implementation of an abstract idea of filtering content.
19	McRO v. Bandai Namco Games America	2016		A method for automatically animating lip synchronization and facial expression of 3D characters	Eligible	An improved technique to allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could not be produced by human animators. There is a combined order of specific rules that renders information into a specific format which is then used and applied to create desired results: a sequence of synchronized animated characters
20	Amdocs Ltd. v. Openet Telecomm, Inc.	2016		A method for collecting and processing network accounting records over a network. A computer code used accounting information with which the first network accounting record is correlated to enhance the first network accounting record	Eligible	No presumption of any and all generic enhancement of data in a similar system. Further, it purposely arranges the components in a distributed architecture to achieve a technical solution of a technical problem specific to networking