Interval Licensing LLC v. Aol, Inc.

United States Court of Appeals
for the Federal Circuit
______________________

INTERVAL LICENSING LLC,
Plaintiff-Appellant

v.

AOL, INC., APPLE, INC., GOOGLE LLC, YAHOO!,
INC.,
Defendants-Appellees
______________________

2016-2502, 2016-2505, 2016-2506, 2016-2507
______________________

Appeals from the United States District Court for the
Western District of Washington in Nos. 2:13-cv-00263-
MJP, 2:13-cv-00264-MJP, 2:13-cv-00265-MJP, 2:13-cv-
00266-MJP, Judge Marsha J. Pechman, Senior Judge
Barbara Jacobs Rothstein.
______________________

Decided: July 20, 2018
______________________

MICHAEL F. HEIM, Heim, Payne & Chorush, LLP,
Houston, TX, argued for plaintiff-appellant. Also repre-
sented by ROBERT ALLAN BULLWINKEL, DOUGLAS R.
WILSON; JUSTIN ADATTO NELSON, MAX LALON TRIBBLE,
JR., Susman Godfrey LLP, Houston, TX.

DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for all defendants-appellees. Defendant-
2 INTERVAL LICENSING LLC v. AOL, INC.

appellee Google LLC also represented by AMELIA GRACE
YOWELL.

J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, for defendant-
appellee AOL, Inc. Also represented by ROBERT L. BURNS,
II, Reston, VA; CORTNEY SCOTT ALEXANDER, Kent &
Risley, LLC, Alpharetta, GA.

DAVID ALBERTI, Feinberg Day Alberti & Thompson
LLP, Menlo Park, CA, for defendant-appellee Apple, Inc.
Also represented by MARC BELLOLI.

DEANNE MAYNARD, Morrison & Foerster LLP, Wash-
ington, DC, for defendant-appellee Yahoo!, Inc. Also
represented by MATTHEW IAN KREEGER, San Francisco,
CA.
______________________

Before TARANTO, PLAGER, and CHEN, Circuit Judges.
Opinion for the court filed by Circuit Judge CHEN.
Opinion concurring-in-part, dissenting-in-part filed by
Circuit Judge PLAGER.
CHEN, Circuit Judge.
In our previous decision in Interval Licensing LLC v.
AOL, Inc., we upheld the district court’s judgment invali-
dating claims 1–4 and 7–15 of U.S. Patent No. 6,788,314,
and claims 4–8, 11, 34, and 35 of U.S. Patent No.
6,034,652 on indefiniteness grounds. 766 F.3d 1364, 1366
(Fed. Cir. 2014). As to four other asserted claims of the
’652 patent, claims 15–18, we vacated the judgment of
non-infringement and remanded for further proceedings
because the non-infringement judgment had been prem-
ised on an incorrect construction of the claim term “atten-
tion manager.” Claims 15–18 now return to us from the
Western District of Washington after a determination
INTERVAL LICENSING LLC v. AOL, INC. 3

that they fail to recite patent-eligible subject matter
under 35 U.S.C. § 101. See Interval Licensing LLC v.
AOL, Inc., 193 F. Supp. 3d 1184, 1190 (W.D. Wash. 2016).
We affirm. Claims 15–18 are directed to an abstract
idea: the presentation of two sets of information, in a non-
overlapping way, on a display screen. The claimed “atten-
tion manager,” broadly construed as any “system” for
producing that result, is not limited to a means of locating
space on the screen unused by a first set of displayed
information and then displaying the second set of infor-
mation in that space. The claim limitations for accessing,
scheduling, and then displaying the second information
set are conventional functions stated in general terms and
do not further define how the attention manager segre-
gates the display of two sets of data on a display screen.
Considered as a whole, the claims fail under § 101’s
abstract idea exception because they lack any arguable
technical advance over conventional computer and net-
work technology for performing the recited functions of
acquiring and displaying information.
BACKGROUND
A. The ’652 Patent
The ’652 patent describes and claims the operation of
an “attention manager [that] makes use of ‘unused capac-
ity’” of a display device, by displaying content in that
unused capacity. ’652 patent col. 2 ll. 7–8. Generally, the
attention manager can use a display device’s “unused
capacity” in two different situations: (1) it displays con-
tent when the display device is turned on but the user is
not actively engaged with the display device; and (2) it
displays content in an area of the display screen not used
by already-displayed content with which the user is
actively engaged. Id. col. 2 ll. 7–19. While the specifica-
tion labels the first situation as the “screen saver embod-
iment” and the second situation as the “wallpaper
embodiment,” we explained in our previous Interval
4 INTERVAL LICENSING LLC v. AOL, INC.

Licensing opinion that, for the “wallpaper embodiment,”
neither the claims nor the specification contemplates
integrating the content-to-be-displayed into the back-
ground display of the screen, as is the case with tradition-
al computer screen wallpaper. See Interval Licensing, 766
F.3d at 1375. Rather, the ’652 patent describes simply
displaying content in the “space in the display not used by
the user’s primary interaction.” Id. (citing ’652 patent col.
3 ll. 25–31, col. 6 ll. 45–51). This broader understanding
of the wallpaper embodiment—the display of a second set
of data in an area that does not overlap with an already-
displayed first set of data—is what Interval itself ad-
vanced in the prior appeal. See id.
Consistent with that understanding of the disclosed
wallpaper embodiment, we also construed “attention
manager” as “a system that displays images to a user
either when the user is not engaged in a primary interac-
tion or in an area of the display screen that is not used by
the user’s primary activity.” 766 F.3d at 1376. The user’s
“primary activity,” which does not cover the entire area of
the display screen (thereby creating “unused capacity”),
can relate to “any of a number of application programs
(e.g., word processing programs, computer games, spread-
sheets, etc.).” 1 ’652 patent col. 6 ll. 30–32; col. 8 ll. 23–28.
Our function-based construction of “attention manager” of
displaying two sets of data in a non-overlapping way

1 As Interval Licensing’s counsel noted during oral
argument, the ’652 patent states that “primary interac-
tion” or “primary user interaction” “is to be construed
broadly,” and “includes any operation of the computer (or
other apparatus with which the user is engaging in an
interaction),” thus encompassing any computer interac-
tion other than interacting with the second data set
supplied by the attention manager. Oral Arg. at 34:26–
35:00 (citing ’652 patent col. 8 ll. 10–20).
INTERVAL LICENSING LLC v. AOL, INC. 5

essentially adopted Interval’s proposed construction,
except that we defined the area of the display screen for
displaying the image as the display area “not used by the
user’s primary activity,” as opposed to Interval’s proposed
“not substantially used by the user’s primary activity.”
Interval Licensing, 766 F.3d at 1375–76.
The specification explains that the operation of the at-
tention manager relies on acquiring content from a con-
tent provider which is used to produce “images” that are
then displayed on “unused capacity” of the display device.
Id. col. 6 l. 45–col. 7 l. 7. “Image” is defined broadly to
include any “visual imagery (e.g., moving or still pictures,
text, or numerical information),” and “audio imagery (i.e.,
sounds).” Id. col. 6 ll. 62–64. Furthermore, “[t]he kinds of
content data that can be used with the attention manager
are virtually limitless.” Id. col. 7 ll. 26–35 (listing exam-
ples, such as advertisements, nature scenes, family pic-
tures, stock ticker information, and news summaries). In
similarly broad fashion, “display device” refers to “any
device that presents sensory stimulus” which includes
“computer video display devices, televisions and audio
speakers.” Id. col. 6 ll. 11–14.
According to the specification, the attention manager
coordinates the display of this acquired content through a
set of instructions that enable, inter alia, the following: (i)
acquiring content from a content-providing information
source, (ii) controlling the timing of the display of the
acquired content, (iii) displaying the content, and (iv)
acquiring an updated version of the previously-acquired
content whenever the information source updates its
content. Id. col. 4 ll. 26–59.
Representative claim 18 is directed to the implemen-
tation of an attention manager through the use of these
instructions to acquire and then display content on the
unused capacity of a display:
6 INTERVAL LICENSING LLC v. AOL, INC.

18. A computer readable medium, for use by a
content display system, encoded with one or more
computer programs for enabling acquisition of a
set of content data and display of an image or im-
ages generated from the set of content data on a
display device during operation of an attention
manager, comprising:
[1] acquisition instructions for enabling acquisi-
tion of a set of content data from a specified in-
formation source;
[2] user interface installation instructions for ena-
bling provision of a user interface that allows a
person to request the set of content data from the
specified information source;
[3] content data scheduling instructions for
providing temporal constraints on the display of
the image or images generated from the set of
content data;
[4] display instructions for enabling display of the
image or images generated from the set of content
data;
[5] content data update instructions for enabling
acquisition of an updated set of content data from
an information source that corresponds to a previ-
ously acquired set of content data;
[6] operating instructions for beginning, managing
and terminating the display on the display device
of an image generated from a set of content data;
[7] content display system scheduling instructions
for scheduling the display of the image or images
on the display device;
[8] installation instructions for installing the op-
erating instructions and content display system
INTERVAL LICENSING LLC v. AOL, INC. 7

scheduling instructions on the content display
system; and
[9] audit instructions for monitoring usage of the
content display system to selectively display an
image or images generated from a set of content
data.
Id. col. 33 l. 15–col. 34 l. 24 (emphasis and numbering
added). Although claim 18 recites several instructions
limitations, these “generic sets of instructions,” id. col. 16
l. 8, relate to one of two functions: (i) enabling the acqui-
sition of content to be displayed; and (ii) enabling control
over when to display the acquired content, for how long,
and then displaying it. 2 See id. col. 4 l. 26–col. 5 l. 10;
col. 16 ll. 1–16 (content acquisition instructions include
[1] acquisition instructions, [2] user interface installation
instructions, and [5] content data update instructions);
col. 15 ll. 9–21, 41–42 (content control instructions include
[3] content data scheduling instructions, [4] display
instructions, [6] operating instructions, [7] content display
system scheduling instructions, and [8] installation
instructions). 3
Moreover, the specification describes the claimed in-
structions as routine and conventional. “Each of the . . .
instructions could be acquired from a content provider, or
any one or all of the sets of instructions could be acquired
from an application manager that provides generic sets of

2 The [9] audit instructions are ancillary to the op-
eration of the attention manager in that they merely store
information about the “usage of the attention manager,”
including the identity of the content displayed and when
it was displayed. Id. col. 28 l. 29–col. 29 l. 14.
3 While the patent specification refers to limitations
[6]–[8] as “application instructions,” by their terms, these
instructions relate to controlling the display of content.
8 INTERVAL LICENSING LLC v. AOL, INC.

instructions . . . .” Id. col. 3 ll. 3–8. The [1] acquisition
instructions and [5] content data update instructions are
“generic sets of instructions.” Id. col. 16 ll. 7–9. The
[2] user interface installation instructions are “conven-
tional and readily available for use with the attention
manager.” Id. col. 16 l. 15. The [3] content data schedul-
ing instructions merely “provide temporal constraints on
the display of particular sets of content data” and are
“usually the same” and “generic.” Id. col. 15 ll. 61–67.
Similarly, the specification describes the conventional and
generic nature of the other claimed instructions. See, e.g.,
id. col. 15 ll. 53–56 (“[4] Display instructions that can be
used with a particular display device are typically already
developed by third parties (e.g., the maker of the display
device) and are readily available.”), col. 15 ll. 9–11 ([6]
operating instructions relate to “beginning, managing and
terminating operation of the attention manager”), col. 15
ll. 12–14 ([7] content display system scheduling instruc-
tions described only as “scheduling the display of content
data on a content display system”), col. 10 ll. 43–45 (“Any
appropriate set of rules, that can, for example, be ar-
ranged in any appropriate hierarchical manner, can be
used for establishing a display schedule. . . .”), col. 15
ll. 16–40 (stating that [8] installation instructions for
installing other instructions “can be implemented as
known by those skilled in the art”). As Interval Licensing
acknowledged at oral argument, these instructions,
reciting functions in general terms for accessing, schedul-
ing, and then displaying data, are not inventive, but
conventional; it instead focused its arguments on their
use in connection with the claimed “attention manager.”
See Oral Arg. at 5:19–30.
The ’652 patent, however, offers no clues on how the
“attention manager” manages the display of the acquired
content in a manner that avoids overlapping with the
already-displayed content with which the user is actively
engaged. For example, neither the specification nor the
INTERVAL LICENSING LLC v. AOL, INC. 9

claims specify: whether a second window is created for the
new content to be displayed; whether the new content
always is displayed in a particular corner or location of
the screen; or whether the attention manager performs an
initial scan for where on the display screen “unused
capacity” exists, and then, wherever that space is, defines
a boundary on the screen to display the new content
there. Instead, the claimed “attention manager,” as
construed, calls for an undefined “system” that produces
the result of presenting two non-overlapping sets of data.
B. The District Court Opinion
The district court held that the asserted claims failed
to meet the patent-eligibility standard set forth in Alice
Corp. Pty. v. CLS Bank International. 134 S. Ct. 2347
(2014). The district court first noted that the parties
agreed that the claims are directed to the operation of an
“attention manager,” but disagreed whether the attention
manager “is a patent-ineligible abstract idea.” Interval
Licensing, 193 F. Supp. 3d at 1187. Taking into account
that claims must be “considered in their entirety to ascer-
tain whether their character as a whole is directed to
excluded subject matter,” id. (quoting Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)), the court concluded that the asserted claims
“are directed towards the same abstract idea—providing
information to a person without interfering with the
person’s primary activity.” Id. at 1188.
The court then concluded that the claims lack an in-
ventive concept for implementing the abstract idea,
reasoning that “the elements of the asserted claims are
purely conventional and do no more than apply the ab-
stract idea . . . in the particular technological environment
of networked computers.” Interval Licensing, 193 F.
Supp. 3d at 1189. Although Interval Licensing contended
below that the claims provided a technical solution to
problems arising in “windowed, multitasking operating
10 INTERVAL LICENSING LLC v. AOL, INC.

systems,” the court noted that “the claims do not recite
how the attention manager” solved that problem. Id.
(emphasis in original) (citing Internet Patents, 790 F.3d at
1348, for the proposition that claim limitations directed
only to a result do not recite an inventive concept). The
district court thus found the claims invalid and granted
the defendants’ motion for judgment on the pleadings.
Interval Licensing, 193 F. Supp. 3d at 1190.
DISCUSSION
We have jurisdiction over this appeal under 28 U.S.C.
§ 1295(a)(1). We review a judgment on the pleadings
under Rule 12(c) de novo. See Harris v. Cty. of Orange,
682 F.3d 1126, 1131 (9th Cir. 2012). Patent eligibility
under 35 U.S.C. § 101 is a question of law that may
contain underlying issues of fact. 4 Berkheimer v. HP Inc.,
881 F.3d 1360, 1365 (Fed. Cir. 2018). We review the
district court’s ultimate conclusion on patent eligibility de
novo. Id.

4 Our court recently held that disposition on § 101
is inappropriate at the summary judgment stage when
there are genuine disputes of material fact as to whether
elements of the challenged claims are “well-understood,
routine and conventional to a skilled artisan in the rele-
vant field.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(Fed. Cir. 2018). And resolution at the Rule 12(b)(6) or
Rule12(c) stage is similarly inappropriate where claim
elements are adequately alleged to be more than well-
understood, routine, or conventional. See Aatrix Software,
Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128
(Fed. Cir. 2018). But where, as here, there are no disput-
ed facts material to the issue of patent eligibility, the
district court’s resolution of the inventive concept inquiry
is proper.
INTERVAL LICENSING LLC v. AOL, INC. 11

Section 101 allows inventors to obtain patents on “any
new and useful process, machine, manufacture, or compo-
sition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. However, “this provision
contains an important implicit exception:” an inventor
may not patent laws of nature, natural phenomena, or
abstract ideas. Alice, 134 S. Ct. at 2354. To assess
whether a patent claim violates this exception to the
terms of § 101, the Supreme Court has set forth a two-
step framework, in which a court determines: (1) whether
the claim is “directed to a patent-ineligible concept,” i.e., a
law of nature, natural phenomenon, or abstract idea, and,
if so, (2) whether the elements of the claim, considered
“both individually and ‘as an ordered combination,’” add
enough to “‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78 (2012)). In the context of an abstract-idea chal-
lenge to a patent claim, those two steps are typically
understood as the “abstract idea” step and the “inventive
concept” step. See Affinity Labs of Tex., LLC v. DirecTV,
LLC, 838 F.3d 1253, 1257–58 (Fed. Cir. 2016). While
each step involves its own separate inquiry, we have
explained that they may “involve overlapping scrutiny of
the content of the claims.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
A. Alice Step 1: Abstract Idea
The judicial exception in patent law against claiming
abstract ideas dates as far back as 1840. See Wyeth v.
Stone, 30 F. Cas. 723 (C.C.D. Mass. 1840). In Wyeth, the
patent described a particular apparatus for cutting ice, as
well as a multi-step process for using the inventor’s
apparatus to cut ice. The patent specification recited two
claims, with one claim “for the particular apparatus and
machinery to cut ice, described in the specification.” Id.
at 727. As for the other claim, “the patentee claim[ed] an
exclusive title to the art of cutting ice by means of any
12 INTERVAL LICENSING LLC v. AOL, INC.

power, other than human power.” Id. Justice Story,
riding circuit, ruled that second claim to be “utterly
unmaintainable,” because it was “a claim for an art or
principle in the abstract, and not for any particular meth-
od or machinery, by which ice is to be cut. No man can
have a right to cut ice by all means and methods . . . .” Id.
In O’Reilly v. Morse, 56 U.S. 62 (1853), the Supreme
Court endorsed Wyeth v. Stone as “directly in point” for
creating, along with other circuit court decisions, “estab-
lished principles in the American courts” on which the
Court relied for its Morse validity decision. Id. at 118.
Samuel Morse was granted several patent claims, but his
broadest claim, the eighth claim, encompassed the use of
“electro-magnetism, however developed, for making or
printing intelligible characters, letters, or signs, at any
distances.” Id. at 86 (emphasis added). Opining that this
claim was “too broad, and not warranted by law,” the
Court observed that “[i]f this claim can be maintained, it
matters not by what process or machinery the result is
accomplished.” Id. at 113. The Court further explained
its objection to Morse’s eighth claim in The Telephone
Cases, 126 U.S. 1 (1888), noting that it impermissibly was
“for an effect produced by the use of electromagnetism,
distinct from the process or machinery necessary to
produce it.” Id. at 534 (quoting Morse, 56 U.S. at 120).
In both Wyeth and Morse, then, the inventors received
a patent containing at least one claim directed to a par-
ticular technical solution to a problem, whether for cut-
ting ice or for printing at a distance using
electromagnetism; but each inventor also lost a claim that
encompassed all solutions for achieving a desired result,
whether for cutting ice or for printing at a distance using
electromagnetism. In other words, those latter claims
failed to recite a practical way of applying an underlying
idea; they instead were drafted in such a result-oriented
way that they amounted to encompassing the “principle in
the abstract” no matter how implemented.
INTERVAL LICENSING LLC v. AOL, INC. 13

In more recent years, the Supreme Court has reaf-
firmed the principles it espoused in Morse, continually
citing Morse and other cases from its era as authority for
the implicit exceptions to section 101, and then applying
those exceptions to modern-day technologies. See Alice,
134 S. Ct. at 2354; Mayo Collaborative Servs., 566 U.S. at
71–74; Parker v. Flook, 437 U.S. 584, 592 (1978);
Gottschalk v. Benson, 409 U.S. 63, 68 (1972). Because the
exceptions “are the basic tools of scientific and technologi-
cal work,” the Court has emphasized the concern that a
patent claim which ties up a law of nature or an abstract
idea “might tend to impede innovation more than it would
tend to promote it.” Mayo Collaborative Servs., 566 U.S.
at 71; see also Le Roy v. Tatham, 55 U.S. 156, 175 (1853)
(“A patent is not good for an effect, or the result of a
certain process,” for such patents “would prohibit all other
persons from making the same thing by any means what-
soever.”). Our recent abstract idea exception decisions
likewise have stressed that a claimed invention must
embody a concrete solution to a problem having “the
specificity required to transform a claim from one claim-
ing only a result to one claiming a way of achieving it.”
SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021–22
(Fed. Cir. 2018) (collecting cases).
At the same time, courts must “tread carefully” when
wielding this invalidity tool, since “all inventions . . .
embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Alice, 134 S. Ct.
at 2354. Computer software-related inventions—due to
their intangible nature—can be particularly difficult to
assess under the abstract idea exception. See Elec. Power
Grp., 830 F.3d at 1354 (noting that the Alice-recognized
distinction between “computer-functionality improve-
ments” and “uses of existing computers as tools in aid of
processes focused on ‘abstract ideas’” “has common-sense
force even if it may present line-drawing challenges
because of the programmable nature of ordinary existing
14 INTERVAL LICENSING LLC v. AOL, INC.

computers”). The exception nevertheless applies to new
and old technologies alike. Importantly, we have found a
number of software-based claims to be patent-eligible,
observing that “[s]oftware can make non-abstract im-
provements to computer technology just as hardware
improvements can, and sometimes the improvements can
be accomplished through either route.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); id.
at 1339 (claims directed to a self-referential table “de-
signed to improve the way a computer stores and re-
trieves data in memory”); see also Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348–
49 (Fed. Cir. 2016) (claims directed to improved content
filter); McRO, Inc. v. Bandai Namco Games Am. Inc. 837
F.3d 1299, 1313–14 (Fed. Cir. 2016) (claims directed to a
technical improvement in animation techniques); Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356, 1362 (Fed. Cir. 2018) (holding that claims which
were directed to “particular manner of summarizing and
presenting information in electronic devices” were patent-
eligible).
Other software-based claimed inventions, however,
have failed to pass section 101 muster, because they did
not recite any assertedly inventive technology for improv-
ing computers as tools and/or because the elements of the
asserted invention were so result-based that they
amounted to patenting the patent-ineligible concept itself.
See Elec. Power Grp., 830 F.3d at 1354, 1355 (claims
lacking “any requirements for how the desired result is
achieved”) (emphasis in original); SAP Am., Inc., 890 F.3d
at 1022 (“the focus of the claims [wa]s not any improved
computer or network”). In this case, the record is suffi-
ciently clear to conclude that the district court properly
granted the defendants’ motion for judgment on the
pleadings.
In this case, Interval Licensing contends that the
claimed “attention manager” provides a technological
INTERVAL LICENSING LLC v. AOL, INC. 15

improvement to a computer system. We disagree. The
focus of the claims here is directed to “providing infor-
mation to a person without interfering with the person’s
primary activity,” i.e., the result-centric construction of
the claimed “attention manager.” Interval Licensing, 193
F. Supp. 3d at 1188. Standing alone, the act of providing
someone an additional set of information without disrupt-
ing the ongoing provision of an initial set of information is
an abstract idea. As the district court aptly observed, this
“basic and longstanding practice can be found in, for
example, a television station’s use of a breaking news
ticker across the bottom of the screen.” Id. at 1187. The
court also pointed to the nontechnical human activity of
passing a note to a person who is in the middle of a meet-
ing or conversation as further illustrating the basic,
longstanding practice that is the focus of the claimed
invention. Id. We have recognized that “[i]nformation as
such is an intangible” and that collecting, analyzing, and
displaying that information, without more, is an abstract
idea. Elec. Power Grp., 830 F.3d at 1353–54; see also id.
at 1355 (noting claim requirement of “‘displaying concur-
rent visualization’ of two or more types of information”
was insufficient to confer patent eligibility). We have also
held that claims directed to displaying two different
information sets sequentially are abstract. See Ultramer-
cial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(claims directed to abstract idea of “showing an adver-
tisement before delivering free content”). Similarly, we
have held that claims directed to a single display of
information collected from various sources are abstract.
See Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341–42 (Fed. Cir. 2017) (holding claims
which recited creating a “dynamic document” using con-
tent from multiple electronic records ineligible under
§ 101). Recitation, as in this case, of the collection, organ-
ization, and display of two sets of information on a generic
display device is abstract absent a “specific improvement
16 INTERVAL LICENSING LLC v. AOL, INC.

to the way computers [or other technologies] operate.”
Enfish, 822 F.3d at 1336.
Furthermore, in light of the broad, result-oriented
construction for “attention manager,” we agree with the
district court that the claimed “attention manager” en-
compasses a patent-ineligible abstract concept rather
than an arguably technical improvement to display devic-
es, because the term as properly construed simply de-
mands the production of a desired result (non-interfering
display of two information sets) without any limitation on
how to produce that result. Instead of claiming a solution
for producing that result, the claim in effect encompasses
all solutions. This result-centric construction for “atten-
tion manager” conforms with the specification, which
lacks any description for how a display device would
ensure the segregation of the two sets of information
presented on a display screen.
Next, Interval Licensing argues that its claims are not
directed to an abstract idea in light of the claimed in-
structions. This argument also fails. As an initial matter,
the claimed instructions do not identify how the attention
manager performs the function of ensuring a defined
boundary between two data sets co-displayed on a screen.
Instead, the instructions limitations are for either collect-
ing a second data set or controlling the order and timing
of when to display the collected second data set, not for
how to engineer or program the display of the second data
set in a way that does not interfere with the first data set,
wherever that first data set may exist on a screen. Alt-
hough the claims include “display instructions,” those
instructions are simply for “displaying the image” gener-
ated from the acquired content, and have no bearing on
how to display the “image” in a section of the screen that
is unused. Moreover, acquiring and organizing infor-
mation, as broadly recited by some of the instructions
limitations, is an abstract idea, not an improvement in
how computers and networks carry out their basic func-
INTERVAL LICENSING LLC v. AOL, INC. 17

tions. See Elec. Power Grp., 830 F.3d at 1353–54. And
displaying the information which results from that collec-
tion and organization, as recited by other instructions
limitations, is “abstract as an ancillary part of such
collection and analysis.” Id. at 1354. The instructions
limitations, taken as a whole, are thus abstract.
Furthermore, the claimed instructions do not impose
meaningful limitations on the purported solution of an
attention manager that would improve a computer as a
tool, but merely recite routine and conventional steps in
carrying out the well-established practice of accessing
data from an external source and displaying that data on
a user’s device. In the words of the district court, they
offer “nothing more than generic, pre-existing computer
functionality.” Interval Licensing, 193 F. Supp. 3d at
1190. As explained supra, the ’652 patent specification
itself makes clear that the instructions limitations are
generic and cover established ways to access information,
organize information, and then display information. See
also Oral Arg. at 5:19–30 (“I think there’s a good chance if
it didn’t say attention manager or if that wasn’t the
invention, [Interval Licensing] wouldn’t have even filed
for the patent application. . . . If it was just using the
Internet to get content, I don’t know that there’s an
invention here at all.”); see also ’652 patent col. 3 ll. 5–8.
The instructions limitations Interval Licensing high-
lights in its appeal as representing an improvement in
computing devices are unavailing. For example, the
specification admits the acquisition instructions are
“generic,” id. col 3 ll. 3–8, and are, in any event, a neces-
sary aspect of carrying out any conception of providing
one set of information to be displayed next to another.
The claimed “user interface installation instructions” “are
conventional” instructions previously employed for per-
mitting users to request content on a computer. Id. col.
16 l. 15. The content data scheduling instructions and
content display system scheduling instructions limita-
18 INTERVAL LICENSING LLC v. AOL, INC.

tions control the duration, order, and timing of presenta-
tion of acquired content. The specification explains that
“[a]ny appropriate set of rules” can “be used for establish-
ing a display schedule.” Id. col. 10 ll. 43–45. Finally, the
content data update instructions, which enable updating
the displayed information, are recited only at the broad-
est, functional level, without explaining how that is
accomplished, let alone providing a technical means for
performing that function. Because the instructions dis-
cuss only broad functions and are not directed to any
technological improvement for performing those func-
tions, Interval Licensing’s reliance on McRO is inapposite.
In McRO, the claim limitations at issue were “limited
rules” which “improved technological result[s].” 837 F.3d
at 1316. See SAP Am., Inc., 890 F.3d at 1021 (explaining
that the claims in McRO, besides being directed to physi-
cal display improvements, also avoided abstraction by
adequate specificity as to how to achieve the improve-
ments).
In sum, the recited claims are directed to an abstract
idea because they consist of generic and conventional
information acquisition and organization steps that are
connected to, but do not convert, the abstract idea—
displaying a second set of data without interfering with a
first set of data—into a particular conception of how to
carry out that concept. “[S]imply appending conventional
steps, specified at a high level of generality, to laws of
nature, natural phenomena, and abstract ideas cannot
make those laws, phenomena, and ideas patentable.”
Mayo Collaborative Servs., 566 U.S. at 82.
B. Alice Step 2: Inventive Concept
Whether considering the claim elements of repre-
sentative claim 18 individually or as an ordered combina-
tion, nothing in the claim converts the abstract idea to an
inventive concept. It is well-settled that placing an ab-
stract idea in the context of a computer does not “im-
INTERVAL LICENSING LLC v. AOL, INC. 19

prove” the computer or convert the idea into a patent-
eligible application of that idea. See Alice, 134 S. Ct. at
2358. Furthermore, the claims do not recite any arguably
inventive method of how the secondary information is
displayed, such as what portion of the screen is utilized or
how the primary activity on the screen is monitored. That
is, while the specification and claims of the ’652 patent
purport to describe an improved user experience which
allows the presentation of an additional set of infor-
mation, the patent is wholly devoid of details which
describe how this is accomplished. See, e.g., Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an
abstract idea.”) (emphasis in original). The patent does
not describe how the preexisting screen background is
altered to enable the display of the second set of infor-
mation, nor does it describe how the second set of infor-
mation is segregated from the primary set of information.
Interval Licensing re-raises its claimed instructions in
the form of an alleged inventive concept. But, for the
reasons we have already given supra, the instructions are
recited at a high level of generality and conventional, and
are not the kinds of limitations we have held to “solve a
technology-based problem, even with conventional, gener-
ic components, combined in an unconventional manner.”
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1300 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469
(2017); see also Ultramercial, 772 F.3d at 716 (“Adding
routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet does
not transform an otherwise abstract idea [of showing an
advertisement before delivering content] into patent-
eligible subject matter.”).
Interval Licensing next argues that the claims provide
a specific technological improvement which is “rooted in
computer technology” in that they “improve computer
20 INTERVAL LICENSING LLC v. AOL, INC.

display devices by combining the acquired information
with the user’s primary display interaction.” Appellant
Br. 51–52 (quoting DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). We disagree.
Interval Licensing does not allege that computer display
devices were previously unable to display information
from more than one source. And the problem for Interval
Licensing is that its claims, as construed, are so broad
that they encompass the basic concept of displaying two
sets of information, using any means to display them
without overlap, in which the secondary data set is ac-
quired and organized by generic, conventional steps.
Thus, unlike DDR Holdings, the claims here do not offer a
particular solution to a problem that, in DDR Holdings,
was unique to the Internet. The asserted improvement
here is the presentation of information in conjunction
with other information. Such an information-based
improvement is not an improvement “rooted in computer
technology.” DDR Holdings, 773 F.3d at 1257.
Interval Licensing also argues that the acquisition of
specific information desired by the user represents an
inventive concept (e.g., the limitation “user interface
installation instructions” construed as “installation in-
structions for enabling provision of an interface that
enables a person to request the set of content data from a
specific source of information.”). Appellant’s Br. at 35.
We once again disagree. Offering a user the ability to
select information to be displayed is one of the “most basic
functions of a computer.” Alice, 134 S. Ct. at 2359. Inter-
val Licensing does not, and cannot, contend that it is
arguably inventive to enable a person to access infor-
mation over a network through a user interface. ’652
patent col. 1 ll. 28–34 (explaining in background section
that, by using networks such as the Internet, “information
can be displayed to a computer user having access to the
network directly in response to a request from a user”);
see also Intellectual Ventures I LLC v. Erie Indem. Co.,
INTERVAL LICENSING LLC v. AOL, INC. 21

850 F.3d 1315, 1330 (Fed. Cir. 2017) (“Remotely accessing
and retrieving user-specified information is an age-old
practice that existed well before the advent of computers
and the Internet.”). Instead, its argument boils down to
using that conventional, pre-existing practice of acquiring
information that will then be displayed somewhere (and
somehow) adjacent to other information. Appending rote
conventional activity in this way to an abstract idea does
not amount to an inventive concept. See, e.g., Affinity
Labs of Tex., LLC, 838 F.3d at 1272 (“The addition of
basic user customization features to the interface does not
alter the abstract nature of the claims and does not add
an inventive component that renders the claims patenta-
ble.”).
Interval Licensing further argues that the claims at
issue are for a “distributed architecture” similar to that
found patent eligible in Amdocs. 841 F.3d at 1303.
However, none of the claims recite anything even akin to
a distributed architecture. As discussed supra, the
claims, as construed, recite acquiring information from a
“specific source of information,” but there is no further
disclosure of what that information source is or where it is
located. This is a disclosure of a generic network connec-
tion, not any specific distributed architecture. See
buySAFE, Inc. v. Google Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specifica-
tion—is not even arguably inventive.”). And, as noted
earlier, Interval Licensing argued for and received a
construction of “attention manager” defining that term by
the result it yields, not by its structural design or any
mode for producing the result.
CONCLUSION
We have considered all of Interval Licensing’s other
arguments and find them unpersuasive. For the forego-
ing reasons, the determination of the district court that
22 INTERVAL LICENSING LLC v. AOL, INC.

claims 15–18 of the ’652 patent are directed to patent-
ineligible subject matter is
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
______________________

INTERVAL LICENSING LLC,
Plaintiff-Appellant

v.

AOL, INC., APPLE, INC., GOOGLE LLC, YAHOO!,
INC.,
Defendants-Appellees
______________________

2016-2502, 2016-2505, 2016-2506, 2016-2507
______________________

Appeals from the United States District Court for the
Western District of Washington in Nos. 2:13-cv-00263-
MJP, 2:13-cv-00264-MJP, 2:13-cv-00265-MJP, 2:13-cv-
00266-MJP, Judge Marsha J. Pechman, Senior Judge
Barbara Jacobs Rothstein.
______________________
PLAGER, Circuit Judge, concurring-in-part and dissenting-
in-part.
Today we are called upon to decide the fate of some
inventor’s efforts, whether for good or ill, on the basis of
criteria that provide no insight into whether the invention
is good or ill. Given the current state of the law regarding
what inventions are patent eligible, and in light of our
governing precedents, I concur in the carefully reasoned
opinion by my colleagues in the majority, even though the
state of the law is such as to give little confidence that the
outcome is necessarily correct. The law, as I shall ex-
plain, renders it near impossible to know with any cer-
2 INTERVAL LICENSING LLC v. AOL, INC.

tainty whether the invention is or is not patent eligible.
Accordingly, I also respectfully dissent from our court’s
continued application of this incoherent body of doctrine.
The Three Exceptions
The majority opinion, after reviewing in detail the
district court’s decision and the patent’s written descrip-
tion and claims, goes through the obligatory review of the
history of 35 U.S.C. § 101, the statutory section entitled
“Inventions patentable.” Under the statute a patent may
be obtained for an invention that is a “new and useful
process, machine, manufacture, or composition of matter.”
This phrasing is often described as providing a wide and
permissive scope for patent eligibility. 1
However, as the majority opinion notes, any recourse
to § 101 must take into account not only the words of the
statute but also the Supreme Court’s judicially created
three exceptions to the statute’s description of what is
patent eligible. Of these three Court-created exceptions—
‘laws of nature, natural phenomena, and abstract ideas’—
the one at issue in this case is the one that causes the
most trouble: ‘abstract ideas.’
That ‘abstract ideas’ is the only one of the three at is-
sue here is a critical point, in need of emphasizing. All too
often courts discussing these three judicially created
exceptions to patent eligibility lump them together, as if
all three present the same set of issues to be conceptual-
ized and analyzed. 2 They do not. ‘Laws of nature’ and

1 See, e.g., Bilski v. Kappos, 561 U.S. 593, 601
(2010).
2 The Supreme Court itself is not always consistent.
Compare id. at 601–02 (referring to the “three specific
exceptions”) with Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (referring to the three
categories as constituting one “exception”).
INTERVAL LICENSING LLC v. AOL, INC. 3

‘natural phenomena’ have understandable referents, and
thus have proven more amenable to workable definitions,
or at least a reasonable degree of boundary-setting, and
thus are more amenable to analysis. 3
However, when it comes to applying the concept of
‘abstract ideas’ to a challenged patent (or application for
patent) as a distinct test of patent eligibility, the issues
are different, and require close examination. The analyti-
cal structure which we now are to employ is provided by
the Supreme Court’s recent teachings in Alice Corp. v.
CLS Bank International. 4 (Alice is often linked at cita-
tion-time to an earlier case, Mayo Collaborative Services
v. Prometheus Laboratories, Inc.; 5 that case did not turn
on the ‘abstract ideas’ formula, and is an example of the
blending that can cause analytical confusion.)
I. Abstract Idea(s)
The majority opinion, following the structure dictated
by Alice, first steps through “Alice Step 1: Abstract Idea.”
The court recites a bit of the history of the ‘abstract ideas’
idea from its origins in the 19th century, and then reviews
the more recent cases that wander through it, lining the

3 That does not, however, preclude controversy.
See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1380 (Fed. Cir. 2015) (Linn, J., concurring),
reh’g denied, 809 F.3d 1282 (Fed. Cir. 2015) (per curiam
denial with concurrences by Judges Lourie and Dyk and a
dissent by Judge Newman). But see Robert R. Sachs, Bad
Science Makes Bad Patent Law—No Science Makes It
Worse (Part I), Bilski Blog (Sept. 13, 2016),
http://www.bilskiblog.com/blog/2016/09/bad-science-
makes-bad-patent-law.html (arguing that the courts have
failed to accurately define ‘laws of nature’).
4 134 S. Ct. 2347 (2014).
5 566 U.S. 66.
4 INTERVAL LICENSING LLC v. AOL, INC.

cases up as they explain themselves on both sides of the
divide between good and ill. (In Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 6 I explained the reason for this
evolved decision-by-example technique; the verbal nature
of the distinctions drawn becomes quite apparent.)
The majority opinion concludes that “the recited
claims are directed to an abstract idea because they
consist of generic and conventional information acquisi-
tion and organization steps that are connected to, but do
not convert, the abstract idea.” Maj. Op. at 18. This
often-seen language is familiar from Alice. See Alice, 134
S. Ct. at 2359–60. It is interesting language—if “generic
and conventional” is the same as ‘previously known,’
someone familiar with traditional patent law might think
of the 1952 Patent Act’s § 103 and the nonobviousness
principle—a point discussed later; but, following Alice, the
majority opinion, as did the district court, ignores the
Patent Act’s requirements and cites the current litany for
abstractness.
But what makes an idea found in a claim an ‘abstract
idea’? An idea itself by definition is “[s]omething, such as
a thought or conception, that is the product of mental
activity.” 7 The definitions of “abstract” include
“[c]onsidered apart from concrete existence,” “[d]ifficult to
understand; abstruse,” and “[n]ot applied or practical;
theoretical.” 8 An idea, whether abstract or not, is some-
thing that lives in the interstices of someone’s brain, a
psychophysiological area not fully understood to this day. 9

6 841 F.3d 1288, 1294–95 (Fed. Cir. 2016).
7 The American Heritage Dictionary of the English
Language 872 (5th ed. 2011).
8 Id. at 7.
9 Cf. John Medina, Brain Rules (2d ed. 2014).
INTERVAL LICENSING LLC v. AOL, INC. 5

And ideas can have an infinite range of abstractness,
if by that we imply concreteness—for example, compare “I
have an idea—let’s have hamburgers for dinner,” with “I
have an idea—I am going to invent how to make time go
backwards.” 10 How much of abstractness is a function of
concreteness? How do we pick the line where the articu-
lation and explication of an idea is sufficiently concrete to
be ‘non-abstract,’ but not so much as to be ‘generic and
conventional’? Does it help to phrase the notion as the
difference between claiming a desired result and claiming
how to produce that same result? Or are we just substi-
tuting one set of vague notions for the other, with the
same line-drawing problem?
That the phrase ‘abstract ideas’ is a definitional mo-
rass can be seen in one simple fact—a search for a defini-
tion of ‘abstract ideas’ in the cases on § 101 from the
Supreme Court, as well as from this court, reveals that
there is no single, succinct, usable definition anywhere
available. The problem with trying to define ‘abstract
ideas,’ and why no court has succeeded in defining it, is
that, as applied to as-yet-unknown cases with as-yet-
unknown inventions, it cannot be done except through the
use of equally abstract terms. 11 As explained in Amdocs,

10 See, e.g., Dava Sobel, Longitude 34 (1st ed. 1995)
(“Time is to clock as mind is to brain. The clock or watch
somehow contains the time. And yet time refuses to be
bottled up like a genie stuffed in a lamp. . . . [I]t flows as
sand or turns on wheels within wheels, time escapes
irretrievably . . . .”).
11 For example, compare In re Bilski, 545 F.3d 943,
959 (Fed. Cir. 2008) (en banc) proposing ‘machine-or-
transformation’ as the test, with Bilski, 561 U.S. at 604,
indicating that ‘machine-or-transformation’ is one test, “a
useful and important clue” and “an investigative tool” but
not the exclusive test and offering nothing better. See
6 INTERVAL LICENSING LLC v. AOL, INC.

the closest our cases come to a definition is to state exam-
ples of what prior cases have contained, and which way
they were decided. But what anecdotal cases reveal, a
definition does not make.
The ‘abstract ideas’ idea, when used for denying a
claimed invention’s patent eligibility either before or after
a patent is issued, cannot thus function as a valid rule of
law. As a fundamental policy, a legal term such as ‘ab-
stract ideas,’ if the exclusionary standards of § 101 are to
function as a valid rule of law, must provide concise
guidance for the future. In that sense, a rule of law is a
prediction of how courts will decide future cases. 12 ‘Ab-
stract ideas,’ like the term ‘obscenity,’ may provide a
cultural consensus in a given instance regarding whether
a past event qualifies, but it fails to provide the kind of
specificity and clarity that makes it useful for future
prediction of outcome. And from the viewpoint of deci-
sional law, the ‘abstract ideas’ idea falls short in the sense
of providing a trial judge with confidence that the judg-
ment will be understood by the judges who come after,

also the several opinions in this court’s CLS Bank Inter-
national v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en
banc), the harbinger of the Supreme Court’s Alice opinion.
12 See Oliver W. Holmes, The Path of the Law, in
Collected Legal Papers 167, 173 (1920) (noting that rules
of law are “prophecies of what the courts will do in fact,
and nothing more pretentious”); see also Karl N. Llewel-
lyn, The Bramble Bush: Some Lectures on Law and Its
Study 3 (1930) (“What these officials do about disputes is,
to my mind, the law itself.”). But cf. Michael C. Dorf,
Prediction and the Rule of Law, 42 UCLA L. Rev. 651, 653
n.6, 715 (1996) (suggesting that “the prediction model
undermines the rule of law by over-emphasizing the role
of individual judges”).
INTERVAL LICENSING LLC v. AOL, INC. 7

since only the judges who have the final say in the matter
can say with finality that they know it when they see it.
II. Inventive Concept
Having determined the claims at issue to be directed
to nothing more than ‘abstract ideas,’ the majority opin-
ion, following the Alice analysis, segues to “Alice Step 2:
Inventive Concept.” Here the court explores whether the
invention’s claims, determined in Step 1 to be abstract,
are not really abstract because they limit the abstractness
by an ‘inventive concept.’ In the case before us, no such
concept is seen; the trial court’s determination of fatal
abstraction is affirmed.
A small puzzle—if a court, after reviewing challenged
claims in light of their terminology and written descrip-
tion, determines the claims to be ‘abstract’ in Step 1, how
can the same court be expected to determine on a second
reading that the same claims have become ‘un-abstract’
via Step 2? Could it be that an ‘inventive concept’ cannot
exist until the court reads the patent at least one more
time? Perhaps courts cannot be expected to read the
claims carefully enough the first time?
A bigger puzzle regarding the ‘inventive concept’ con-
cept: Those who are familiar with the history of the
Patent Act, when in 1952 the law of patenting was given a
major statutory overhaul, will be the most puzzled. Is it
the case that now, some 65 years later, we really have
resurrected the concept of an ‘inventive concept’? 13 The
late Judge Giles Rich, the grand old man of patent law,
whose portrait hangs in the place of honor in the Federal

13 Some authorities attribute the resurrection of ‘in-
ventive concept’ to Mayo, and to Justice Stevens in his
earlier opinion in Parker v. Flook, 437 U.S. 584 (1978).
For the history buffs, see Jeffrey A. Lefstin, Inventive
Application: A History, 67 Fla. L. Rev. 565, 572–77 (2015).
8 INTERVAL LICENSING LLC v. AOL, INC.

Circuit courthouse—how can he rest in peace? He was
one of the acclaimed authors of the new Patent Act. At
the time he, along with many others, thought that the
undefinable—truly abstract—concept of ‘inventive con-
cept’ had been put into the dustbin of history by the
specific criteria for a valid patent in the new Patent Act,
specifically § 103, non-obvious subject matter.
Judge Rich wrote extensively on the point. See, e.g.,
Giles S. Rich, Laying the Ghost of the “Invention” Re-
quirement, 1 APLA Q.J. 26 (1972); Giles S. Rich, The
Vague Concept of “Invention” as Replaced by Sec. 103 of
the 1952 Patent Act, 46 J. Pat. Off. Soc’y 855 (1964). 14 In
his 1964 article, based on a speech he gave twelve years
after the statutory changes were enacted, Judge Rich
reviewed the long and sorry history during the 19th
century of the “injection into the law of what has ever
since been called the ‘requirement for invention.’” 46 J.
Pat. Off. Soc’y at 860. “This proliferation of views on what
did and did not amount to ‘invention’ went on for 100
years. We were enlightened with the view that ‘invention’
resulted from the exercise of the ‘inventive faculties’ and
other circular reasoning.” Id. He attributed this devel-
opment to an 1851 Supreme Court case, Hotchkiss v.
Greenwood, 52 U.S. 248 (1851), and noted that “[a]s is
usual with a ‘doctrine’ derived from a court opinion, the
doctrine persists while the facts out of which it arose are
forgotten.” Id. at 859–60.

14 See also In re Bergy, 596 F.2d 952, 959–64 (CCPA
1979), vacated in part sub nom. Diamond v. Chakrabarty,
444 U.S. 1028 (1980), and aff’d sub nom. Diamond v.
Chakrabarty, 447 U.S. 303 (1980); Giles S. Rich, Why and
How Section 103 Came to Be, in Nonobviousness—The
Ultimate Condition of Patentability 1:201 (John F. With-
erspoon ed., 1980); Giles S. Rich, Principles of Patentabil-
ity, 28 Geo. Wash. L. Rev. 393 (1960).
INTERVAL LICENSING LLC v. AOL, INC. 9

Judge Rich bemoaned the fact that, even after the
statutory enactment of § 103 of the Patent Act, some still
used the meaningless ‘invention’ or ‘inventive require-
ment’ phrase. He concluded his article with a series of
propositions to reinforce “that when 103 has been com-
plied with, there is no further and different requirement
called ‘invention’; that compliance with 103 is the policy
judgment of Congress on how to bring the invention
within the Constitutional purpose.” Id. at 875.
Without referring to this history, the Supreme Court
in Alice instructed that we ask whether there is such
structure or something in the patent claim(s) that recites
an ‘inventive concept’ “sufficient to ensure that the patent
in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.” Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 73). Beyond the question
of ultimate meaning of the ‘inventive concept’ phrase,
other questions abound. When we search for this signifi-
cantly more ‘inventive concept,’ are we limited to the
limitations of a particular claim in the patent? If not
limited to the limitations in the individual claim, then
what? Do the written description and the scope of other
claims in the patent come into play, as perhaps they did
in Step 1?
And adding a little more complexity to the matter, the
Supreme Court has recognized that “[a]t some level, ‘all
inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.’”
Id. at 2354 (quoting Mayo, 566 U.S. at 71). With that in
mind, we are left to ponder at what level of abstraction do
we focus—put another way, how deep into the ‘elements’
do we dig when we search for that which is not ‘abstract,’
or for that non-abstract combination that saves an other-
wise ‘abstract idea’ patent claim?
When the ‘abstract idea’ notion appeared in the law
back in the 19th century, the requirement for ‘invention’
10 INTERVAL LICENSING LLC v. AOL, INC.

in its many variants—currently ‘inventive concept’—was
also part of patent law. Then, as now, it seemed logical
that something claiming to be an invention should have
something called an ‘inventive concept’ at its core. And as
a literary construct that is unexceptional.
As a decisional construct for validation of a property
right—a patent—the idea of a necessarily underlying
‘inventive concept’ proved unworkable. The concept pro-
vided no discernable boundaries for decision-making in
specific cases, resulting in an incoherent legal rule that
led to arbitrary outcomes. Judge Rich, who devoted his
life to patent law, saw this clearly, and gave the Congress
a workable alternative—nonobvious subject matter—
which they adopted.
The modern Supreme Court inherited this body of
formulaic doctrine, and we now expect the Court to make
sense of it. That they have failed is less a commentary on
their efforts than on the absence of recognition of the
problem on the part of the lawyers and judges who con-
tinue to treat these doctrines as if they were gospel. 15
The Emperor Has No Clothes
My purpose in this discussion is not to critique the
Court’s handiwork, but rather to highlight the number of
unsettled matters as well as the fundamental problems
that inhere in this formulation of ‘abstract ideas.’ In the

15 See Amy L. Landers, Patentable Subject Matter as
a Policy Driver, 53 Hous. L. Rev. 505, 517–18 (2015)
(“Like an ice sculpture that is shaped by the parts that
have been chipped away, the legal definition of invention
is shaped by its exceptions. Decisions lack clarity. Their
reasoning rests heavily on a limited field of precedent that
is, in turn, written in opaque terms during a different
technological era.” (footnote omitted)), and sources cited
therein.
INTERVAL LICENSING LLC v. AOL, INC. 11

short expanse available in a court opinion (and in the
reader’s patience), it is not possible for me to recite all the
issues and all the problems with the current law of ‘ab-
stract ideas’ and its ‘inventive concept’ offspring.
I do, however, want to go on record as joining my col-
leagues who have recently expressed similar views about
the current state of our patent eligibility jurisprudence,
and to incorporate by reference their wisdom concerning
the matter. Judge Richard Linn, concurring and dissent-
ing in Smart Systems Innovations, LLC v. Chicago Trans-
it Authority, 16 critiqued at length the ‘abstract ideas’ idea,
both in general and as specifically applied in that case.
More recently, Judge Alan Lourie, concurring in the
denial of en banc rehearing in Berkheimer v. HP Inc., and
referring to the complex of issues in our current § 101
jurisprudence, wrote that “the law needs clarification by
higher authority, perhaps by Congress, to work its way
out of what so many in the innovation field consider are
§ 101 problems.” 17
I welcome their attention to this—when two of our
leading judges who have devoted their careers to the
practice and explication of patent law publicly proclaim
that there is a real problem, there is a real problem. I do
not mean to suggest that they are the only two such
judges on the court—to my knowledge, other than myself,
they are the only two who have gone on record in such
clear terms regarding the law of ‘abstract ideas.’
There is almost universal criticism among commenta-
tors and academicians that the ‘abstract idea’ idea has
created havoc in the patent law. The testimonials in the

16 873 F.3d 1364, 1376 (Fed. Cir. 2017) (Linn, J.,
concurring-in-part and dissenting-in-part).
17 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Lourie, J.,
concurring in the denial of rehearing).
12 INTERVAL LICENSING LLC v. AOL, INC.

blogs and elsewhere to the current mess regarding our
§ 101 jurisprudence have been legion. 18 There has even
been a call for abolishing § 101 by the former head of the
Patent and Trademark Office. 19
This view is shared by many patent practitioners. 20 A
§ 101 defense is widely employed, and often successful.
For example, in the period following Alice until April 30,
2017, one study reported that the federal courts invali-
dated patents on § 101 grounds in 330 out of 488 deci-
sions. See Bilski Blog, #Alicestorm: April Update and the
Impact of TC Heartland on Patent Eligibility (June 1,

18 Regarding patent blogs, see just about any issue
of Law360; regarding the innovation community, see, e.g.,
Intellectual Prop. Owners Ass’n, Section 101 Legislation
Task Force, Proposed Amendments to Patent Eligible
Subject Matter Under 35 U.S.C. § 101 (2017),
http://www.ipo.org/wp-
content/uploads/2017/02/20170224_IPO-101-TF-Proposed-
Amendments-and-Report_final.pdf.
19 See Ryan Davis, Kappos Calls for Abolition of Sec-
tion 101 of Patent Act, Law360 (Apr. 12, 2016),
http://www.law360.com/articles/783604/kappos-calls-for-
abolition-of-section-101-of-patent-act.
20 See, e.g., Peter Leung, The Federal Circuit’s Sec-
tion 101 Uncertainty, Managing Intellectual Prop. (Sept.
29, 2015) (“Frustrated IP practitioners are hoping the
court will soon change from telling them what is not
eligible to providing some guidance on what is.”),
http://www.managingip.com/Article/3491780/Latest-
News-Magazine/The-Federal-Circuits-Section-101-
uncertainty.html; Ryan Davis, Major [Companies], IP
Groups Call For Clearer USPTO Alice Rules, Law360
(Nov. 2, 2015), https://www.law360.com/articles/722015/
major-cos-ip-groups-call-for-clearer-uspto-alice-rules.
INTERVAL LICENSING LLC v. AOL, INC. 13

2017). 21 According to the same report, the Patent Trial
and Appeal Board has invalidated patents on § 101
grounds in 90 out of 92 covered business method review
final written decisions. Id.
These defenses are a shortcut way for alleged infring-
ers to try for a quick dismissal of the infringement charge
on the grounds that the invention underlying the in-
fringement suit was never entitled to a patent. If success-
ful, it saves having to go to the effort of proving in a full-
dress law suit one of the statutory invalidity defenses
found in §§ 102, 103, and 112 of the Patent Act. 22
Indeed, some of these shortcut cases now arrive on
appeal following a trial court’s summary judgment, or in
some cases, even following a judgment on the pleadings or
motion for dismissal. This has the effect of ensuring a
minimal record or virtually no record at all on which an
appeal can sensibly be judged. 23

21 http://www.bilskiblog.com/blog/2017/06/alicestorm-
april-update-and-the-impact-of-tc-heartland.html.
22 See Paul R. Gugliuzza & Mark A. Lemley, Can a
Court Change the Law by Saying Nothing?, 71 Vand. L.
Rev. 765, 777 n.70 (2018), quoting Saurabh Vishnubha-
kat, The Antitrusting of Patentability, 48 Seton Hall L.
Rev. 71, 104 (2017) for the proposition that “‘[c]ourts’ use
of subject-matter eligibility as a shortcut to other patent-
ability requirements appears to offer significant savings
in decision cost,’ but that ‘these savings likely come at the
expense of higher error costs.’”
23 But see Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018) (observing that “[w]hether some-
thing is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual de-
termination”); Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018).
14 INTERVAL LICENSING LLC v. AOL, INC.

There is little consensus among trial judges (or appel-
late judges for that matter) regarding whether a particu-
lar case will prove to have a patent with claims directed to
an abstract idea, and if so whether there is an ‘inventive
concept’ in the patent to save it. In such an environment,
from the viewpoint of counsel for the defense, there is
little to be lost in trying the § 101 defense. We are left
with a process for finding abstract ideas that involves two
redundant steps and culminates with a search for a
concept—inventiveness—that some 65 years or so ago was
determined by Congress to be too elusive to be fruitful. Is
it any wonder that the results of this process are less than
satisfactory?
It would not be useful, or even fair, to fault today’s
Supreme Court for trying to find some way to decide what
is an abstract idea, or at the least for trying to find a way
to decide the question. Or to fault this court for doing its
best to honor the Supreme Court’s formula, even when
the results demonstrated that the test did not produce
coherent, readily understandable, replicable, and demon-
strably just outcomes. The Supreme Court inherited the
‘abstract ideas’ idea from cases decided at a time when it
probably sounded reasonable and had little impact. With
the rise of software and business method patents, the
‘abstract idea’ became a weapon of choice for summary
execution of what many decried as ‘bad’ patents. The
problem is that it does not distinguish good from ill in any
coherent sense, and thus does not serve well either patent
law or the public.
When the lawyers and judges bring to the Supreme
Court a shared belief in the uselessness of the abstract
notion of ‘abstract ideas’ as a criterion for patent eligibil-
ity, we can hope that the Court will respond sensibly. In
light of the statutory criteria for patent validity estab-
lished in the Patent Act, there is no need, and indeed no
place in today’s patent law, for this abstract (and indefin-
able) doctrine. Something as simple as a declaration by
INTERVAL LICENSING LLC v. AOL, INC. 15

the Court that the concept of ‘abstract ideas’ has proven
unworkable in the context of modern technological patent-
ing, and adds nothing to ensuring patent quality that the
statutory requirements do not already provide, would
remove this distraction from the salutary system of pa-
tent issuance and enforcement provided by the Congress
in the 1952 Patent Act.
The problem with hoping for this solution is that
there is no particular incentive for the Supreme Court to
immerse itself again in this intellectual morass. The
Court, unlike this court, is not called upon daily to ad-
dress the consequences of an incoherent doctrine that has
taken on a life of its own. It will take a special effort by
the judges and the patent bar to gain the Court’s atten-
tion. Failing that, a legislative fix is a possibility, though
waiting for that may be the ultimate test of patience.
In the interim, a district court in an appropriate case
might choose to exercise control over its docket by in-
structing a defendant who raises an ‘abstract ideas’ § 101
defense that the court will defer addressing that defense
until first having the issues in §§ 102, 103, and 112 ad-
dressed. This need not be viewed as offending existing
law since the ‘abstract ideas’ test would remain in the
case, as would the Alice process; only the timing would
change.
There would be a shift in trial court process from the
current notion, held by some, that a determination of
patent eligibility under § 101 is necessarily the first thing
to be decided in every case. That notion can still remain
true for cases challenging a patent on laws of nature and
natural phenomenon grounds; only because of the prob-
lems inherent in testing for ‘abstract ideas’ would the
§ 101 test be delayed until determinations are made
under the statutory standards that Congress established.
What would be the consequences of such a procedural
delay? Even a cursory look at the claims in our recent
16 INTERVAL LICENSING LLC v. AOL, INC.

§ 101 ‘abstract ideas’ cases suggests how many of those
cases would just go away as soon as the well-understood
statutory criteria are applied to the challenged claims,
especially the question of whether the claimed invention
is new or just a replay of prior art (see § 103). Those who
would quail at the supposed burden this might place on
the trial judges should remember that is what trial judges
do. And besides, the trial judges have already started
using an alternative along the same lines: many patent
infringement suits are now being stayed by the trial
courts when there is a reference of the patent eligibility
and validity issues (depending on the kind of case) to the
Patent Trial and Appeal Board under the expedited
procedures of the America Invents Act. 24
Whether this court should take the initiative and in-
struct the trial courts to follow such a procedure raises
somewhat more difficult questions. We have generally
left the case management of those courts to the courts
themselves, or to the circuit courts of appeal to which they

24 See Harness Dickey, A Look at Forty-Five Months
of Inter Partes Review Proceedings Before the United
States Patent and Trademark Office, http://ipr-
pgr.com/wp-content/uploads/2016/08/IPR-PGR-Report-
Vol-14.pdf (Aug. 24, 2016) (finding that 61% of all con-
tested requests to stay were granted from September 16,
2012 to June 16, 2016 in the inter partes review context);
Morgan Lewis, 2017 PTAB Digest: The Latest Trends and
Developments in Post-Grant Proceedings, at 26,
https://www.morganlewis.com/-/media/files/publication/
report/ptab-post-grant-proceedings_fin_screen.ashx (2017)
(estimating that 58% of all contested requests to stay
were granted as of June 1, 2016 in the inter partes review
context and that 61% of all contested requests to stay
were granted in the same period in the covered business
method review context).
INTERVAL LICENSING LLC v. AOL, INC. 17

normally report. For these reasons among others, our
court presumably should have little difficulty with re-
specting a district court’s decision about how best to
manage its own docket.
Regardless of what other courts may do, an appellate
court’s job is not only to decide the immediate case before
it, but also to rationalize and regularize the law to be
applied in future similar cases. Judge Rich believed that
words have meaning; 25 years earlier Professor Wittgen-
stein expressed well that same thought: “What can be
said at all can be said clearly, and what we cannot talk
about we must pass over in silence. . . . The limits of my
language mean the limits of my world.” 26
This emperor clearly has no clothes; we need not wait
for our children to tell us this. 27 The legitimate expecta-
tions of the innovation community, as well as basic no-
tions of fairness and due process, compel us to address
this § 101 conundrum.

25 Giles S. Rich, Escaping the Tyranny of Words—Is
Evolution in Legal Thinking Impossible?— in Nonobvi-
ousness—The Ultimate Condition of Patentability 3:301.
26 Ludwig Wittgenstein, Tractatus Logico-
Philosophicus, Preface at 3, Proposition 5.6 (1922).
27 See Hans Christian Andersen, The Annotated
Hans Christian Andersen 3–16 (Maria Tatar, ed., trans.,
& contributor, Julie Allen, trans. & contributor, 1st ed.
2008).