T. Vann Pearce, Jr. Partner, Patents, 3D Printing
Washington, D.C.
3D printing technology evolves through advances in software, hardware, materials, or some combination of those three. Inventions in 3D printing hardware and materials are eligible for U.S. patent protection. Software is a different story. The U.S. Supreme Court’s Alice decision sets a tough-to-meet standard for patenting software-implemented inventions. Under Alice, if an invention is directed to an “abstract idea”—and many software-implemented inventions are—then to be patent-eligible the invention must contain an “inventive concept” that transcends mere computer implementation of code. Conversely, inventions that “use a computer merely as a tool” are frequently found to be “abstract ideas” lacking an “inventive concept.”
Many in the patent world feared that Alice had sounded the death knell for software patents. While Alice’s consequences have not been quite that dire, software patents have been in trouble. The Court of Appeals for the Federal Circuit has invalidated most software-implemented patents it has examined under Alice’s “inventive concept” test. Important exceptions do exist, however. Inventions that relate to “improving the functioning of a computer”—or another technological platform, such as a network—have a significantly higher chance of being found patent eligible. Examples of inventions found by the Federal Circuit to be patent eligible have included: an improved process of detecting systematic errors in data transmissions (Koninklijke KPN N.V. v. Gemalto M2M GmbH), storing a verification structure in computer memory to address hacking vulnerabilities (Ancora Techs. Inc. v. HTC America, Inc.), and a method for navigating complex 3D electronic spreadsheets (Data Engine Techs. LLC v. Google LLC).
In the field of 3D printing, Alice and its progeny have far-reaching implications. If software is at the heart of a 3D printing process, then it may be difficult to acquire patent protection at all. Even if parts of the software are patentable, unprotected elements may create a loophole for duplication. But Alice did not extinguish all hope. 3D printing software that works to improve existing printing processes or solve current printing problems could be found to pass Alice’s test, and would therefore be patent eligible.
Nearly six years have passed since the Supreme Court’s Alice decision. While the Federal Circuit has provided guidance on distinguishing patent eligible inventions from mere computer-implemented applications of abstract ideas, the state of software patenting remains unsettled. Mistakes in describing and claiming an invention may doom an otherwise meritorious patent application. Inventors should consult experienced patent counsel who understand both Alice caselaw and 3D printing technology when planning and executing their intellectual property strategy.
The graphic below illustrates the Alice test. Following that graphic is a chart summarizing all precedential decisions from the Federal Circuit post-Alice determining whether or not claims are patent-eligible. We will keep this chart updated as new decisions are issued.
Case | Claimed Invention | Result | |
Alice Corp. v. CLS Bank (June 19, 2014) |
Method of computerized risk mitigation in financial settlements |
✘ Step 1 |
NOT Patent Eligible Why? Risk mitigation is a long-standing “fundamental economic practice” (step 1) and the claims merely required generic computer implementation (step 2) |
Digitech (July 11, 2014) |
Method of digital image processing; used “device profiles” to organize devices’ spatial and color properties |
✘ Step 1 |
NOT
Patent Eligible |
buySAFE v. Google (Sep. 3, 2014) |
Online transaction performance guarantee |
✘ Step 1 |
NOT
Patent Eligible |
Ultramerical v. Hulu (Nov. 14, 2014) |
Internet-distribution of copyright material |
✘ Step 1 |
NOT
Patent Eligible |
DDR Holdings v. Hotels.com (Dec. 5, 2014) |
Method of retaining website visitors |
✔ Step 1 |
Patent Eligible |
Univ. of Utah Research Found. v. Ambry
Genetics (Dec. 17, 2014) |
DNA primers for breast and ovarian cancer genes |
✘ Step 1 |
NOT
Patent Eligible |
OIP Technologies, Inc. v.
Amazon.com (June 11, 2015) |
E-commerce price determination |
✘ Step 1 |
NOT
Patent Eligible |
Ariosa Diagnostics, Inc. v.
Sequenom, (June 12, 2015) |
Prenatal genetic testing |
✘ Step 1 |
NOT
Patent Eligible |
Internet Patents v. Active
Network (June 23, 2015) |
Dynamic tabs in a GUI |
✘ Step 1 |
NOT
Patent Eligible |
Intellectual Ventures I
LLC v. Capital One Bank (July 6, 2015) |
Customized webpages for financial account services |
✘ Step 1 |
NOT
Patent Eligible |
Versata Development Group v.
SAP America (July 9, 2015) |
Method to determine price of products |
✘ Step 1 |
NOT
Patent Eligible |
Mortgage Grader, Inc. v.
First Choice Loan Services Inc. (Jan. 20, 2016) |
Loan financing evaluator |
✘ Step 1 |
NOT
Patent Eligible |
In re Smith (Mar. 10, 2016) |
Method for operating blackjack game |
✘ Step 1 |
NOT Patent Eligible |
Genetic Tech. Ltd. v. Merial
LLC (Apr. 8, 2016) |
DNA sequence analysis |
✘ Step 1 |
NOT
Patent Eligible |
Enfish v. Microsoft (May 12, 2016) |
Improvement to database system’s memory configuration |
✔ Step 1 |
Patent Eligible |
In re TLI Communications
Patent Litigation (May 17, 2016) |
Method for taking, transmitting and organizing digital images |
✘ Step 1 |
NOT
Patent Eligible |
Bascom (June 27, 2016) |
Method for filtering content on the internet through an ISP server |
✘ Step 1 |
Patent Eligible |
Rapid Litigation Management
v. Cellzdirect (July 5, 2016) |
Cryogenically freezing liver cells |
✔ Step 1 |
Patent Eligible |
Electric Power Group v.
Alstom (Aug. 1, 2016) |
Method of analyzing data to determine power grid stability, and displaying that data in a human-readable format |
✘ Step 1 |
NOT
Patent Eligible |
McRO v. Sony (Sept. 13, 2016) |
Methods for automatically animating 3D characters’ lip synchronization and facial expressions |
✔ Step 1 |
Patent Eligible |
Affinity Labs v. DirecTV (Sept. 23, 2016) |
Method for streaming regional broadcast signals to faraway cell phones |
✘ Step 1 |
NOT
Patent Eligible |
Affinity Labs v. Amazon (Sept. 23, 2016) |
System for delivering streaming media on-demand to a handheld wireless electronic device |
✘ Step 1 |
NOT
Patent Eligible |
Intellectual Ventures v. Symantec (Sept. 30, 2016) |
Method for detecting a computer virus in communications, and inhibiting the infected communication |
✘ Step 1 |
NOT
Patent Eligible |
FairWarning IP v. Iatric
Systems (Oct. 11, 2016) |
Method for fraud detection that scans for unusual patterns in users’ accessing sensitive data |
✘ Step 1 |
NOT
Patent Eligible |
Synopsys v. Mentor Graphics Corp. (Oct. 17, 2016) |
Logic circuit generation from hardware description |
✘ Step 1 |
NOT
Patent Eligible |
Amdocs v. Openet Telecom (Nov. 4, 2016) |
Method for helping ISPs track customer usage and generate bills without congesting the network or limiting data accessibility |
? Step 1 |
Patent Eligible Why? The claims did not combine the components in a generic manner, and most of the claims included sufficient structural limitations to render them patent eligible. |
Apple v. Ameranth (Nov. 29, 2016) |
Menu transmission and generation |
✘ Step 1 |
NOT
Patent Eligible |
Intellectual Ventures v.
Capital One (March 7, 2017) |
Editing XML documents |
✘ Step 1 |
NOT
Patent Eligible |
Intellectual Ventures v. Erie
Indemnity (March 7, 2017) |
Using an index to locate desired information in a computer database |
✘ Step 1 |
NOT
Patent Eligible |
Intellectual Ventures v. Erie
Indemnity (March 7, 2017) |
A mobile interface for accessing a user’s remotely stored data and files |
✘ Step 1 |
NOT
Patent Eligible |
Thales Visionix v. United
States (March 8, 2017) |
Inertial tracking system for tracking the motion of an object relative to a moving reference frame |
✔ Step 1 |
Patent Eligible |
Mentor Graphics v EVE-USA (Mar. 16, 2017) |
Method for debugging source code after synthesis |
? Step 1 |
NOT Patent Eligible Why? “Carrier waves” are similar to transitory signals, which are not a patent-eligible “process, machine, manufacture, or composition of matter.” |
Recognicorp v. Nintendo (Apr. 28, 2017) |
Methods for encoding and decoding image data to create and reproduce a composite image |
✘ Step 1 |
NOT
Patent Eligible |
Credit Acceptance v. Westlake Services (June 9, 2017) |
System and method for generating finance packages for dealer car inventory |
✘ Step 1 |
NOT Patent Eligible
|
Cleveland Clinic v. True Health Diagnostics (June 16, 2017) |
Methods for detecting MPO in blood and determine risk of cardiovascular disease |
✘ Step 1 |
NOT Patent Eligible
|
Visual Memory v. NVIDIA (Aug. 15, 2017) |
Memory system configurable for use with multiple processors |
✔ Step 1 |
Patent Eligible |
Return Mail v. U.S. Postal Service (Aug. 28, 2017) |
Method for processing “undeliverable” mail |
✘ Step 1 |
NOT Patent Eligible |
Secured Mail Solutions v. Universal Wilde (Oct. 16, 2017) |
Methods for mail tracking and identification |
✘ Step 1 |
NOT Patent Eligible |
Smart Systems Innovations v. Chicago Transit Authority, et al. (Oct. 18, 2017) |
System and method for implementing open-payment fare systems in mass transit networks |
✘ Step 1 |
NOT Patent Eligible |
Two-Way Media v. Comcast (Nov. 1, 2017) |
System for streaming audio/visual data over a communications system |
✘ Step 1 |
NOT Patent Eligible |
Finjan, Inc. v. Blue Coat Sys. (Jan. 10, 2018) |
Computer security method that scans a downloadable file and creates a “security profile” |
✔ Step 1 |
Patent Eligible |
Core Wireless Licensing S.A.R.L. v. LG Electronics (Jan. 25, 2018) |
Display interfaces that make data more easily accessible |
✔ Step 1 |
Patent Eligible |
Berkheimer v. HP (Feb. 8, 2018) |
Method for archiving an item in a computer |
✔ Step 1 |
Undecided – Presented Factual Issue Not Appropriate for SJ |
Vanda Pharms. v. West-Ward Pharms (Apr. 13, 2018) |
Method of treating schizophrenia patients with dosage of iloperidone based on patient’s genotype |
✔ Step 1 |
Patent Eligible |
Voter Verified, Inc. v. Election Sys. & Software (Apr. 20, 2018) |
Methods and systems for “auto-verification” of voters’ ballots |
✘ Step 1 |
NOT Patent Eligible |
Interval Licensing v. Online service provider (U.S.) (Jul. 20, 2018) |
Attention manager that displays content in device’s unused capacity as a wallpaper or screensaver |
✘ Step 1 |
NOT Patent Eligible |
SAP America, Inc. v. InvestPic, LLC (Aug. 2, 2018) |
System and methods for performing statistical analysis of financial data |
✘ Step 1 |
NOT Patent Eligible |
BSG Tech v. Buyseasons (Aug. 15, 2018) |
Systems and methods for indexing database information |
✘ Step 1 |
NOT Patent Eligible |
Data Engine Techs. LLC v. Google LLC (Oct. 9, 2018) |
(1)
Specific improved method for navigating through complex three-dimensional
electronic spreadsheets (2) Method for (i) organizing a three-dimensional spreadsheet, and (ii) tracking changes to data in spreadsheets
|
✔ Step 1 ✘ Step 1 |
(1) Patent Eligible Why? Claims not directed to an abstract idea because they provide a specific technical solution and improvement in electronic spreadsheet functionality over prior art electronic spreadsheets. (2) NOT Patent Eligible Why? Claims are directed to abstract idea of (i) “identifying and storing electronic spreadsheet pages,” and (ii) “collecting, recognizing, and storing changed information,” and merely recite generic steps for implementing each abstract idea itself. |
Roche Molecular Sys., Inc. v. Cepheid
|
Methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (“MTB”) |
✘ Step 1 |
NOT Patent Eligible |
Ancora
Techs., Inc. v. HTC America, Inc. |
Methods of limiting a computer’s running of software not authorized for that computer to run |
✔ Step 1 |
Patent Eligible |
In re Marco Guldenaar Holding B.V. |
Method of playing a dice game |
✘ Step 1 |
NOT Patent Eligible |
Athena Diagnostics, Inc. v. Mayo Collab Svcs, LLC |
Methods for diagnosing neurological disorders by detecting antibodies to a certain protein (muscle-specific tyrosine kinase (“MuSK”)) |
✘ Step 1 |
NOT Patent Eligible |
Univ. of Florida Research Foundation, Inc. v. General Electric Co. |
Method for integrating physiologic treatment data |
✘ Step 1 |
NOT Patent Eligible |
Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC |
Methods of treatment using beta-alanine, dietary supplements incorporating beta-alanine, and the use of beta-alanine to manufacture dietary supplements |
✔ Step 1 |
Patent Eligible |
SRI Int’l, Inc. v. Cisco Sys., Inc. |
Method of hierarchical event monitoring and analysis within an enterprise network |
✔ Step 1 |
Patent Eligible |
Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc. |
Method of using oxymorphone to treat pain in patients with impaired kidney function |
✔ Step 1 |
Patent Eligible |
Cellspin Soft, Inc. v. Fitbit, Inc. |
Method for acquiring and transferring data from a Bluetooth enabled data capture device to web services via a Bluetooth enabled mobile device |
✔ Step 1 |
Undecided – District court erred by not accepting Cellspin’s well-pleaded allegations as true with respect to whether its patents capture, transfer, and publish data in a way that is plausibly inventive. |
Solutran, Inc. v. Elavon, Inc. |
System and method for processing paper checks |
✘ Step 1 |
NOT Patent Eligible |
SRI Int’l, Inc. v. Cisco Sys., Inc. |
Using network monitors to detect suspicious network activity, generating reports of the suspicious activity, and integrating the reports using hierarchical monitors |
✔ Step 1 |
Patent Eligible |
MyMail, Ltd. v. ooVoo, LLC |
Methods of modifying toolbars that are displayed on internet-connected devices (e.g., PCs) |
? Step 1 |
Undecided – Declined to determine in the first instance patent eligibility based on any proposed claim constructions. |
Genetic Veterinary Sciences, Inc. v. LABOKLIN GmbH & Co. KG |
In vitro methods for genotyping Labrador Retrievers, in order to discover whether the dog might be a genetic carrier of the disease HNPK |
✘ Step 1 |
NOT Patent Eligible |
The Chamberlain Group, Inc. v. Techtronic Industries Co. |
Apparatus and method for communicating information about the status of a movable barrier (e.g., a garage door) |
✘ Step 1 |
NOT Patent Eligible |
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC |
Method of manufacturing a driveline propeller shaft containing a liner designed such that its frequencies attenuate two modes of vibration simultaneously |
✘ Step 1 |
NOT Patent Eligible |
Koninklijke KPN N.V. v. Gemalto M2M GmbH et al. |
An improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not |
✔ Step 1 |
Patent Eligible |
Customedia Techs., LLC v. Dish Network Corp. |
Systems for comprehensive data management and processing that include, e.g., a remote Account Transaction Server (ATS) and local host Data Management System and Audio/Video Processor Recorder-player (VPR/DMS) |
✘ Step 1 |
NOT Patent Eligible |
Illumina, Inc. et al. v. Ariosa Diagnostics, Inc. et al. |
Methods of preparing a fraction of cell-free DNA that is enriched in fetal DNA |
✔ Step 1 |
Patent Eligible (at Step 1) |
Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al. |
Methods for authorizing and clearing financial transactions to detect and prevent fraud |
✘ Step 1 |
NOT
Patent Eligible |
Ericsson Inc. et al. v. TCL Communication Technology Holdings Ltd. et al. |
A system and method for controlling access to a platform for a mobile terminal for a wireless telecommunications system |
✘ Step 1 |
NOT
Patent Eligible |
CardioNet, LLC et al. v. InfoBionic, Inc. |
A device for detecting and reporting the presence of atrial fibrillation or atrial flutter in a patient |
✔ Step 1 |
Patent Eligible (at Step 1) |
In re Rudy |
A method for fishing |
✘ Step 1 |
NOT
Patent Eligible |
Uniloc USA, Inc. et al. v. LG Electronics USA, Inc. et al. |
A communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or keyboard) |
✔ Step 1 |
Patent Eligible (at Step 1) |
Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC |
An automated notification system |
✘ Step 1 |
NOT
Patent Eligible |
Packet Intelligence LLC v. NetScout Systems, Inc. |
A packet monitor for examining packets passing through a connection point on a computer network |
✔ Step 1 |
Patent Eligible |
XY, LLC v. Trans Ova Genetics, LC |
An improved method of sorting particles using flow cytometry technology |
✔ Step 1 |
Patent Eligible |
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC |
(1) Method of manufacturing a driveline propeller shaft containing a liner designed such that its frequencies attenuate two modes of vibration simultaneously (2) Same as (1) with the additional step of “positioning” |
(1) (2) |
(1) (2) |
Illumina, Inc. et al. v. Ariosa Diagnostics, Inc. et al. |
Methods of preparing a fraction of cell-free DNA that is enriched in fetal DNA |
✔ Step 1 |
Patent Eligible |
= Orrick Client Wins
Washington, D.C.
Washington, D.C.
He also counsels clients on patent licensing, portfolio development, and intellectual property due diligence. Vann co-founded Orrick's 3D printing practice.
In 2022-2023, Vann served as the Chief Practice Officer for the firm's IP & Litigation Business Units, which comprise nearly 400 attorneys globally. His responsibilities included oversight of the units' financial performance, business planning and execution, and lawyer recruiting. Vann also previously served as the firm’s U.S. Law School Hiring Partner, overseeing entry-level hiring nationwide.
Washington, D.C.
Washington, D.C.
Chris has developed a global reputation as an authoritative source on legal issues in 3D printing, and has been a featured speaker at 3D printing events around the world. His 3D printing practice includes advising startups and established 3D printing companies on all aspects of intellectual property law, cybersecurity, and technology transactions. Chris helps 3D printing clients grow their businesses and capitalize on market opportunities and represents them in court to defend or enforce IP rights. Chris' 3D printing work extends beyond the courtroom; he teaches a course at Penn State University as part of its Masters of Engineering in Additive Manufacturing and Design program.
Chris' patent litigation and IPR practice also covers a wide range of other technologies including graphics processing, digital image processing and printing, semiconductor devices and semiconductor manufacturing, data encryption, high-definition television, digital content recognition, and medical devices. Chris has also assisted clients with licensing and patent prosecution related to 3D printing, digital imaging, wireless technology, mobile communication devices, encryption, high-definition television and medical devices.
Prior to law school, Chris worked in the patent department of a medical device company and as an engineer designing electronic components for missiles, projectiles, and bombs.