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-cv00266-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 represented 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 defendantappellee 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, Washington, 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 invalidating 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 premised on an incorrect construction of the claim term “attention 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 nonoverlapping way, on a display screen. The claimed “attention 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 information 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 segregates 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 network 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 capacity’” 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 content 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 specification labels the first situation as the “screen saver embodiment” 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 background display of the screen, as is the case with traditional 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 alreadydisplayed first set of data—is what Interval itself advanced 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 interaction 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, spreadsheets, 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 interaction” 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 interaction 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 attention manager relies on acquiring content from a content 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 examples, such as advertisements, nature scenes, family pictures, 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 implementation 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 images generated from the set of content data on a 

display device during operation of an attention 

manager, comprising:

[1] acquisition instructions for enabling acquisition of a set of content data from a specified information source;

[2] user interface installation instructions for enabling 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 previously 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 operating 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 acquisition 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 instructions 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 operation 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 “conventional and readily available for use with the attention 

manager.” Id. col. 16 l. 15. The [3] content data scheduling 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 instructions 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 arranged 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, scheduling, 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 ascertain 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 inventive concept for implementing the abstract idea, 

reasoning that “the elements of the asserted claims are 

purely conventional and do no more than apply the abstract 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 relevant 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 wellunderstood, 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 disputed 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 composition 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 twostep 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 challenge 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 method 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, “established 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 particular technical solution to a problem, whether for cutting 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 reaffirmed 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 technological 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 whatsoever.”). 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 claiming 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 improvements” 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 improvements 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 “designed to improve the way a computer stores and retrieves 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 patenteligible). 

Other software-based claimed inventions, however,

have failed to pass section 101 muster, because they did 

not recite any assertedly inventive technology for improving 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 sufficiently 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 information 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 disrupting 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 meeting 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 concurrent 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 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)

(claims directed to abstract idea of “showing an advertisement 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 content from multiple electronic records ineligible under 

§ 101). Recitation, as in this case, of the collection, organization, 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” encompasses a patent-ineligible abstract concept rather 

than an arguably technical improvement to display devices, because the term as properly construed simply demands 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 “attention 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 instructions. 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 collecting 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. Although the claims include “display instructions,” those 

instructions are simply for “displaying the image” generated 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 information, 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 collection 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 highlights 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 necessary 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 permitting 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 presentation of acquired content. The specification explains that 

“[a]ny appropriate set of rules” can “be used for establishing 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 broadest, functional level, without explaining how that is 

accomplished, let alone providing a technical means for 

performing that function. Because the instructions discuss only broad functions and are not directed to any 

technological improvement for performing those functions, 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 physical display improvements, also avoided abstraction by 

adequate specificity as to how to achieve the improvements).

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 representative claim 18 individually or as an ordered combination, nothing in the claim converts the abstract idea to an 

inventive concept. It is well-settled that placing an abstract 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 patenteligible 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 information, 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 information, nor does it describe how the second set of information 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, generic 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 patenteligible 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 acquired 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 instructions 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. Interval Licensing does not, and cannot, contend that it is 

arguably inventive to enable a person to access information 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 patentable.”). 

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 connection, 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 specification—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 foregoing 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 patentineligible 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-cv00266-MJP, Judge Marsha J. Pechman, Senior Judge 

Barbara Jacobs Rothstein. 

______________________ 

PLAGER, Circuit Judge, concurring-in-part and dissentingin-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 explain, 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 description 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 issue 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 conceptualized 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 analytical 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 citation-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-sciencemakes-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 acquisition 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 something 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 articulation 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 substituting one set of vague notions for the other, with the 

same line-drawing problem? 

That the phrase ‘abstract ideas’ is a definitional morass can be seen in one simple fact—a search for a definition 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-yetunknown 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-ortransformation’ 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 examples 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 ‘abstract 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 ‘Abstract 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 decisional law, the ‘abstract ideas’ idea falls short in the sense 

of providing a trial judge with confidence that the judgment will be understood by the judges who come after, 

 

also the several opinions in this court’s CLS Bank International 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. Llewellyn, 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 opinion, 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 description, 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’ concept: 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 ‘inventive 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 concept’ 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” Requirement, 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 development 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. Witherspoon ed., 1980); Giles S. Rich, Principles of Patentability, 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 requirement’ phrase. He concluded his article with a series of 

propositions to reinforce “that when 103 has been complied 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 significantly 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 otherwise ‘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 provided 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 continue 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 ‘abstract ideas’ and its ‘inventive concept’ offspring. 

I do, however, want to go on record as joining my colleagues 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 dissenting in Smart Systems Innovations, LLC v. Chicago Transit 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 commentators 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 invalidated patents on § 101 grounds in 330 out of 488 decisions. 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/wpcontent/uploads/2017/02/20170224_IPO-101-TF-ProposedAmendments-and-Report_final.pdf. 19 See Ryan Davis, Kappos Calls for Abolition of Section 101 of Patent Act, Law360 (Apr. 12, 2016), 

http://www.law360.com/articles/783604/kappos-calls-forabolition-of-section-101-of-patent-act.

20 See, e.g., Peter Leung, The Federal Circuit’s Section 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/LatestNews-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 infringers to try for a quick dismissal of the infringement charge 

on the grounds that the invention underlying the infringement suit was never entitled to a patent. If successful, it saves having to go to the effort of proving in a fulldress 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/alicestormapril-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 Vishnubhakat, 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 patentability 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 something is well-understood, routine, and conventional to a 

skilled artisan at the time of the patent is a factual determination”); 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 appellate judges for that matter) regarding whether a particular 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 demonstrably 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 eligibility, we can hope that the Court will respond sensibly. In 

light of the statutory criteria for patent validity established in the Patent Act, there is no need, and indeed no 

place in today’s patent law, for this abstract (and indefinable) 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 patenting, and adds nothing to ensuring patent quality that the 

statutory requirements do not already provide, would 

remove this distraction from the salutary system of patent 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 address 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 attention. 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 instructing 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 addressed. 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 problems 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 instruct 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://iprpgr.com/wp-content/uploads/2016/08/IPR-PGR-ReportVol-14.pdf (Aug. 24, 2016) (finding that 61% of all contested 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 respecting 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 Wittgenstein 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 expectations of the innovation community, as well as basic notions 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 Nonobviousness—The Ultimate Condition of Patentability 3:301.

26 Ludwig Wittgenstein, Tractatus LogicoPhilosophicus, 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).