Charles Duan

Document Type




A firestorm of debate has surrounded the Supreme Court of the United States’s 2014 decision Alice Corp. Pty. Ltd. v. CLS Bank International on the doctrine of patentable subject matter eligibility under 35 U.S.C. § 101. As the Court’s leading articulation of doctrine, which generally excludes from patenting abstract ideas, laws of nature, and natural phenomena, Alice has been criticized as unpredictably vague and overly constrictive of patentability, with the effect of “decimating” patents, innovation, technological investment, and even the United States’ competitiveness against other nations. To support these criticisms and calls for reform, scholars and practitioners have frequently turned to empirical analysis of patent examination data showing major changes to patent examination outcomes after Alice, to argue that the decision had dramatic and negative consequences in its immediate wake. These criticisms and empirical analyses are influencing policy: Senator Thom Tillis introduced legislation amending § 101 on June 22, 2023.

Viewing Alice in isolation, its effects seem obvious: increases in rejections under § 101 and decreases in granted patents in fields such as computer software that the decision directly addressed. Yet context matters, and the relevant context here—the development of patent eligibility law before the 2014 decision—has gone largely unstudied. Indeed, at least some commentators assume that the pre-Alice period was a relatively peaceful time for subject matter eligibility with little doctrinal development other than the Supreme Court’s interventions.

In this Article, I challenge the failure to consider this context in understanding the impact of Alice, and consequently challenge the assumption that Alice was a major and unprecedented change at all. Instead, I posit a novel alternate account of § 101’s development, in which the key turning point was a little-noticed 2011 Federal Circuit decision called Ultramercial, LLC v. Hulu, LLC (“Ultramercial I”). That case revived an archaic and controversial doctrine of software patent eligibility that spawned a wave of patents particularly directed to methods of doing business. Alice, three years later, is better understood as a correction of this erroneous appellate decision and a restoration of pre-2011 eligibility law—hardly the revolution that Alice has been made out to be.



To view the content in your browser, please download Adobe Reader or, alternately,
you may Download the file to your hard drive.

NOTE: The latest versions of Adobe Reader do not support viewing PDF files within Firefox on Mac OS and if you are using a modern (Intel) Mac, there is no official plugin for viewing PDF files within the browser window.