Ghost in the "New Machine": How Alice Exposed Software Patenting's Category Mistake

July 13, 2015

The Alice Court’s characterization of computer programming has effectively repudiated, inter alia, the doctrine that programming a general-purpose computer creates a patent-eligible “new machine.” This Article revisits In re Bernhart, the first holding based on the “new machine” principle, concluding that the Court of Customs and Patent Appeals committed a category mistake in conducting its nonobviousness analysis. This suggests that § 101 has a unique role to play in ensuring the analytical coherence of the other tests for patentability, and that step two of the Mayo/Alice test could helpfully enforce the doctrinal distinction between a patent-eligible “method or means” and an unpatentable “result or effect.”