WURC vs. WORK: The Evidentiary Asymmetry Between § 101’s “Inventive Concept” and § 103’s Obviousness Framework
I. Introduction: A Nonprecedential Opinion That Says the Quiet Part Out Loud
On February 6, 2026, the Federal Circuit affirmed summary judgment of invalidity under 35 U.S.C. § 101 for all asserted claims across six patents in Innovaport LLC v. Target Corp., No. 24-1545 (Fed. Cir. Feb. 6, 2026) (nonprecedential). The patents claimed systems and methods for providing product location information within a retail store: receiving a customer’s query, searching a database containing product locations and related information, and returning results that included cross-referenced product suggestions. The court found the claims directed to the abstract idea of “collecting, analyzing, retrieving, and displaying information” at Alice step one, then concluded at step two that the additional elements added no “inventive concept.”
The result is nonprecedential and unsurprising, and is just the latest in a long line of Federal Circuit decisions invalidating software-implemented inventions under Alice/Mayo. But Innovaport warrants attention for two reasons.
First, the opinion makes explicit what has been implicit in the Federal Circuit’s § 101 jurisprudence for years: the court does not defer to the USPTO on questions of patent eligibility. The opinion states at the outset that “[t]he issue of patent-eligibility under § 101 is a question of law that we review without deference,” citing Rapid Litigation Management Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1046–47 (Fed. Cir. 2016). When Innovaport argued that its patents’ prosecution history supported a finding of eligibility, the court rejected the argument, citing Sanderling Management Ltd. v. Snap Inc., 65 F.4th 698 (Fed. Cir. 2023), for the proposition that “courts are not required to defer to Patent Office determinations as to eligibility.” The court further observed, quoting OIP Technologies, that “[p]atent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.”
This is not new law. But the pointed, repeated invocation of the no-deference principle in Innovaport (a case decided against the backdrop of Director Squires’ aggressive push to expand patent eligibility through administrative action) underscores a structural reality that patent practitioners must internalize: whatever the USPTO does on § 101, the Federal Circuit is not listening. The USPTO can revise its guidance, issue precedential PTAB decisions, amend the MPEP, and instruct examiners to channel eligibility questions into §§ 102, 103, and 112. The Federal Circuit will continue to apply its own precedent, without deference, when those same patents arrive in litigation.
Second, and more fundamentally, Innovaport provides a clean illustration of a structural problem in Alice/Mayo step two: the evidentiary asymmetry between § 101’s “inventive concept” inquiry and what an equivalent analysis would require under § 103. It is this second point, that is the gap between the Federal Circuit’s willingness to make conclusory findings of conventionality at step two and the evidentiary discipline that § 103 would demand, that forms the central thesis of this article.
At step two, the court dismissed the mobile device limitation because “the mobile device is a piece of generic hardware,” citing USAA v. PNC Bank, 139 F.4th 1332 (Fed. Cir. 2025). It rejected the cross-referencing and suggestion features as “merely the abstract ideas” themselves, citing BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018). And it concluded that the claims recited “nothing more than routine business steps, implemented on a computer.” No prior art was cited. No structured framework was applied. For the mobile device limitation, the court relied on the patents’ own disclosures to characterize the hardware as “generic,” a conventionality finding under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), but one made without prior-art evidence. For the cross-referencing and suggestion features, the court did not even reach conventionality, instead treating them as part of the abstract idea itself, holding that “even if these features were innovative, they do not render the claim as a whole patent eligible.” The court effectively collapsed two distinct analytical steps into a single conclusory determination, without the evidentiary apparatus that the law ostensibly requires.
This pattern has a name. Call it the WURC shortcut: the Federal Circuit’s reliance on the label “Well-Understood, Routine, and Conventional” (WURC) to dispose of claims at § 101 step two while avoiding the WORK that an equivalent analysis under § 103 would demand. The wordplay is intentional. A central thesis of this article is that the § 101 “inventive concept” inquiry has become a shadow obviousness doctrine, one that imports the core question of § 103 — is this inventive? — without the evidentiary discipline, structured framework, or procedural safeguards that § 103 provides. Innovaport‘s no-deference posture ensures that the USPTO cannot fix this problem unilaterally: the gap between examination and litigation standards is structural, not administrative, and will persist until Congress or the Supreme Court intervenes.
Before proceeding, a word about scope. This article focuses primarily on step two of the Alice/Mayo framework, where the WURC shortcut operates. Step one presents its own serious problems (discussed briefly in Section IV), but it is at step two where the conflation with § 103 is most acute and where the evidentiary asymmetry does its greatest damage. The two steps interact, of course: an overly broad characterization at step one narrows the universe of “additional elements” available at step two, compounding the problem. But the structural critique of WURC stands on its own.
II. The Evidentiary Gap: What § 103 Requires and § 101 Does Not
The comparison is stark.
Under § 103, a finding of obviousness must satisfy the four-factor framework established in Graham v. John Deere Co., 383 U.S. 1 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness, including commercial success, long-felt need, failure of others, and copying. Following KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the analysis is flexible but must still be supported by “articulated reasoning with some rational underpinning.” An obviousness challenge in litigation must be proven by clear and convincing evidence, a heightened standard that reflects the statutory presumption of validity under § 282.
Under § 101 step two, none of this is required. The court asks whether the claim elements, individually or as an ordered combination, amount to “significantly more” than the abstract idea, the so-called “inventive concept.” But the analytical framework for answering that question is undefined. There is no prior art requirement. There is no Graham-factor analysis. There are no secondary considerations. The evidentiary standard is, at best, unclear, and in practice, courts routinely make WURC determinations as conclusions of law without engaging with evidence at all. The burden of proof arguably operates in the opposite direction: rather than requiring the challenger to prove invalidity by clear and convincing evidence, the patent holder is effectively forced to demonstrate that its claims are not conventional.
Consider what a § 103 challenge to the Innovaport claims would have required. The challenger would need to identify specific prior art references disclosing each element. It would need to articulate a reason to combine those references. It would need to address the level of skill in the art. And if the patent holder presented evidence of commercial success, industry adoption, or failure of others to solve the same problem, the challenger would need to overcome that evidence. The patent holder would be entitled to the presumption of validity, and the challenger would bear the burden of proving obviousness by clear and convincing evidence.
At § 101 step two, Target needed to do none of this. The court simply observed that cross-referencing products and providing suggestions are “longstanding methods of human activity,” and that mobile devices are “generic hardware.” That was sufficient to eliminate the asserted patent claims.
III. The Word “Inventive” and Its Quiet Import
The doctrinal slippage originates in language. The Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014), described step two as “a search for an ‘inventive concept,'” quoting Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 72 (2012). The word “inventive” does extraordinary and largely unacknowledged analytical work. It imports the central inquiry of § 103 (whether the claimed subject matter reflects sufficient innovation over what was known) into a framework that was designed to address a categorically different question: whether the type of subject matter is eligible for patent protection at all.
Section 101 was intended as a threshold gatekeeper, not a merits screen. As Judge Giles Rich observed decades ago, § 101 addresses categories of patentable subject matter, while §§ 102 and 103 address the conditions of patentability. The 1952 Patent Act deliberately replaced the pre-existing, subjective “invention” requirement with the structured obviousness inquiry of § 103, precisely because the older standard was “the plaything of the judiciary.” See Giles S. Rich, The Vague Concept of “Invention” as Replaced by Sec. 103 of the 1952 Patent Act, 46 J. Pat. & Trademark Off. Soc’y 855 (1964). The Supreme Court’s reintroduction of the word “inventive” into the § 101 inquiry, albeit in a nominally different context, risks undoing that deliberate legislative choice.
The practical consequence is a doctrine that asks essentially the same question as § 103 (“is this inventive?”) but strips away every procedural safeguard that § 103 provides. “Inventive concept” is inherently vague. It lacks the Graham factors. It lacks secondary considerations. It lacks a defined evidentiary standard. And it lacks the explicit requirement of articulated reasoning that KSR demands even in the more flexible post-2007 obviousness landscape.
IV. The “Technical Problem” Trap
The Federal Circuit’s step-one inquiry compounds the problem. For software-implemented inventions, the court applies the framework articulated in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), asking whether the claims are directed to “a specific asserted improvement in computer capabilities” or “a process that qualifies as an abstract idea for which computers are invoked merely as a tool.” This has evolved into what is effectively a “technical solution to a technical problem” requirement, language the USPTO itself uses in its guidance.
The difficulty is that nearly every commercially significant software invention, at its root, solves a business or operational problem through technical means. The Innovaport patents aimed to solve the problem of helping shoppers locate products in a store. USAA’s mobile deposit patents aimed to solve the problem of depositing checks without visiting a bank branch. Recentive Analytics’ patents aimed to solve the problem of scheduling television broadcasts. In each case, the Federal Circuit characterized the parent problem as non-technical (a “business drawback,” a “conventional banking process,” a matter of “data analysis and scheduling”) and dismissed the technical implementation as merely “applying” generic technology.
But the parent (or root) problem is not the whole story. Embedded within each of these business-level problems are technical sub-problems that must be solved to deliver a working implementation. In Innovaport, those might include real-time database query optimization, wireless communication protocols for in-store devices, and data architecture for cross-referential product linking. In USAA, they included image capture quality assurance on variable mobile hardware, real-time OCR on check images, and error correction under inconsistent lighting conditions.
The Federal Circuit’s current approach collapses this problem hierarchy. If the top-level problem is characterized as non-technical, the technical sub-problems are treated as mere implementation details, “routine” and “conventional” by definition, regardless of whether they actually were at the time of invention. This is not analysis. It is characterization doing the work of analysis. Further, it feeds directly into the WURC shortcut at step two: once the technical sub-problems are dismissed at step one as mere “implementation,” their conventionality at step two becomes a foregone conclusion.
V. The Divergence: USPTO and Federal Circuit Moving in Opposite Directions
The structural problems with step two have not gone unnoticed. Remarkably, the institution that examines patent applications and the court that reviews their validity are now moving in opposite directions on § 101, and Innovaport‘s no-deference posture confirms that the gap is not one the USPTO can close on its own.
At the USPTO, 2025 marked a significant recalibration. Deputy Commissioner Charles Kim’s August 4, 2025 memorandum reminded examiners that the mental process category should not be expanded to encompass limitations that “cannot practically be performed in the human mind,” that claims should be analyzed “as a whole” rather than element by element, and that § 101 rejections should issue only when ineligibility is “more likely than not.” In September 2025, Director John Squires (confirmed September 18, 2025) convened an Appeals Review Panel in Ex parte Desjardins, Appeal No. 2024-000567 (PTAB Sept. 26, 2025), vacating a PTAB panel’s sua sponte § 101 rejection of claims directed to training a machine learning model. Director Squires designated the decision precedential on November 4, 2025, and the USPTO issued MPEP amendments on December 5, 2025 incorporating its reasoning. Perhaps most significantly, the Desjardins ARP stated that “§§ 102, 103, and 112 are the traditional and appropriate tools to limit patent protection to its proper scope” and that “[t]hese statutory provisions should be the focus of examination.”
On December 4, 2025, the USPTO issued memoranda on Subject Matter Eligibility Declarations (SMEDs), providing guidance on using Rule 132 declarations to submit evidentiary support establishing that claimed features constitute technological improvements, importing evidentiary rigor into the § 101 examination process.
At the Federal Circuit, the trajectory has been the opposite. Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025), held in a matter of first impression that “claims that do no more than apply established methods of machine learning to a new data environment” are ineligible, without identifying what would constitute a sufficient “improvement to the machine learning models.” The Supreme Court denied certiorari in December 2025 (No. 25-505). In USAA v. PNC Bank, 139 F.4th 1332 (Fed. Cir. 2025), the Federal Circuit held mobile check deposit claims abstract, and in a companion nonprecedential decision issued the same day, USAA v. PNC Bank N.A., No. 23-1778, 2025 WL 1662737 (Fed. Cir. June 12, 2025), the court reversed a $218 million jury verdict. Despite USAA’s evidence that the invention was unconventional and non-obvious, the court declined to remand for factfinding, instead deciding for itself that the claimed steps were “routine.” In Technology in Ariscale, LLC v. Razer USA Ltd., No. 24-1657 (Fed. Cir. Jan. 6, 2026) (nonprecedential), the court invalidated wireless signal decoding claims under § 101, prompting commentators to question whether signal deinterleaving can meaningfully be characterized as a “mental process.” And now, in Innovaport, the court has reiterated — in pointed terms, citing Sanderling — that it owes no deference to the Patent Office’s eligibility determinations.
The result is a widening gap. Patents that survive § 101 examination at the USPTO under the Kim Memo and Desjardins framework face a materially different standard when challenged in litigation. Practitioners are drafting to one standard and litigating under another. And the Federal Circuit has now made clear, yet again, that the USPTO’s evolving approach to eligibility carries no weight in its courtroom.
VI. The Case for Doing the WORK
None of this is to suggest that every patent the Federal Circuit has invalidated under § 101 would survive § 103. Many would not. The Innovaport claims, with their functional recitation of database queries and information display, might well be obvious over the prior art. The USAA claims might be anticipated. Some claims invalidated under § 101 might also fall to § 112 challenges for insufficient disclosure. It is entirely possible that § 101, for all its flaws, is reaching correct outcomes in many cases, even as it applies the wrong analysis to get there.
But the point is that we do not know, because the § 103 analysis was never performed.
This is the core problem with the WURC shortcut: it allows courts to reach conclusions about conventionality without doing the work that conventionality findings require. The Federal Circuit has effectively created a fast lane for invalidation that bypasses the structured, evidence-based inquiry Congress designed for assessing whether an invention is sufficiently innovative.
The consequences are real. Patent applicants face uncertainty about whether claims that survive examination will survive litigation. Defendants achieve invalidation results under § 101 that would require substantially greater effort under § 103. The factual predicates underlying invalidity determinations — specifically whether specific technologies were “well-understood, routine, and conventional” at the relevant time — are going unexamined. As Innovaport confirms, the presumption of validity that attaches to issued patents, and the prosecution history that supports it, receive no deference in the Federal Circuit’s eligibility analysis.
VII. Paths Forward
Several developments suggest that resolution may be approaching, if not imminent.
Legislative reform. The Patent Eligibility Restoration Act of 2025 (PERA), S.1546/H.R.3152, would eliminate all judicial exceptions to patent eligibility and provide that eligibility is determined “without regard to . . . whether a claim element is known, conventional, routine, or naturally occurring.” The Senate Judiciary Subcommittee on Intellectual Property held a hearing on October 8, 2025, at which former USPTO Directors Andrei Iancu and David Kappos testified that courts have conflated eligibility with other patentability requirements, precisely the concern this article identifies. Iancu observed that examiners and judges know how to conduct a novelty analysis under § 102 or an obviousness analysis under § 103, but are forced to apply an eligibility test with no clear framework. See Written and Oral Testimony of Andrei Iancu, Senate Judiciary Subcomm. on Intellectual Property, Hearing on PERA (Oct. 8, 2025). PERA would restore § 103 as the proper vehicle for assessing whether an invention is sufficiently innovative and direct § 101 back to its intended categorical gatekeeping role.
Supreme Court review. USAA’s petition for certiorari in USAA v. PNC Bank, No. 25-853, filed January 14, 2026, directly challenges the Federal Circuit’s expansion of the “abstract idea” category. The petition argues that “depositing a check using a handheld mobile device” is a technological process, not an abstract idea, and that the Federal Circuit resolved disputed factual questions without proper evidentiary support. PNC initially waived its right to respond, but the Court subsequently requested a response, due March 2, 2026. Whether the Court grants review may depend on whether the Solicitor General weighs in, but the petition squarely presents the question of whether § 101’s step two has become an evidence-free obviousness substitute.
Continued USPTO divergence. Director Squires’ policy direction — demanding evidentiary rigor for WURC findings, recognizing AI and software improvements as eligible, and directing examiners toward §§ 102, 103, and 112 as the proper tools for patent quality — will continue to widen the gap between examination and litigation standards. The PTAB’s § 101 reversal rate has nearly tripled under Squires, from roughly 10% in early 2025 to 29% in November 2025, according to Patently-O’s analysis. The PTAB’s decision in Ex parte Mercer, Appeal 2024-002371 (PTAB Oct. 31, 2025), illustrates the shift, with the Board demanding evidentiary support for findings that claimed elements constitute “well-understood, routine, conventional activity” under Alice step two. But Innovaport‘s reiteration of the no-deference principle — citing Sanderling and OIP Technologies — confirms that these administrative developments, however well-reasoned, will not bind the Federal Circuit. The divergence is not a bug that better guidance can fix. It is a feature of the current institutional architecture, and it will persist until the law itself changes.
VIII. Conclusion
The Federal Circuit is doing the WURC to avoid the WORK. The “inventive concept” inquiry at Alice/Mayo step two has become a parallel obviousness doctrine, one that asks essentially the same question as § 103 — is this inventive over what was known? — but without Graham factors, without prior art, without secondary considerations, without a clear evidentiary standard, and without the clear and convincing evidence burden that reflects the statutory presumption of validity.
Innovaport is a nonprecedential decision, and doctrinally it breaks no new ground. But its repeated, explicit rejection of any deference to Patent Office eligibility determinations (decided in the same period that Director Squires is aggressively reorienting the USPTO toward broader eligibility ) crystallizes the institutional divide. The Federal Circuit is not merely applying a different standard from the USPTO. It is affirmatively disclaiming any obligation to consider the USPTO’s standard at all.
The patent system already possesses a well-developed, evidence-based mechanism for determining whether an invention is sufficiently innovative: 35 U.S.C. § 103, refined over six decades of jurisprudence from Graham through KSR. The “inventive concept” under § 101 is an inferior, unstructured substitute that lacks procedural fairness and analytical rigor. Whether the resolution comes from Congress through PERA, from the Supreme Court through USAA or a future vehicle, or from the Federal Circuit’s own reconsideration of its approach, the destination should be the same: § 101 returned to its intended role as a categorical threshold, and § 103 restored as the proper vehicle for evaluating inventiveness.
Until then, practitioners face the unenviable task of drafting patents that must satisfy two different standards administered by two different institutions with two different conceptions of what it means to be “inventive” and with no assurance that satisfying one will count for anything before the other. In a companion piece, I will propose a practical framework — a problem ontology — for navigating this split by mapping the hierarchy of problems an invention addresses and ensuring that the technical sub-problems receive the doctrinal attention they deserve in both prosecution and litigation.
Andre Marais is a Principal at SLW where he works with Bay Area technology companies on patent prosecution and strategic IP management. The views expressed are his own.