obvIPat - Obviously Patentable

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Posts Tagged ‘Alice v. CLS’

One Year After Alice

by Orlando Lopez

It has been more than a year since the Supreme Court issued its decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Although a number of software patents have been invalidated for reciting non-patentable subject matter, the district courts have slowly started invalidating some patents where non-patentable subject matter (101) had been alleged. There is one Federal Circuit decision that found software claims that recite patentable subject matter: DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There is life after Alice.

The Supreme Court, following comments regarding preemption in a number of other cases on unpatentable subject matter, presented in Alice a framework for excluding subject matter from patentability. The underpinning of the exclusion of laws of nature, natural phenomena and abstract ideas from patentable subject matter is preemption.

“The concern that drives the exclusionary principle- exclude Laws of nature, natural phenomena, and abstract ideas- is one of pre-emption,” Alice, 134 S. Ct. at 2354.

Laws of nature, natural phenomena and abstract ideas are the basic tools for technological innovation.

“Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws,” Alice, 134 S. Ct. at 2354.

The court connected preemption to the basic foundation of U.S. patent law. The court also advised caution since laws of nature, natural phenomena and abstract ideas can be found at some level in all invention.

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Alice v. CLS: Alice in Supreme Court Land

by Orlando Lopez

On June 19, 2014, the Supreme Court released their decision and opinion on Alice v. CLS. The holding of the Supreme Court is that the split en banc decision of the Federal Circuit Court of Appeals finding the claims in patents assigned to Alice Corporation invalid for being related to unpatentable subject matter is affirmed. If Alice wants to find how to determine whether claims are drawn to an abstract idea, Alice still has to go to the Wizard. The opinion of the Supreme Court on Alice v. CLS does not provide any guidance on how to determine that claims are drawn to an abstract idea.

The Alice v. CLS Supreme Court opinion does clear up any possible misunderstanding of the Mayo v. Prometheus opinion. In Mayo, the Court, referring to Flook, stated that, if the process included other elements or combination of elements, referred to as an “inventive concept,” so that the patent was a patent for more than the natural law (abstract idea), the process was patentable. In Alice, the Court explains the Mayo statement, restating the Mayo approach as a two-step approach:

  1. First determine whether the claim is directed to one of the patent-ineligible concepts (law of nature or abstract idea); and
  2. Search, in the claim, for elements or a combination of elements that, when added to the patent-ineligible concept, render the claim as a claim for more than just the patent-ineligible concept.

This restatement of the approach is more palatable than the look for an “inventive concept.” By restating Mayo, the Court has made it safer to use Mayo.

The Court also restates in Alice that adding a generic computer to the method claim does not make the method claim patentable. This restates the present position of the US Patent and Trademark Office (USPTO) that a specific machine, a computer programmed to perform the process, is needed. However, programming a patent-ineligible concept will not render the concept or system patentable.

The concurring opinion shows that at least three Supreme Court Justices could find business methods unpatentable. We will have to wait for another decision (or for the Wizard) in order to find how to determine that claims are drawn to an abstract idea.