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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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