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US Supreme Court to take a run at Alice v. CLS Bank

Keltie LLP

K2 IP Limited

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CapitolThe US Supreme Court announced on Friday that it is to review the Alice Corp. v. CLS Bank Intl. case. The US Court of Appeal, of course, recently handed down its take on the case (see decision dated 10 May 2013 here) in which the 10 judge panel exhibited something of a split opinion.

At the recent AIPLA event in Washington Chief Judge Rader (one of the 10 judge CAFC panel on the Alice/CLS case) commented that he regarded that case as a personal failure and a failure of his institution (Court of Appeals for the Federal Circuit). Listening to other attorneys at AIPLA a number of feelings were expressed about the case including bafflement, frustration and the merest hint of “the End of Days”.

Having taken time out to read the entire decision (and if you’re thinking of doing the same then block out a good long section of the day as the opinion runs to a whopping 135 pages) it is somewhat surprising to see the variety of approaches demonstrated by the judges. It’s like ordering a taxi cab only to find that there are 10 different drivers all of whom have their own take on the best route to your destination…

In fact the only opinion that seemed to make any sense was the one from Circuit Judge Newman (starting on page 103) who essentially suggests section 101 should be an inclusive statement of patent eligible subject matter and that issues of abstraction, which seem to be causing such a headache in the assessment of section 101, should instead be dealt with under the substantive criteria of patentability (e.g. novelty and inventive step).

As far as the Supreme Court is concerned then they have been asked the following question:

Whether claims to computer-implemented inventions-including claims to systems and machines, processes, and items of manufacture-are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

This is a very broad question which could give the court a wide remit to take a fresh look at the eligbility of software related inventions in the US. However, it is also possible that the court will confine itself just to matters arising from the case itself which in turn would give Chief Judge Rader and co. the chance to take another tilt at the issue in the CAFC in the future.

Mark Richardson 9 December 2013


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