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Alice v CLS Bank – a view from a US perspective

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CapitolLast year we noted that the US Supreme Court is to take a crack at the Alice v CLS Bank Intl case (see here). Shortly after that post we reported on a CIPA seminar “Patentable subject matter in the US” in which Seth D. Levy of Nixon Peabody gave a good overview of what’s going on with patent subject matter (35 USC §101) in the US.

Seth has subsequently provided some further thoughts on the Alice v CLS case. If you’re interested in hearing what US practitioners think of the referral, what we can expect next and how the Court might rule then please see Seth’s comments below:

I’d say that there’s nervous optimism about that [i.e. the Supreme Court agreeing to hear the case] among patent practitioners – optimism because this is a natural opportunity for the high court to lay out clear standards for an area of law that’s becoming increasingly less clear, but nervous because those clear standards may be to the serious detriment of certain types of patents and their owners or licensees (e.g., software-driven business methods, Internet-related technologies, medical diagnostics, etc.).

It’s not terribly surprising that the Court decided to take the case, given its posture following the Federal Circuit’s en banc review; that is, even with that second, broader review by the Circuit, the appellate judges have thus far been unable to agree on a clear, singular legal standard for exactly where the boundaries lie around subject matter eligibility for patents, and the decision (or, the lack thereof) thus practically cried out for Supreme Court review.

I expect there will be a significant amount of amicus briefing, with all sorts of companies, organizations, thought-leaders and others weighing in on the issue as the Supreme Court considers it.

Of course, it remains to be seen how the Court will ultimately rule on the matter in its next term.  This may be a sweeping decision that clarifies or even overturns aspects of Myriad, Prometheus, Bilski and/or other cases deeper in the history of patent subject matter eligibility (e.g., Gottschalk v. Benson, Parker v. Flook, Diamond v. Diehr, etc.), or it may turn out to be something either very focused in its holding (e.g., relating only to the question of semantics in claim drafting) or as nebulous in its meaning and impact as that challenging Prometheus decision has been.  We’ll see.

Regarding timescale, the Court typically issues its decisions around June (near the end of its annual term), so I imagine that’s roughly when we’ll have its opinion.

The Court’s opinion looks sure to be an interesting read and we’ll provide a review shortly after it issues.

Mark Richardson  16 January 2014


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