Alice appeals to Supreme Court on Section 101
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Alice appeals to Supreme Court on Section 101

The US Supreme Court should act to bring clarity to the law on the patentability of computer-implemented inventions in the US, according to a brief filed this week

Alice Corporation filed a writ of certiorari on September 4 asking the Court to review the Federal Circuit’s recent decision in its dispute with CLS Bank.

In the en banc case, in May this year, the Federal Circuit issued six opinions spanning more than 125 pages. The 10 judges split 5-5 on Alice’s claims to computer system inventions, meaning that the district court summary judgment that the claims were unpatentable was upheld.

Alice’s other claims were also held to be unpatentable but for different and inconsistent reasons.

In its brief, the company says “the legal standards that govern whether computer-implemented inventions are eligible for patent protection under section 101 remain entirely unclear and utterly panel dependent ... The Federal Circuit has left no doubt that it is irreconcilably fractured”.

It adds that the uncertainty that plagues the patent system “will cause severe harm and waste for innovators and litigants”.

It also argues that the Federal Circuit’s judgment and reasoning cannot be reconciled with Supreme Court precedent.

The question the Supreme Court is asked to address is:

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?

“Because the patent claims at issue here cover the full range of computer related inventions—computer systems, computer implemented methods, and computer-readable media—this case will allow the Court to craft a comprehensive, rather than piecemeal, approach to computer-related inventions,” says Alice in its brief.

The Court will now have to decide whether to take the case. It is likely to decide later this year and, if it does so, legal arguments are likely some time next year.

Alice is taking a gamble by seeking Supreme Court review. On one hand, it has nothing to lose as its patent is invalid as things stand.

On the other hand, it could be opening a can of worms by inviting the Court to address patentability. In its most recent intervention on a similar issue, in Bilski, the Court split 5-4 and came very close to saying that methods of doing business should not be patentable.

Alice is represented by Supreme Court specialist Carter Phillips together with other lawyers from Sidley & Austin’s Washington, DC and Chicago offices.

Phillips has argued 76 cases before the Supreme Court, including important patent trials, such as LG v Quanta and eBay v MercExchange.

Managing IP hosted a webinar on the Alice case in June – watch and listen to it here.

Earlier this week, the Federal Circuit issued another split decision in a case concerning subject matter eligibility, Accenture v Guidewire. Judges Lourie and Reyna found the claims at issue invalid, citing CLS Bank v Alice, but Chief Judge Rader dissented. The case is discussed in a post on the Patently O blog.

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