Patentable Subject Matter

Last Friday, May 10, 2013, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (en banc) issued a very divided decision in which a majority of the court affirmed that method, computer-readable medium and system patent claims on a computer-implemented invention were not patent eligible under § 101, but there was no majority consensus on the rationale as to why those claims were not patentable subject matter.  As a result, this en banc decision has no precedential value beyond the specific determination of patent eligibility for the particular claims at issue.  The fractured nature of the decision—and even intimations by judges on the court—indicate that this case may be primed for Supreme Court review.

This 135-page decision has seven separate opinions, summarized below.  A few top-level points may be gleaned from them:

Continue Reading Patent Alert: En banc Federal Circuit indecisive on patent eligibility of computer-implemented inventions (CLS v. Alice)

CAFCThis Friday, February 8, an en banc United States Court of Appeals for the Federal Circuit will hear oral arguments in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (No. 2011-1301), the latest Federal Circuit case to deal with the patentability of software-related patents and so-called business methods.  Given that the technologies claimed in many standard-essential patents are often implemented in standards-compliant products via software, the Federal Circuit’s holding in this case may have resounding consequences for the world of SEPs and SEP-related litigation.

UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid.  Please see our May 13, 2013 post for more details.

Continue Reading En banc Federal Circuit to hold oral argument Friday regarding patentability of software patents (CLS Bank v. Alice)

Today, Thu., Aug. 16, 2012, in Ass’n for Molecular Pathology v.  USPTO (“The Myriad Case”), , No. 2010-1406, the Federal Circuit (Lourie, Bryson (concur/dissent) and Moore (concur)) issued its anticipated decision in the Myriad case on whether certain composition and method claims to isolated DNA molecules were patentable subject matter.  This Myriad decision will have a substantial impact in the biomedical, chemical and related arts.  The decision provides only incremental insight to computer-based or similar inventions, and also provides incremental insight into declaratory judgment jurisdiction.
Continue Reading Patent Alert: Federal Circuit clarifies patent eligibility for biomedical arts (Myriad)

UPDATE:  The Federal Circuit has vacated its decision and will take this case up en banc in early 2013.  Please see our October 9, 2012 post for more details.

SECOND UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid.  Please see our May 13, 2013 post for more details.

Today, Mon., July 9, 2012 in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (Linn, Prost (dissent) and O’Malley) found a computer-implemented trading platform for reducing settlement risks when exchanging stocks or currency was not invalid based on a permissive test of patentable subject matter.  This decision will further guide litigation away from the abstract § 101 patentability defense and toward the better-defined invalidity §§ 102, 103 and 112 defenses based on prior art or inadequate patent disclosure.Continue Reading Patent Alert: Federal Circuit creates permissive patent eligibility standard for computer-implemented inventions (CLS v. Alice)

Yesterday, Tues., Mar. 20, 2012, in Mayo Collaborative Svcs v. Prometheus Labs, No. 10-1150, the Supreme Court (Breyer) unanimously reversed the Federal Circuit and ruled that a claimed process for assessing proper drug dosage was unpatentable under Section 101 because it was broadly directed to simply applying a law of nature in otherwise conventional drug treatment procedures.  This decision may significantly impact not only pharmaceuticals, but software or other technology that involve applying laws of nature or mathematical formulas.
Continue Reading Patent Alert: Supreme Court rules drug administration process unpatentable because it simply applied law of nature to otherwise conventional drug treatment procedures (Mayo v. Prometheus)

Today, Fri., Mar. 2, 2012, in MySpace v. Graphon, No. 2011-1149, the Federal Circuit (Newman, Mayer (dissenting) and Plager) affirmed summary judgment that patent claims directed to accessing a database over a network were invalid as anticipated or obvious over the prior art.
Continue Reading Patent Alert: Federal Circuit decides classic invalidity defenses to avoid abstract patentable subject matter defense (MySpace v. Graphon)

Today, Mon., Feb. 27, 2012, in Fort Properties v. American Master Lease, No. 2009-1242, the Federal Circuit (Prost, Schall and Moore) affirmed summary judgment invalidating as unpatentable subject matter claims directed to a real property investment tool.  This case provides a good summary of the current state of the law on patentable