On June 21, 2013, in Ultramercial v. Hulu, No. 2010-1544, the Federal Circuit (Rader, Lourie (concur), O’Malley) reversed the district court’s grant of a Rule 12(b)(6) motion to dismiss on grounds that the computer-implemented invention was not patent eligible under § 101.  This case provides incremental insight into the patent eligibility of computer-implemented inventions

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:


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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.


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

Today, Tues., Oct. 9, 2012, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit ordered rehearing en banc on the patent eligibility of computer-implemented inventions.  The CLS Bank original, and now vacated, decision found a stock trading platform invention patent eligible under a permissive view of § 101 patent eligibility that counseled focusing on more established invalidity defenses under §§ 102, 103 and 112.   But a few weeks later, the Bancorp. decision found that a life insurance policy value tracking invention was not patent eligible and breathed life into the patent eligibility defense against computer-implemented inventions.


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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.
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Today, Thu., July 26, 2012, in Bancorp v. Sun Life, No. 2011-1467, the Federal Circuit (Lourie, Prost and Wallach) revived the § 101 patent eligibility defense against computer-based inventions, holding that claims to a method for administering and tracking the value of life insurance policies were not patentable because the computer limitations were not “integral to the claimed invention” or limited to “a very specific application of the inventive concept”, but merely involved computers doing calculations more efficiently than could be done by mental processes.  This is a significant decision to review with respect to patent eligibility of computer inventions, and limits the recent CLS decision of July 9, 2012 that appeared much more permissive on what computer inventions are patentable.
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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.
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