Supreme Court to Take Case on Patentability of Software

On Friday, the Supreme Court granted a writ of certiorari in Alice Corp. v. CLS Bank Int’l (Docket No. 13-298). In this case, the Court will take up the issue of:

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 case is on appeal from a fractured en banc opinion of the Federal Circuit, which considered whether Alice Corp.’s software related patents contained patent eligible subject matter. The Alice Corp. patents provide a basis for addressing this contested issue because the patents employed three common methods for claiming software inventions: method claims, computer readable medium claims, and system claims.

In the Federal Circuit’s en banc opinion:

  • 5 judges affirmed the District Court’s decision and concluded that the method, computer readable medium and system claims were all patent ineligible subject matter;
  • 2 judges concluded that the method and computer readable medium claims were patent ineligible, but the system claims were patent eligible;
  • 3 judges concluded that the method, computer readable medium and system claims were all patent eligible subject matter.

Gibbons will continue to monitor and report developments on this important front.

Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department.
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