Will the Supreme Court clarify which 'computer-implemented inventions' are patent eligible?

CLS Bank Int’l v. Alice Corp. Pty. Ltd. has had a long and unclear history on its way to the Supreme Court

On Dec. 6, 2013, the United States Supreme Court granted Alice Corporation’s petition for a writ of certiorari in Alice Corporation Pty. Ltd. v. CLS Bank International. The question presented 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?” Alice Corporation will be the 10th time the Supreme Court has addressed a Section 101 issue since the 1952 Patent Act, and the fourth time in merely four years.

This question presented to the Supreme Court summarizes the two questions the Federal Circuit invited the parties to address in its order granting en banc reconsideration in CLS Bank Int’l v. Alice Corp. Pty. Ltd., which were:

Judge Pauline Newman filed a concurring-in-part and dissenting-in-part opinion. Judge Newman expressed her disappointment with “today’s irresolution concerning section 101.” Judge Newman proposed that the Federal Circuit “reaffirm three basic principles relating to section 101”:

  1. That “section 101 is an inclusive statement of patent-eligible subject matter” (eliminating the “abstractness” and “preemption” inquiries entirely);
  2. That “the form of the claim does not determine section 101 eligibility” (to prevent eligibility from turning on “the ingenuity of the draftsman”); and
  3. That “experimental use of patented information is not barred” (to prevent concerns that have been raised in cases such as Myriad).

Judge Newman believes that adopting these principles will stabilize the law of Section 101.

Contributing Author

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Robert A. Surrette

Robert A. Surrette is the President and a shareholder at McAndrews, Held & Malloy, Ltd. He focuses his practice on the resolution of intellectual property...

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Contributing Author

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Dunstan H. Barnes

Dunstan H. Barnes is an associate at McAndrews, Held & Malloy. He has considerable experience in a wide range of technological fields, and worked in...

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