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Alice loses U.S. Supreme Court case on software patents

The high court concluded an abstract idea cannot be patented, and that is the case – even if a computer is used.

The tech sector has gotten a somewhat clearer idea of what can be patented in a unanimous U.S. Supreme Court ruling in the Alice Corp. case.

The high court concluded an abstract idea cannot be patented, and that is the case – even if a computer is used, according to news reports.

“Merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention,” according to the decision written by Justice Clarence Thomas.

The Alice Corporation Pty. Ltd. vs. CLS Bank International case is seen as a victory for many tech companies, such as Microsoft or Google, but not all of them.

“The court’s relatively narrow decision doesn’t provide a much clearer test for determining which inventions can be patented. Nor does it render all software ineligible for patent protection — a goal of some tech giants like Twitter and Netflix,” according to a report from Politico.

Overall, though, general counsel at tech companies should be pleased with the decision released on Thursday.

“Their decision will be great support for those who want to cancel questionable patents,” James T. Carmichael, a principal and patent attorney with Miles & Stockbridge, and who is a former Administrative Patent Judge and Associate Solicitor at the United States Patent and Trademark Office (USPTO), said on Thursday.

“This is the first time that the Supreme Court has basically said adding a computer to an invention does nothing for its eligibility for a patent,” he explained in an interview with InsideCounsel.

The decision will particularly help general counsel who work at established companies and who may need to try to limit attempts by non-practicing entities (patent trolls) to get companies to pay licensing fees.

When it relates to non-practicing entities, Paul Schoenhard, who is counsel at Ropes & Gray, where he works on patent litigation, and who is an adjunct faculty member at American University’s Washington College of Law, said the Alice decision “should help ease some of the burden on in-house counsel.”

Matt Levy, patent counsel for the Computer and Communications Industry Association, was quoted that the Supreme Court decision will “certainly help” companies in legal fights against patent trolls.

“It gives us another tool to challenge some of the ridiculous patents that trolls use,” he told Politico. “You still have to persuade a district court judge a patent is abstract, and that’s still going to cost money and some time, but this is an important tool.”

The decision also provides general counsel with some “level of stability in patent law,” Schoenhard added. “Many in-house (attorneys) will be very pleased by the court’s decision.”

It also comes after the USPTO provides cancellation proceedings, which is another newer option that in-house attorneys can find to their advantage.

In reviewing the decision, Supreme Court observers also noted that many of the justices during oral arguments and in the decision itself merged two distinct concepts: whether technology is eligible for a patent, or, whether it is new and useful. Many patent attorneys contend they should be kept separate.

Further reading:

Alice was asked aplenty

Go ask Alice: Supreme Court to hear arguments on software patents

Supreme Court to rule on software patents




Contributing Author

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Ed Silverstein

Ed Silverstein ( is a veteran freelance writer and and editor for magazines, websites and newspapers. He writes frequently for ALM Media's

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