Alice Corp. v. CLS Bank Int’l: General Purpose Computers Cannot Save Claims Directed to Abstract Ideas

In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer implemented methods of reducing settlement risk. This case reached the high court after a severely split Federal Circuit could not agree whether language of the claims met the patent-eligibility requirements of 35 U.S.C. § 101. At the heart of this case was the Federal Circuit’s confusion over the impact of the Court’s 2012 decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc. In Mayo, Justice Breyer set forth a two-part test for determining whether a claim is directed to a patent-ineligible “abstract idea” and, if so, whether the claim also contains enough substance to amount to “significantly more than [the ineligible concept] itself.”

This test, however, resulted in muddle in the lower courts – it appeared to combine the patenteligibility analysis of § 101 with the novelty and non-obviousness analyses of §§ 102 and 103 in a way that contradicted the Court’s prohibition against doing so in Diamond v. Diehr. Further, Mayo was unclear on the extent to which physical components could be tied to an otherwise abstract claim in order to render the claim patent-eligible.

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No. 13–298. Argued March 31, 2014—Decided June 19, 2014
The opinion can be found at

MBHB snippets Alert June 19, 2014 
Rory P. Shea is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Mr. Shea practices
in all areas of intellectual property law, with a particular emphasis on patent litigation and patent
preparation and prosecution in the areas of electrical engineering, computer software and
hardware, and telecommunications.
Michael S. Borella, Ph.D., is an associate with McDonnell Boehnen Hulbert & Berghoff LLP.
Dr. Borella conducts legal research and provides technological advice in support of validity,
infringement and patentability analyses, and litigation matters, with a focus on software
engineering, networking, telecommunications, and mobile applications.
© 2014 McDonnell Boehnen Hulbert & Berghoff LLP
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