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.

Please see full alert below fore more information.

 Download PDF

No. 13–298. Argued March 31, 2014—Decided June 19, 2014
The opinion can be found at http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf.

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. shea@mbhb.com
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. borella@mbhb.com
© 2014 McDonnell Boehnen Hulbert & Berghoff LLP
snippets is a trademark of McDonnell Boehnen Hulbert & Berghoff LLP. All rights reserved. The information contained
in this newsletter reflects the understanding and opinions of the author(s) and is provided to you for informational
purposes only. It is not intended to and does not represent legal advice. MBHB LLP does not intend to create an
attorney–client relationship by providing this information to you. The information in this publication is not a substitute
for obtaining legal advice from an attorney licensed in your particular state. snippets may be considered attorney
advertising in some states.

Download PDF[51KB]
Email
Report

Note close

Firefox recommends the PDF Plugin for Mac OS X for viewing PDF documents in your browser.

We can also show you Legal Updates using the Google Viewer; however, you will need to be logged into Google Docs to view them.

Please choose one of the above to proceed!

LOADING PDF: If there are any problems, click here to download the file.