This Friday, February 8, an en banc United States Court of Appeals for the Federal Circuit will hear oral arguments in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (No. 2011-1301), the latest Federal Circuit case to deal with the patentability of software-related patents and so-called business methods. Given that the technologies claimed in many standard-essential patents are often implemented in standards-compliant products via software, the Federal Circuit’s holding in this case may have resounding consequences for the world of SEPs and SEP-related litigation.
UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid. Please see our May 13, 2013 post for more details.
UPDATE: The Federal Circuit has vacated its decision and will take this case up en banc in early 2013. Please see our October 9, 2012 post for more details.
SECOND UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid. Please see our May 13, 2013 post for more details.
Today, Mon., July 9, 2012 in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (Linn, Prost (dissent) and O’Malley) found a computer-implemented trading platform for reducing settlement risks when exchanging stocks or currency was not invalid based on a permissive test of patentable subject matter. This decision will further guide litigation away from the abstract § 101 patentability defense and toward the better-defined invalidity §§ 102, 103 and 112 defenses based on prior art or inadequate patent disclosure.
Yesterday, Tues., Mar. 20, 2012, in Mayo Collaborative Svcs v. Prometheus Labs, No. 10-1150, the Supreme Court (Breyer) unanimously reversed the Federal Circuit and ruled that a claimed process for assessing proper drug dosage was unpatentable under Section 101 because it was broadly directed to simply applying a law of nature in otherwise conventional drug treatment procedures. This decision may significantly impact not only pharmaceuticals, but software or other technology that involve applying laws of nature or mathematical formulas.
Today, Fri., Mar. 2, 2012, in MySpace v. Graphon, No. 2011-1149, the Federal Circuit (Newman, Mayer (dissenting) and Plager) affirmed summary judgment that patent claims directed to accessing a database over a network were invalid as anticipated or obvious over the prior art.
Today, Mon., Feb. 27, 2012, in Fort Properties v. American Master Lease, No. 2009-1242, the Federal Circuit (Prost, Schall and Moore) affirmed summary judgment invalidating as unpatentable subject matter claims directed to a real property investment tool. This case provides a good summary of the current state of the law on patentable subject matter, particular for computer implemented business methods.
The patent method claims, which were similar to the Bilski commodity investment claims, were directed to “creating a real estate investment instrument adapted for performing tax-deferred exchanges.” The claims covered the general steps of forming a real property portfolio that is divided into deedshares governed by a master agreement that required the deedshares to be reaggregated later. The Court held that the claims were not patentable because they claimed “an abstract real estate investment tool” and “this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property.”
Some claims further required a computer to generate the deedshares. But those claims also were not patentable, because “the computer limitation is simply insignificant post-solution activity” that did not “impose meaningful limits on the claim’s scope.”