Home » Patents » Alice v CLS Bank – a view from a US perspective

Alice v CLS Bank – a view from a US perspective

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

CapitolLast year we noted that the US Supreme Court is to take a crack at the Alice v CLS Bank Intl case (see here). Shortly after that post we reported on a CIPA seminar “Patentable subject matter in the US” in which Seth D. Levy of Nixon Peabody gave a good overview of what’s going on with patent subject matter (35 USC §101) in the US.

Seth has subsequently provided some further thoughts on the Alice v CLS case. If you’re interested in hearing what US practitioners think of the referral, what we can expect next and how the Court might rule then please see Seth’s comments below:

I’d say that there’s nervous optimism about that [i.e. the Supreme Court agreeing to hear the case] among patent practitioners – optimism because this is a natural opportunity for the high court to lay out clear standards for an area of law that’s becoming increasingly less clear, but nervous because those clear standards may be to the serious detriment of certain types of patents and their owners or licensees (e.g., software-driven business methods, Internet-related technologies, medical diagnostics, etc.).

It’s not terribly surprising that the Court decided to take the case, given its posture following the Federal Circuit’s en banc review; that is, even with that second, broader review by the Circuit, the appellate judges have thus far been unable to agree on a clear, singular legal standard for exactly where the boundaries lie around subject matter eligibility for patents, and the decision (or, the lack thereof) thus practically cried out for Supreme Court review.

I expect there will be a significant amount of amicus briefing, with all sorts of companies, organizations, thought-leaders and others weighing in on the issue as the Supreme Court considers it.

Of course, it remains to be seen how the Court will ultimately rule on the matter in its next term.  This may be a sweeping decision that clarifies or even overturns aspects of Myriad, Prometheus, Bilski and/or other cases deeper in the history of patent subject matter eligibility (e.g., Gottschalk v. Benson, Parker v. Flook, Diamond v. Diehr, etc.), or it may turn out to be something either very focused in its holding (e.g., relating only to the question of semantics in claim drafting) or as nebulous in its meaning and impact as that challenging Prometheus decision has been.  We’ll see.

Regarding timescale, the Court typically issues its decisions around June (near the end of its annual term), so I imagine that’s roughly when we’ll have its opinion.

The Court’s opinion looks sure to be an interesting read and we’ll provide a review shortly after it issues.

Mark Richardson  16 January 2014

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: