In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".

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Bingo, the popular game of chance and subject of a multi-billion dollar gaming industry, came within the sights of the Federal Circuit’s application of patent eligibility recently.

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In a unanimous opinion, the U.S. Supreme Court ruled today that all claims at issue in the highly anticipated case of Alice Corp. v. CLS Bank Int'l. are invalid under §101 of the patent statutes.

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The Federal Circuit held recently that an application programming interface (“API”) may fall within the scope of copyright protection despite its functionality.

Oracle v. Google primarily concerned Google’s copying of the “structure, sequence and organization” of numerous API packages of Oracle’s Java software package.

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The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under  35 USC § 101.  This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.

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Four months after the CLS Bank v. Alice opinion, the Federal Circuit continues to struggle with subject matter eligibility of computer-related inventions under § 101 of the U.S. patent laws.  In Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed Cir. 2013), Chief Judge Rader and Judge Lourie continue their disparate dialog that began in CLS Bank Int'l v. Alice Corp, and continued in Ultramercial Inc. v. Hulu LLC. However, contrary to the result in Ultramercial, here the party arguing against eligibility of computer programs won out.

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It was, perhaps illy established, that transitory signal claims are per se unpatentable under Section 101 of the U.S. patent laws.  This was established by in re Nuijten, a Federal Circuit decision dating back to 2007.  Recently, in Ex Parte Mewherter, the USPTO has went a step further to hold that a standard Beauregard claim (a computer program on a computer readable medium) is not patent eligible, simply because it could encompass transitory signals.  The case has recently been designated by the Patent Trial and Appeal Board (PTAB) as a precedential decision.

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As written earlier in our blog, the CLS Bank decision left many guessing as to what might be considered patent eligible subject matter under § 101 of the U.S. patent laws.  In a more recent and less known opinion, Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013), a three judge panel attempted to provide some additional guidance in light of the CLS Bank indecision.  Of note is that the panel included the authors of the two main opposing opinions in CLS Bank, Chief Judge Rader and Judge Lourie.  However, rather than authoring different holdings, the panel agreed that the claims at issue in this case met the requirements of § 101.

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When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.

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