“The Federal Circuit continues to define the contours of Section 101 challenges to patent eligibility in the wake of Alice,” said B.C. Boren, Baker Botts partner and chair of the IP/Technology Litigation practice group in the firm’s Palo Alto office. “We expect more decisions out of the Federal Circuit in the next few months, but if holdings vary from panel to panel, we may well see additional guidance from the Supreme Court on the subject in the next year or two.”
“As those in the industry are aware, the US patent eligibility doctrine was upended by the Supreme Court’s Alice v CLS Bank case, which applied the two-step Mayo v Prometheus test to computer-related inventions,” said Christa Brown-Sanford, Intellectual Property partner in the firm’s Dallas office. “We’re seeing that the US courts and the USPTO continue to apply Alice differently, so it will be interesting to see the approaches the courts will take in the upcoming cases with regard to computer-related technology, and software in particular.”
“Given the recent changes in the patent law landscape, patent holders and patent practitioners are left uncertain about issues that have a major impact on the value and viability of patents,” said David Weaver, Intellectual Property partner in the firm’s Austin office. “One of the notable rulings causing uncertainty about patentable subject matter is the Supreme Court’s opinion in Alice Corp. v. CLS Bank. Several upcoming cases in the Federal Circuit on 101 law present the Court with opportunities to further clarify the definition of ‘abstract ideas’ and the scope of patentable subject matter.”
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