On December 6, the U.S. Supreme Court agreed to hear a case about whether computer-implemented inventions are patent-eligible subject matter under 35 U.S.C. § 101. The case, Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13-298, involves computer technology related to reducing the risk that either of two parties to a transaction will default by employing a third party intermediary. The patents claim this technology in various ways, including as a method of exchanging obligations, a data processing system, and a computer program embodied in a storage media. This is an important case, in part, because it addresses many of the claim types commonly used with computer and software-based inventions. The question presented to the Supreme Court is:

    Whether claims to computer-implemented inventions-including claims to systems
    and machines, processes, and items of manufacture-are directed to patent-eligible
    subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

The trial court concluded that all of the asserted claims were invalid under § 101. On appeal at the Federal Circuit, initially two out of three judges concluded that all of the claims were drawn to patent-eligible subject matter. Then the Federal Circuit reheard the case en banc, and produced a decision that ultimately affirmed the trial court (all of the claims invalid). However, the ten participating judges produced seven opinions with little agreement on the reasoning of how to consider the § 101 issue and why these claims are or are not invalid.

In addition to agreeing to hear the Alice case, the Supreme Court has also asked for a response brief for a similar petition, WildTangent, Inc. v. Ultramercial, LLC, No. 13-255, which is asking the Court to answer the question “When is a patent’s reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?”.

Patent-eligibility of some computer-implemented inventions has been uncertain since the Supreme Court’s 2010 decision in Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218, 177 L. Ed. 2d 792 (2010). Since then, Supreme Court cases involving § 101 have focused on other fields, including biotechnology and medical diagnostics.