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ANN ARBOR– Taking a close look at the unanimous Supreme Court decision in Alice v. CLS Bank on its one year anniversary (June 19), James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., says the decision fundamentally changed the way software claims are analyzed for patent eligibility.

“The impact of Alice was immediate and the court’s decision has been used aggressively by litigants to challenge the validity of many different types of software and internet-based patents under 35 U.S.C §101,” Cleland said.

The claims at issue in Alice v. CLS Bank were directed to financial-trading systems where trades between two parties who were to exchange payment were settled by a third party in ways that reduce the risk of the transaction. The Court determined that the claims were not patent eligible because they were directed towards an abstract idea and did not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible concept. The Court stated that tying an abstract idea, i.e. a method of reducing risk by using a third party in a financial transaction, to generic computer components was insufficient to transform the idea into patent-eligible subject matter.

“The Supreme Court’s Alice decision has had a significant impact on motion practice involving software and internet-based patents in district courts across the country,” Cleland said. “As of June 9, 2015, district courts issued over 70 decisions addressing pretrial dispositive motions based on patent-ineligible subject matter under 35 U.S.C §101. District courts found the asserted patents invalid in 53 of 75 (71%) of those decisions.”

Breaking the types of pretrial motions down into smaller groups, Cleland notes district courts granted 14 of the 19 Rule 12(b)(6) motions (74%), 15 of the 22 Rule 12(c) motions (68%) and 24 of the 34 Rule 56 motions (71%). Not included are partial rulings of invalidity pursuant to two Rule 12(b)(6) motions and two Rule 56 motions.

Additionally, following Alice and as of June 9, 2015, the Patent Trial and Appeal Board (“PTAB”) issued 30 final written decisions addressing unpatentability challenges under 35 U.S.C §101. The PTAB deemed all of the challenged claims unpatentable.

“Moving forward, companies accused of infringing software and internet-based patents should give careful consideration to filing dispositive motions based upon Alice under 35 U.S.C §101 early in the litigation process or petitioning for inter-partes review or other PTAB proceeding, to invalidate patents that cannot pass the Supreme Court’s Alice test,” Cleland said.
“At the same time, owners of software and internet-based patents need to give careful consideration to the patent eligible subject matter of their patents when considering making an accusation of infringement or filing suit.”

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The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property, making Brinks one of the largest intellectual property law firms in the U.S. Clients around the world rely on Brinks to help them protect and enforce their intellectual property rights. Brinks attorneys provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is available at

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