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Fed. Circ. Reversal Of Alice Order Gives Patent Owners Hope

May 12, 2016

Patent owners have a new weapon to fight invalidations under Alice. In Enfish LLC v. Microsoft Corp., the Federal Circuit ruled that a judge who found that two database patents covered only abstract ideas had inappropriately oversimplified the patents. Bob Sachs spoke with Law360 about this significant ruling.

“The overall thrust of this decision is very positive for patent owners,” Sachs told the publication.

The ruling reframes the Alice test, a test that results in district courts almost always finding software inventions nearly always invalid, Sachs said.

“Federal courts have granted about 73 percent of motions seeking to invalidate patents under Alice,” Law360 reported, citing data gathered by Sachs in fall 2015. The Enfish decision may alter this trend.

In its decision, the Court laid out some guidelines for evaluating computer-related patents under Alice which represents “a significant departure from what has been happening so far,” Sachs said. “The court is saying that this is not a quick look, it’s a substantive analysis. Otherwise you end up swallowing the law.”

“Given all the pending 101 motions, I’d be surprised if counsel for patentees were not filing papers right now” and citing the Enfish decision, Sachs said.

The full article is available through the Law360 website (subscription required).

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