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Software Patent Protection Curbed by U.S. Supreme Court

June 19, 2014

​Fenwick & West patent partner Robert Sachs was quoted in multiple articles regarding the Supreme Court’s recent decision in Alice Corp. v. CLS Bank, a closely watched case in which the Court ruled on patent eligibility of abstract ideas.  Sachs was also interviewed by KLIV News Radio Silicon Valley on this decision and has been selected as a panelist for the Law360 Twitter Panel to discuss the Court’s IP decisions this term.

On June 19, the Supreme Court ruled in a unanimous decision that abstract ideas are not eligible for patent protection, but, Sachs said, the Court did not go so far as to define what constitutes an abstract idea. 

“This Court continues to avoid making a positive statement of what counts as an abstract idea, or what counts a sufficient ‘transformation,’ and instead approaches all of these cases by saying…what does not count, what is ‘not enough.’ That leaves considerable uncertainty for patent holders now, and more importantly, for innovators going forward,” Sachs said, in Bloomberg BNA’s Patent, Trademark & Copyright Journal article “Mere Implementation of Abstract Idea with Computer Not Patent Eligible.”

"You only get to how a computer factors in a patent after you figure out whether an abstract idea is being claimed," Sachs told the Daily Journal, in “Supreme Court Ruling Unlikely to Change Patent Law Attorneys Say.” He added, "We still don't have an answer for that."

Sachs told SCRIP Intelligence that this decision could lead to patent litigants and lower courts attempting to answer the abstract idea question piecemeal.  "In the end, we have little guidance and much potential fodder for future litigation," said Sachs.

The Alice Corp. decision highlights that recent Court rulings are limiting the power of patent holders, Sachs told Bloomberg. “The court is doing many things that are restricting the ability to enforce patents rights and in this case to obtain patent rights,” he said in “Software Patent Protection Curbed by U.S. Supreme Court.”

However, on the bright side, Sachs told The San Francisco Business Times he was glad the Court did not issue a broad ruling that included all software. “The good news from a Valley perspective: they did not rule that software was ineligible for patent protection,” he said in“Will Supreme Court Patent Ruling Hobble the Trolls?”

The full articles are available through the Bloomberg BNA (subscription required) and San Francisco Business Times websites.​​