On December 5, 2013, the Supreme Court granted certiorari in Alice Corporation v. CLS Bank, in response to a Petition for a Writ of Certiorari which had been filed on September 4, 2013 in the wake of the en banc CLS Bank decision by the Federal Circuit in May 2013. In addition, a decision is expected shortly, perhaps early next week, with respect to a separate Petition for a Writ of Certiorari which had been filed on August 23, 2013 by WildTangent, Inc. as an appeal of the decision of the Federal Circuit in Ultramercial, LLC v. Hulu, LLC. Decisions regarding these petitions have been anticipated by patent practitioners due to uncertainty in the law with respect to patent eligibility of computer-implemented inventions, which has become manifestly apparent as a result of the decisions set forth by the Federal Circuit in the original appeals.

In the Petition filed by Alice, counsel for Alice refers to the intention of the Federal Circuit to address two questions: “(1) What test should the court adopt to determine whether a computer-implemented invention is a patent-ineligible ‘abstract idea’; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise ineligible abstract idea?”, and “(2) In assessing patent eligibility under 35 U.S.C. 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium?”. The Petition indicates that it has been widely “anticipated that the en banc court would use this case to set forth clearer guidance” with respect to these issues.

The Petition then proffers that “far from providing clearer guidance, the Federal Circuit issued six separate opinions spanning more than 125 pages, none of which reflected an approach endorsed by a majority. . . . As a result, the legal standards that govern whether computer-implemented inventions are eligible for patent protection under section 101 remain entirely unclear and utterly panel dependent. . . . The Federal Circuit has left no doubt that it is irreconcilably fractured. The uncertainty that now plagues . . . the patent system will cause severe harm and waste.”

In the Petition relating to Ultramercial, counsel for WildTangent asserts that “[t]he decision in this case is particularly problematic because it seeks to fill the void left in the wake of the Federal Circuit’s failed en banc hearing in CLS Bank v. Alice Corp., which produced multiple conflicting opinions on the patent eligibility of computer-implemented claims but no majority rationale.” In this Petition, counsel submits that the “Question Presented” is as follows: “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?”

Inventors and patent practitioners will be watching closely to see whether the Supreme Court accepts the Petition filed by WildTangent, which, if accepted, would likely be deemed to be a companion case to Alice.