On March 31, the Supreme Court will hear arguments in Alice Corp. Pty. Ltd. v. CLS Bank Int’l (Supreme Court Docket No. 13-298). At issue is the scope of § 101 patent-eligible subject matter, with the patent eligibility of computer-implemented inventions hanging in the balance. Special interest groups have shown significant interest in the outcome of the case, as no fewer than 50 amici briefs have been filed. Among those are differing briefs by three major interest groups – the American Civil Liberties Union (ACLU), the Intellectual Property Owners Association (IPO), and the American Intellectual Property Law Association (AIPLA).  Although a decision by the Supreme Court is not expected until June 2014, practitioners dealing with § 101 issues might want to consider the interest group‘s arguments as they position their clients for any eventual outcome.

The brief of the ACLU contains arguments against the patent eligibility of computer-implemented inventions. The ACLU is particularly concerned with methods that can be carried out using pencil and paper, which the ACLU considers to be no more than mental processes that a human can carry out. The ACLU is also concerned with claims that are not tied to specific software code, arguing that the progress of science is impeded when others are not allowed to devise new software code to execute a claimed process. The brief further includes an argument that system claims and computer-readable media claims should be treated the same as method claims when dealing with software related inventions, since method claims could be easily written as system or media claims. As a public policy justification, the brief points to a need to reduce litigation costs arising from business method patents and software patents that currently amount to billions of dollars.

The brief of the IPO begins by agreeing that it should not matter whether a claim for a computer-implemented invention is styled as a method, a system, or a storage medium for purposes of patent-eligibility, because form should not be elevated over substance. The IPO position differs from that of the ACLU, however, in proposing a test that would allow for patent-eligibility so long as the invention claims a specific and practical application of computer technology to accomplish a new and useful goal. The IPO would still require that the computer implementation be claimed with sufficient particularity and specificity to ensure meaningful limits on claim scope and that the computer implementation be a significant contributor to achieving the intended result. As a public policy justification, the IPO argues that computer implemented inventions are pervasive and essential in the modern economy and cautions against upsetting decades of settled expectations regarding legal protection via patent rights.

The brief of the AIPLA takes the opposite position from the ACLU and the IPO on the issue of the treatment of system and method claims. The AIPLA argues that patent claims directed to machines are tied to physical structures and are, therefore, patent eligible. The AIPLA further argues that claims to computer software methods should generally be eligible for patent protection, and that reliance should be placed more on §§ 102, 103, and 112 for examination. It is the view of the AIPLA that a computer program causes a programmed computer to operate differently as a machine, which is a specific, real world result that creates a new machine. As a public policy justification, the AIPLA notes that software related industries are critical financial and technology drivers, and that the fact an invention could be developed in a hard-wired implementation or in a software implementation should be irrelevant for determining whether such innovations are in principle patentable.

Given the above positions, a practitioner arguing for patent-eligibility might consider highlighting evidence showing that a claimed invention could not simply be carried out using pencil and paper and is instead tied to a specific and practical application that accomplishes a useful goal. Such a practitioner might also highlight important hardware elements in system claims to bolster the position that they should be treated differently from any method claims. On the opposite side, a practitioner arguing against patent-eligibility might consider highlighting evidence showing that a claimed invention is merely a mental process that any human could carry out with pencil and paper, and might further point out when a claim lacks specificity and when a general purpose computer is not placing any meaningful limit on claim scope. That way, the practitioner will be ready in advance of the Supreme Court’s upcoming CLS Bank decision.