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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationLJN NewslettersPatent LitigationUnited States Supreme Court

Is This Really Patentable?

By Louis L. Touton, Steven J. Corr and Nickou Oskoui

With the Supreme Court's decision in Alice v. CLS Bank, 134 S. Ct. 2347 (2014) (Alice), parties defending against a claim of patent infringement gained a potential way to find an early resolution to patent litigation.

For decades before 2010, defendants rarely challenged a patent by questioning whether it was directed to unpatentable subject matter under Section 101 of the Patent Act. Typically, a defendant would challenge an asserted patent on the basis that it lacked novelty (Section 102), was obvious (Section 103), and/or failed to clearly describe or enable the claimed invention (Section 112). Further, a number of older opinions endorsed the patentability of software and business methods. See, e.g., Diamond v. Diehr, 450 U. S. 175 (1981); State Street Bank & Trust v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).

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