In an article for Managing IP, Bass, Berry & Sims attorneys Michael Kiklis, Shu Chen and Matthew Zapadka outlined several lessons learned since the U.S. Supreme Court’s 2014 decision in Alice v. CLS Bank. During the five years post Alice, the Federal Circuit has issued approximately 100 decisions involving Section 101 cases. The authors discuss key lessons from these cases, including:
- Whether preemption remains a stand-alone test.
- Functionally drafted claims reciting steps of “collecting,” “analyzing” and “displaying” data have frequently been found ineligible.
- No business-method patents have survived 101 challenges since Alice.
- The patent specification has become an important tool during a 101 inquiry.
- The Federal Circuit has provided more guidance on when pre-trial 101 invalidity motions can prevail by addressing both questions of fact and claim construction issues.
The authors also outline important trends associated with computer-related and life sciences inventions that practitioners should understand to survive 101 challenges during prosecution, at the district courts, at the Patent Trial and Appeal Board, or during an appeal to the Federal Circuit.
“In the five years since Alice, the Federal Circuit has developed a large body of 101 case law. Although it has been criticized as being sometimes contradictory, confusing and unclear, analysis of all the Federal Circuit’s decisions reveals some pretty clear guidance that will assist practitioners in successfully navigating 101. All practitioners need to do now is use that guidance.”
The full article, “Lessons Learned Five Years After Alice,” was published September 18, 2019, by Managing IP and is available online (subscription required).