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Patent Eligibility After 'Alice'

Nearly every patent practitioner has been impacted by the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014). Alice applied the two-part eligibility test set forth in Mayo Collaborative Services v. Prometheus Labs, 132 S.Ct. 1289 (2014),i.e., is the claim directed to ineligible subject matter and, if so, is there an inventive concept in the claim that amounts to something significantly more than the mere ineligible subject matter? In Alice, the answer was no on both counts.

Patent prosecutors have met a dramatic increase in rejections on patent ineligibility grounds under 35 U.S.C. §101 and a significant decrease in allowed software and business method patents. For patent litigators, §101 has become the defense du jour, with district courts granting nearly two-thirds of motions asserting ineligibility. But is there hope for surviving Alice challenges? Perhaps.

Recently there have been a number of decisions denying patent ineligibility challenges. According to district court statistics available via DocketNavigator as of May 16, the percentage of §101 motions granted outright (at either the pleading or summary judgment stage) decreased from 62 percent for decisions handed down in the first year following the June 19, 2014, Alice decision, to 53 percent for decisions handed down in the nearly 11 months that followed.

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