SCOTUS to decide whether Alice-focused case is ripe for review
The US Supreme Court could decide to take on a case that re-visits the landmark 2014 Alice v CLS Bank decision, which rocked the computer software patent industry.
Synopsys, an electronic design automation company, petitioned the court to “examine whether an otherwise revolutionary technological breakthrough is not an ‘inventive concept’” under the second step of Alice “merely because the court believed the breakthrough could theoretically be implemented without a computer”.
It stems from a dispute with rival Mentor Graphics, which Synopsys accused of infringing US patent numbers 5,530,841, 5,680,318, 5,748,488, and 6,836,420, relating to logic circuits.
Mentor filed a summary judgment that the claims were invalid under section 101, with the district court ruling that the claims did not require the use of a computer, or any other type of hardware, and were therefore invalid.
In October 2016, the US Court of Appeals for the Federal Circuit noted the method could be performed mentally or written down. The patents in question failed to pass the second part of the two-stage test set out in Alice.
In Alice, the Supreme Court set out a two-step analysis of patentability, the first determining whether the idea is abstract, while the second was labelled the “inventive concept” analysis, which should determine whether there is genuine, human contribution to the claimed subject matter.
The “human contribution must contain additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself”, the decision read.
Synopsys argued that, in practice, the claimed inventions would have to be performed on a computer to work in a meaningful way, but this was rejected.
Synopsys then petitioned the Supreme Court, which returned for its first conference ahead of the new term yesterday, September 25.
It will grant or deny review by Monday, October 2, when it convenes formally for the new term.
As reported by SCOTUSBlog, the justices removed Trump v International Refugee Assistance Project and Trump v Hawaii from the court’s October sitting, with the other petitions still to be heard.
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