June 16, 2015 Articles

Procedural Grounds for Raising a Section 101 "Alice" Motion

These motions may be made at nearly every stage of the case, but early challenges are more likely to be successful

By Kenneth R. Adamo, Eugene Goryunov, Greg Polins, and Rajat Khanna

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the U.S. Supreme Court set out a two-part framework for analyzing patent eligibility under 35 U.S.C. section 101. Under Alice, a trial court must first determine whether the challenged claims "are directed to a patent-ineligible concept," i.e., an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed to an abstract idea, the court then must determine whether the claims recite "additional elements" that "transform the nature" of the claims into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. Merely adding a "generic computer" to the mix or reciting additional "conventional steps" cannot transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2357. As U.S. District Judge Donato (Northern District of California) aptly put it: "[T]ake a standard this and a standard that . . . and plug them all together, you're still in the town of Standard." Transcript of Motion Hearing, Open Text S.A. v. Box, Inc., No. 3:13-cv-04910 (N.D. Cal. Jan. 14, 2015).

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