The U.S. Supreme Court will hear arguments in Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13-298, on March 31, guaranteeing a different form of March Madness for patent law practitioners. In the meantime, courts are responding to uncertainty created by the U.S. Court of Appeals for the Federal Circuit's widely splintered decision in different ways.

In the United States District Court for the Eastern District of Texas, Judge Leonard Davis recently found claims invalid under § 101, relying primarily on Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013), petition for cert. filed sub nom. WildTangent, Inc. v. Ultramercial, LLC (U.S. Aug. 23, 2013) (No. 13-255) and Bilski v. Kappos, 130 S. Ct. 3218 (2010). Clear With Computers, LLC v. Dick's Sporting Goods, Inc., No. 6:12-cv-00674 (E.D. Tex. Jan. 21, 2014). Judge Davis declined to stay Clear With Computers LLC's case against Dick's Sporting Goods and a number of other defendants pending a Covered Business Method Review, instead granting defendants' motions on the pleadings and finding the asserted claims invalid under § 101. The claims, which were directed to a "system which facilitates sales from an inventory of the selling entity," were unpatentable because the only independent claim could be "performed entirely by a human, mentally or with pencil and paper." Clear With Computers argued that the asserted claims specified a "configuration engine of a computer system," which it had construed as including "one or more solvers." Because the specification contained detailed description of the "solvers" performing the method in a way that a human being was not capable of, a human being could not replace the "configuration engine." Judge Davis rejected that argument, noting that the focus of the eligibility analysis was on the claims, not the specification, and that claim 1 included only a passing reference to the "configuration engine" and no references at all to "solvers." Clear with Computers' attempt to argue that the claim was valid under the "machine or transformation" test was also rejected. Judge Davis agreed with the defendants that the "configuration engine of a computer system" was simply a general-purpose computer without specified programming and was not essential to the invention. No transformation occurred because the invention simply receives product queries and does not transform them. The dependent claims merely claimed additional ways of presenting the inventory information and therefore only provided a "token and conventional, post-solution limitation that is insufficient to render the claim patent eligible."

On the other hand, in the United States District Court for the District of Delaware, MetLife recently moved to dismiss a case under § 101, arguing that The Money Suite Company's patent "is directed to an abstract idea—using a computer to generate a quote for a financial product—and is thus non-patentable subject matter." Money Suite Co. v. MetLife, Inc., No. 13-1748-GMS (D. Del. Jan. 9, 2014). Rather than address the merits of the motion, Chief Judge Gregory M. Sleet stayed the case sua sponte pending the Supreme Court's ruling in CLS Bank. Judge Sleet noted that the Federal Circuit's "fractured" CLS Bank opinion indicated that the court was divided on the applicability of the "abstract idea judicial exception to patent eligibility under § 101 of the Patent Act" to computer-implemented inventions. Judge Sleet expressed hope that the Supreme Court's decision to grant certiorari in CLS Bank would lead "to an opinion that shall provide guidance for innovators and district courts alike with regard to patent eligibility of computer-implemented inventions under 35 U.S.C.
§ 101." Judge Sleet is not alone. Will these last few months of uncertainty bring a flurry of attempts to invalidate patents? If the case is before Judge Sleet, a § 101 motion would certainly provide a brief respite for some defendants while we all wait with bated breath.

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