Joseph Saltiel Authors Article “Five Years After Alice: Five Lessons Learned From the Treatment of Software Patents in Litigation” in WIPO Magazine

September 5, 2019

In an article published in WIPO Magazine’s August 2019 issue, Joseph Saltiel discusses five lessons learned from the Supreme Court’s landmark decision from five years ago, Alice Corp. v CLS Bank International.

Under Alice’s two-part test, a court must first take into consideration whether the patent claims are directed to a patent ineligible concept and, if so, the court must then consider if the other elements of the claim can make the claim into a patentable concept.

Five years later, there are lessons to be learned including that Alice should be considered in every software patent litigation, the legal analysis of software patents under Alice differ from other legal analysis, and Alice decisions are not predictable.

Alice has conflated patentability, obviousness and enablement. Patent law is complicated as it is, but with Alice, courts are forced to cobble together three distinct and complicated legal concepts and rely on generic characterizations of the claims without evidence or a developed record. It is a difficult task, which has caused unpredictability when courts apply Alice to software patents,” Saltiel explains.

Alice has disrupted software patent litigation. In 2015, over 60 percent of the software patents challenged under Alice were found to have at least one claim unpatentable. However, in 2019, the percentage of successful Alice challenges was less than 50 percent and is expected to continue dropping. The Federal Circuit has noted that factual inquiries may be necessary in order to delay decisions on Alice and resolve cases on other grounds.

Congress is considering overruling Alice and passing legislation that will likely reverse many trends and impact litigation of software patents however, until a new law is passed it is hard to say what that impact will be.

Readers may access Mr. Saltiel’s full article “Five Years After Alice” Five Lessons Learned From the Treatment of Software Patents in Litigation” on WIPO online.