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Alice v. CLS Bank (2012, USA)

*** Supreme Court's ruling analysis here ---> Alice v. CLS Bank (2014) ***

CLS Bank International v. Alice Corporation Pty. Ltd. is a patent dispute which was heard twice by the Court of Appeals (second time was en banc) and then by the US Supreme Court. The question posed to the Supreme Court was whether software can be patentable subject matter.

The Supreme Court invalidated the patent and also ruled that "on a computer" cannot transform an abstract idea into a patent-eligible one:

This created major precedent and will be often cited alongside Bilski (2010) and Mayo (2012).

The Court of Appeals had also invalidated the patent, but the judges couldn't agree on why:

US Supreme Court

The question posed was:

Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

Amicus briefs were submitted in February 2014: Alice v. CLS Bank amicus briefs

The oral hearing was on the 31st of March: hearing transcript (mirror 1) (mirror 2)

Articles reviewing the oral hearing:

Outcomes: minimalist or maximalist

The question posed clearly gives the court the opportunity to fully abolish or uphold software patents, but narrower rulings are also possible.

From reading the hearing transcript, the judges sound unlikely to declare all software patentable, but there are some isolated statements which are worrying:

SCALIA: We have said that you can’t take an abstract idea and then say: use a computer to implement it. But we haven’t said that you can’t take an abstract idea, and then say: here is how you use a computer to implement it.

The possibility of a narrow ruling which would change very little is suggested by by Justice Sotomayor's question: "Why do we need to reach this in that ­­-- reach software patents at all in this case?"[1]

Dennis Crouch (of the Patently-O blog) also notes that the court could simply say "Unpatentable: See Bilski, Mayo, Flook, and Benson".

CAFC en banc

Amicus briefs

Are there any briefs that support abolishing software patents? I didn't find any in the 18 briefs posted by Patently-O on 19 December. Patently-O added that "briefing continues" and that the briefs supporting Alice are due in January 2013, but if all the remaining briefs support Alice then we won't find any anti-swpat arguments in those briefs.

I've read conflicting information about the deadlines for submitting briefs (discussed below).

Some summaries and excerpts of the briefs can be read in Patently-O's article and Groklaw's article.

  1. Business Software Alliance (See also: Business Software Alliance)
  2. EFF (See also: Electronic Frontier Foundation)
  3. CCIA (See also: CCIA)
  4. Clearing House Ass'n
  5. Google (and Red Hat) et al. (See also: Google, Red Hat)
  6. Stites
  7. British Airways
  8. Profs Hollaar & Trzyna
  9. Juhasz law firm
  10. Philips (See also: Philips)
  11. Internet Retailers
  12. IP Owners Ass'n
  13. USA govt. (See also: US government)
  14. Sigram Schindler
  15. NY IP Law Ass'n
  16. IP Law Ass'n of Chicago
  17. Conejo Valley Bar Ass'n
  18. IBM (See also: IBM)

Review of a few briefs

Google, Facebook, Red Hat, et al.
This brief makes good points, but its suggestions still allow that "claims limited to a particular computer implementation of an abstract idea might be patentable subject matter".
Places the blame on overly-broad patents.

Deadline for the en banc hearing

Can someone help reconcile these conflicting sources of information on the deadline for filing an amicus brief?

  • A lawyer told me the deadline was 45 days after the en banc order, which would make the deadline 22 Nov 2012
  • The en banc order says to see Rules of Practice, Rule 29, and that rule's "practice notes" say to see Rule 31(a), which says "In an appeal from a court, the appellant must serve and file its initial brief within 60 days after docketing.", which would be 9 December 2012 (if "docketing" happens on the day of the en banc order).
  • But the en banc order was 9 Oct and yet US govt filed their brief on 14 Dec, and Patently-O said on 19 Dec that "briefing continues"

So what was the deadline? Or is it still open??


Newest first, dates as YYYY-MM-DD, just the highlights:

  • 2013-03-31: Oral arguments heard
  • 2013-02-26: Amicus briefs filed (see: the briefs)
  • 2013-12-06: US Supreme Court agrees to hear the case
  • 2013-05-08: CAFC, en banc, invalidates the patent but can't agree on why (see: the ruling)
  • 2012-11-22: Deadline for submitting amicus brief for the en banc rehearing (right? 45 days after the en banc order)
  • 2012-10-09: CAFC vacates own 9 July opinion and agrees to rehear case en banc
  • 2012-07-09: CAFC publishes opinion in this appeal ("panel decision"): upholds the patent
  • 201?-??-??: Appeal filed to CAFC; granted
  • 2011-03-09: District court enters final judgement: invalidates the patent
  • 2010-02-02: CAFC denies petition for interlocutory appeal
  • 2007-05-??: CLS Bank files suit for declaratory judgement of non-infringement or invalidity
  • 200?-??-??: Alice accuses CLS Bank of infringing four patents

For more complete timelines, see the court rulings and amicus briefs, particularly the CAFC's 9 July 2012 ruling: [1].

Alice's patents in other countries

Alice's patents were rejected by the European Patent Office.[2]

Related pages on ESP Wiki

External links

Court documents

Patently-O's coverage

Newest first...


  1. page 45, line 20
  2. "Unpatentable: See Bilski, Mayo, Flook, and Benson (comment by Paul Cole)". "Following the original decision in the Federal Circuit I published a guest post on IPWatchdog pointing out, amongst other things, that the European equivalents of the Alice patents had not been granted"