By: Stuart P. Meyer

There has been significant commentary, both before and after the Supreme Court’s decision in Alice, that the various judicially created exceptions to patentability under 35 USC § 101 are not only sound, but are also constitutionally mandated.  For instance, a major thesis of the ACLU’s amicus brief in Alice was that the First Amendment naturally limits § 101, as “patents giving control over intellectual concepts and abstract knowledge or ideas—and thus limiting free thought—would violate the First Amendment.”

The Court may have already given some guidance in this area, and lower courts appear to be listening.  In a September 4 decision, one judge in the Central District of California had no difficulty dismissing, via FRCP 12(b)(6), an infringement complaint because the court found that the three patents-in-suit did not satisfy § 101, based on the judicially created exceptions as taught by AliceEclipse IP LLC v. McKinley Equipment Corp., Case No. SACV 14-742-GW (C.D. Cal. September 4, 2014).  Judge George Wu observed that Justice Kennedy in Bilski, delivering the opinion of the Court explained the limitations on  § 101.  The pertinent portion of Bilski reads:  “While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be ‘new and useful.’  And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.”


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By: Robert R. Sachs

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office. 

Our approach to this roundtable was different from the typical conference or roundtable on patent

By: Robert R. Sachs

You are heading to Grandma’s house for yet another family gathering. Upon entering the front door, you are belted by a thunderclap of the smells of mothballs, yellowed plastic sofa covers, cat hair and foot powder. As you regain your bearings, the mellifluous under notes of Grandma’s apple pie reach you: tiny, moist, fragrant, individually encapsulated particles of Granny Smiths, butter and sugar, all borne upon the dry, hard air like foam upon breaking waves. You beeline to the kitchen, bypassing the hubbub of family, friends and distant cousins congregating in the living room.


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By: Robert R. Sachs, Daniel R. Brownstone

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the bellwether case for the patent eligibility of software. The question