Post-Alice Issuance of Related Patent Does Not Inoculate Patent-In-Suit From Invalidity Under 35 U.S.C. § 101
December 21, 2015

The Supreme Court’s decision in Alice Corp. v. CLS Bank Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014), had a dramatic impact on so-called software patents and business-method patents. Following Alice, many such patents have been held invalid for claiming patent ineligible subject matter under 35 U.S.C. § 101.

Recently, the District of Delaware considered a patent owner’s argument that the patent-in-suit should not be held invalid under 35 U.S.C. § 101, because the U.S. Patent Office issued another patent relating to the patent-in-suit after the Supreme Court’s Alice decision. See Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT, at 26 (D. Del. Nov. 25, 2015, Order). According to the patent owner, “the issuance of the [related] patent protects the [patent-in-suit] from [the] Section 101 challenge.” Id. at 25. The Court, however, rejected this argument :

Were that fact determinative, [the patent owner's] position appears to be that any patent issued post-Alice would be inoculated from invalidity under Section 101. That is not the case. ‘Whether a claim is drawn to patent-eligible subject matter under 35 U.S.C. § 101 is a threshold inquiry to be determined as a matter of law [by the district court] in establishing the validity of the patent.

Id. at 25-26. The Court proceeded to grant a motion for summary judgment that the patent-in-suit was invalid under 35 U.S.C. § 101.

This decision is relevant to the merits of potential arguments that a patent owner may raise to discredit an invalidity challenge under 35 U.S.C. § 101. If you have any questions or wish to discuss how this decision may impact your business, please contact one of the authors below.   

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