Recent 35 U.S.C. § 101 Challenges Bring Varied Results

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...