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26 Fed. Cir. B.J. 331 (2016-2017)
Are the Federal Circuit's Recent Section 101 Decisions a "Specific Improvement" in Patent Eligibility Law?

handle is hein.journals/fedcb26 and id is 353 raw text is: 





Are the Federal Circuit's Recent

Section 101 Decisions a Specific

Improvement in Patent Eligibility Law?


Ted G. Dane*


Introduction
   In his dissenting opinion in Diamond v. Diehr,' Justice Stevens, reviewing
the jurisprudential landscape involving the patent-eligibility of software,
lamented  that the cases considering the patentability of program-related
inventions do not establish rules that enable a conscientious patent lawyer
to determine with a fair degree of accuracy which, if any, program-related
inventions will be patentable.' This description of the state of the law
remained  fairly accurate for more than three decades. Then, in the wake of
the Supreme  Court's decisions in Mayo Collaborative Services v. Prometheus
Laboratories, Inc.' and Alice Corp. Pty., Ltd. v. CLS Bank International,' a rule,
albeit a one-sided one, appeared to emerge: with rare exceptions, software
inventions were not patent-eligible.
   In a trilogy of 2016 cases, however, the Federal Circuit has rejected section
 101 eligibility challenges to patents involving software inventions.' While
 proponents of patent protection for software inventions welcomed these
 decisions, they create a new set of questions about section 101 analyses for
 software patents, including: (1) the patent-eligibility of algorithms; (2) when
 inventions directed to an abstract idea may nonetheless be patent-eligible;
 (3) the overlap between eligibility and obviousness analysis; and (4) the role
 of preemption.



     Partner, Munger, Tolles & Olson LLP. J.D., Stanford Law School, 1989. The views
 expressed herein are entirely those of the author. The author would like to thank Adam
 Lawton and Beth Laughton for their support and a special thanks to Heather Takahashi
 for her helpful suggestions. The author would also like to thank the editors of the Federal
 Circuit Bar Journal.
     450 U.S. 175 (1981).
   2 Id. at 219 (Stevens, J., dissenting).
     566 U.S. 66 (2012).
     134 S. Ct. 2347 (2014).
     See generally Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Bascom
 Glob. Internet Servs., Inc. v. AT&T Mobility, LLC, 827 E3d 1341 (Fed. Cir. 2016); McRO,
 Inc. v. Bandai Names Games Am. Inc., 837 E3d 1299 (Fed. Cir. 2016).

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