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Fish & Richardson Announces “Alice Tracker” Resource for Intellectual Property Practitioners

October 7, 2015

Fish & Richardson Announces “Alice Tracker” Resource for Intellectual Property Practitioners

October 7, 2015

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​Fish & Richardson today announced that it has launched a new “Alice Tracker” online resource for intellectual property practitioners, which provides a single source for significant decisions in which the patent-eligibility of claims is addressed under Alice.  The Alice Tracker database, which is free and accessible online, is the first such database of its kind and includes easy-to-understand summaries of relevant district court, Federal Circuit, and PTAB cases.  All of the cases can be filtered on various parameters, including date, court, judge, category, whether an “abstract idea” was found, and whether “something more” was found.  Cases are selectable and a summary is provided, along with a link to the full-text of the decision.

While the 2014 U.S. Supreme Court Alice decision (Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134 S. Ct. 2347) dealt with software, it was not about software per se.  Instead, Alice focused on the patent-eligibility of an invention encompassing an abstract idea, regardless of whether the abstract idea is implemented in software.

“The Alice decision has had a dramatic effect on the validity of so-called software patents and business-method patents,” said Ryan McCarthy, a principal at Fish & Richardson who led the development of the Alice Tracker.  “Since Alice, there have been hundreds of decisions coming out, which apply Alice in various contexts.  For example, a nationwide analysis shows that approximately 70 percent of motions to dismiss or for summary judgment for lack of eligibility under Alice have been granted.”

In Alice, the Supreme Court relied on the two-part analytical framework for determining whether a claim is patent-eligible under 35 U.S.C. § 101, which the Supreme Court previously articulated in Mayo Collaborative Services v. Prometheus Labs., Inc. in 2012.  First, the court must determine if the patent claim under examination contains an abstract idea, such as an algorithm or method of computation.  If the answer is “no,” the subject matter of the claim is patent-eligible, and the analysis ends.  If the answer is “yes,” the court must proceed to the second step to determine whether the patent adds “something more” to push the claim to patent-eligibility.

“The Supreme Court decided Alice, but provided little substantive guidance on how to evaluate step one or step two,” said McCarthy.  “Since the decision, courts have struggled with identifying abstract ideas, as well as the ‘something more’ required to meet part two of the test.  The Alice Tracker organizes the latest case law and allows users to quickly gain valuable insight into the basis of decisions.”

The Alice case has changed the landscape for patent prosecutors and litigators, and the Alice Tracker is a useful tool for looking at information in the aggregate and developing more effective strategies.  For example, a new PTAB decision can influence how to approach a new post-grant proceeding.  On the litigation side, the Alice Tracker can be used as a looking glass into how claims and particular subject matter are being handled in a particular jurisdiction, and even a particular judge. This insight can influence how a complaint is written, or a motion is written and argued.

The Alice Tracker database will be updated regularly.  An upcoming feature includes an option to sign up for alerts.

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