UCHastings Instagram

@hastingswlj Editor-in-Chief 3L Sonya Laddon Rahders receives #Emerging #Leader #Award from Mortar Board.
Instagram Photo Likes mk08ca, tinamariefern, emma_levey and 16 others like this.
Friday, December 06, 2013

UC Hastings Patent Law Students File Amicus Brief, SCOTUS Grants Certiorari, in Alice v. CLS Bank

Sample alt tag.
From left: 2L Katherine D. Stepanova, MSL candidate Mike H. Liu, and 3Ls Molly A. Jones and Jacob J. True.

The Supreme Court has granted review in a vexing intellectual property case in which four UC Hastings patent law students filed an amicus brief, asking the court to hear the case and suggesting a way through the mire.

The high court said Dec. 6 it would review CLS Bank v. Alice Corp. The case focuses on whether and to what extent software and similar computer-implemented inventions can be patented. Clarifying the issues around software patents could significantly curtail the uncertainty and attendant costs in patent litigation.

For many years, lower courts have been grappling with what is, and is not, patentable subject matter. The issue has been particularly vexing in the areas of business processes, software, and genetic medicine.

The Constitution provides authority for a federal patent system, and according to long-ago rulings by the Supreme Court, laws of nature, abstract ideas, and purely mental steps cannot be patented. So, for example, one can’t get a patent on the law of gravity or on how to count to 100. The more complicated issue is when one programs or configures a computer to count to 100, or to perform far more complex calculations or set of operations.

Although the Federal Circuit has exclusive jurisdiction over patent litigation from all the district courts across the nation, the many split opinions in CLS Bank did little to settle the matter. The patents at issue in CLS Bank included various types of claims—a computerized method, a computer-readable medium containing computer instructions, and a computer system to implement those instructions—that were directed to a method of avoiding risk during the closing of financial transactions by using third-party escrow accounts.

A three-judge panel in the Federal Circuit had ruled that the claimed inventions were not patentable, the Federal Circuit agreed to rehear the case en banc, but could not agree how to handle the matter. As one patent scholar noted, “they managed to issue a two-sentence opinion, simply affirming that the claims are not patentable subject matter, and followed that up with over 130 pages of concurrences and dissents.”

Patent Law Seminar Project

The four students are in the Current Issues in Patent Law seminar at UC Hastings. When they noticed that the window to file an amicus brief in the case overlapped with their course work this term, the quartet agreed to work as a team on the brief. They argue that the Supreme Court should hear the case, and suggest a test the court should use in determining the underlying issues:

“Some portion of patent disputes invariably will continue to go to trial. …A considered and thorough opinion from this Court will nevertheless establish adept precedent, something that the Federal Circuit, despite toil and earnest scrutiny, has been unable to do. CLS Bank poses a suitable and representative case for review.”

“To ignore the question of patentability of computer-implemented patents is to acquiesce in continued uncertainty in the patent community and to passively endorse more crowded USPTO (U.S. Patent and Trademark Office) and patent court dockets.”

The case has drawn experienced patent counsel from some of the top intellectual property firms in the country, including Sidley & Austin and, Gibson Dunn & Crutcher; and amicus briefs from groups such as the Electronic Frontier Foundation and the IEEE (Institute of Electrical and Electronics Engineers), the world’s largest technical professional association.

The UC Hastings amicus was written by 3Ls Molly A. Jones and Jacob J. True; 2L Katherine D. Stepanova; and Mike H. Liu, an MSL student. Professor Rory Little, a constitutional law scholar admitted to practice before the high court, signed their brief as counsel of record. “It’s wonderful to see students so engaged in active lawyering,” Little said.

"If anyone ever asks them if they know how to file a brief with the Supreme Court, they're going to be able to say yes," Little told The Recorder.

Read more about the case on SCOTUSblog, here.

Go to News Archive

Share this Story

Share via Facebook
Share via TwitterShare via EmailPrint Friendly Version

Other Recent Stories/ RSS

Wednesday, September 17, 2014

UC Hastings Presents Gordon Mathis Riley Environmental Law Lecture

Environmental leader William K. Reilly of TPG Capital will give the second annual lecture on Sept. 24 in Mary Kay Kane Hall.
Tuesday, September 16, 2014

Feldman on Tug of War between Supreme Court & Federal Circuit

Coming of Age for the Federal Circuit
Monday, September 15, 2014

Spotlight on 2L Sarah Barr

Barr handled “more cases, of greater complexity, than I could have expected of any law student,” says Deputy Attorney General Dorian C. Jung.
Saturday, September 13, 2014

Startup Legal Garage Client Receives First TechCrunch "Include" Grant

Black Girls Code promotes participation of women of color in the tech sector.
Thursday, September 11, 2014

Judges Add Intellectual Firepower, Real World Experience to UC Hastings Curriculum

“Studying with judges gives students exposure to experts who understand not only cutting edge issues of law, but how professional skills and legal knowledge make lawyers effective."
Go to News Archive