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          Monday, October 21, 2013

          Students File Amicus Brief in U.S. Supreme Court in Vexing Software Patent Case

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

          Four UC Hastings patent law students have filed an amicus brief with the U.S. Supreme Court asking the justices to hear a case to help decide whether and to what extent software and similar computer-implemented inventions can be patented.

          The subject of the amicus brief is CLS Bank v. Alice Corp. Clarifying the issues around software patents could significantly curtail the uncertainty and attendant costs in patent litigation.

          The 10-member en banc Federal Circuit split sharply, releasing seven different opinions. The issues are thus ripe for resolution by the high court.

          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.”

          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.

          A decision from the Supreme Court on whether to grant certiorari is expected sometime this winter.

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