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

          Friday, July 22, 2016

          David Owen '09 Is Steering Airbnb's Policy As Laws Evolve

          ‎“We are in a new space that's constantly evolving, and there's a lot of opportunity for creativity and innovation," says Owen, Head of Policy Strategy at Airbnb.
          Wednesday, July 20, 2016

          UC Hastings Staff Who Bring the Awesome: Maria Catig, Accounts Receivable Accountant

          “She’s short in stature, but 10 feet tall with joy and personality!”
          Wednesday, July 06, 2016

          Alumni Roger Chan ’98 and LaRonda McCoy ’86 Appointed to Superior Courts

          Chan joins the San Francisco Superior Court bench, McCoy the Los Angeles County Superior Court.
          Friday, July 01, 2016

          UC Hastings Board Chair Thomas F. Gede ‘81 Elected to the American Law Institute

          Clarifying the law through Restatements, Principles and Model Penal Codes
          Thursday, June 30, 2016

          Summertime Challenges

          Letter from Acting Chancellor & Dean David Faigman
          Go to News Archive