No. 19-1017

Solutran, Inc. v. Elavon, Inc., et al.

Lower Court: Federal Circuit
Docketed: 2020-02-14
Status: Denied
Type: Paid
Response Waived
Tags: alice-test alice-v-cls-bank bilski-v-kappos business-method-patent business-method-patents claim-construction patent-eligibility prior-art subject-matter-eligibility
Key Terms:
Patent
Latest Conference: 2020-03-20
Question Presented (AI Summary)

Does Alice's step one require that the claims be viewed as a whole and that consideration be given to the claimed advance over the prior art?

Question Presented (OCR Extract)

QUESTION PRESENTED This Court has held that laws of nature, natural phenomena, and abstract ideas are not patentable subject matter. Alice Corp. Pty. Ltd. v. CLS Bank Intl, 573 U.S. 208, 217 (2014). Alice set forth a two-step test for determining subject-matter eligibility. Step one determines whether a claimed invention is directed to a patent-eligible concept. Here, the patent-at-issue’s claims, when viewed as a whole, are directed to a patent-eligible concept— an improvement to a physical process for handling tangible, physical items (paper checks). The inventors also identified this physical-process improvement as their advance over the prior art (i.e., what they invented). In the decision below, however, the Federal Circuit did not view the claims as a whole and did not consider the inventors’ claimed advance over the prior art. Instead, the court identified a broadly stated business method underlying one of the claim’s elements as the claim’s focus and found the claim ineligible under Bilski v. Kappos, 561 U.S. 593 (2010). In so doing, the Federal Circuit ignored this Court’s instructions for analyzing subject-matter eligibility and effectively banned all business-method patents. Accordingly, the question presented is this: Does Alice’s step one require that the claims be viewed as a whole and that consideration be given to the claimed advance over the prior art?

Docket Entries

2020-03-23
Petition DENIED.
2020-03-04
DISTRIBUTED for Conference of 3/20/2020.
2020-02-28
Waiver of right of respondent Elavon, Inc. and U.S. Bancorp to respond filed.
2020-02-12
Petition for a writ of certiorari filed. (Response due March 16, 2020)
2019-12-16
Application (19A667) granted by The Chief Justice extending the time to file until February 13, 2020.
2019-12-12
Application (19A667) to extend the time to file a petition for a writ of certiorari from December 30, 2019 to February 13, 2020, submitted to The Chief Justice.

Attorneys

Elavon, Inc. and U.S. Bancorp
Peter M. LancasterDorsey & Whitney, LLP, Respondent
Peter M. LancasterDorsey & Whitney, LLP, Respondent
Solutran, Inc.
Robert James GilbertsonGreene Espel PLLP, Petitioner
Robert James GilbertsonGreene Espel PLLP, Petitioner