Between Scylla and Charybdis:  Addressing Software Patent Eligibility in Early-Stage Litigation

October 1, 2023

The U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International established a two-step inquiry for determining the eligibility of a patent claim for protection.  The test has faced criticism for its inconsistency, particularly when evaluating software-related patents.  These inconsistencies are exacerbated when the test is applied during the early stages of litigation to address motions made under Federal Rules of Civil Procedure 12(b)(6) and 12(c), as the test often requires an in-depth technical analysis of the claims.

First, this Note examines the current approach to software patent eligibility and the various points of inconsistencies and tension.  This Note then argues that incorporating claim construction—the process of interpreting patent claims from the perspective of someone skilled in the relevant field—into the pleadings stage can help litigants identify factual disputes and avoid making premature technical decisions.

October 2023

No. 1