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Originally published Friday, December 6, 2013 at 5:44 PM

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Supreme Court to hear software case that’s splitting the industry

The U.S. Supreme Court will rule for the first time in decades on patent protection for computer software, in a case pitting Google, Facebook and JPMorgan Chase on one side and Oracle and Microsoft on the other.

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The U.S. Supreme Court will rule for the first time in decades on patent protection for computer software, taking up a case that has divided the industry and may reverberate through the American economy.

The justices Friday agreed to hear arguments on a patented system for limiting the risk that one party to a derivative trade won’t follow through on its obligations.

The case splintered a federal appeals court in a ruling that one judge said called hundreds of thousands of patents into question.

On one side of the debate are Google, Facebook and JPMorgan Chase, which say patent standards for software are too lax and open companies to unwarranted lawsuits.

On the other are Microsoft and Oracle, whose trade group told the appeals court that limiting protection for genuine innovation could hurt the nation’s economy.

“This is going to affect virtually every industry,” said Linda Thayer, a patent lawyer with the Finnegan firm in Boston. “Nowadays, we’re in a highly connected, wired Internet world where pretty much everything is implemented by software. Where is the line where there is a true invention?”

The Supreme Court has struggled to decide what types of innovations qualify for patent coverage, generally imposing some limits without drawing categorical lines against legal protection.

In 2010, the justices divided over the rules governing patents for business methods, and last year the court limited patents for diagnostic medical tests.

Most recently, in June, the court restricted companies’ ability to patent human genetic sequences.

The Supreme Court has never directly said that software can be patented, although cases in the 1970s and 1980s involved software-related inventions.

The case centers on claims that CLS Bank International infringed patents owned by Alice Corp., a Melbourne-based company partially owned by National Australia Bank.

The software-patenting issue left the 10-member U.S. Court of Appeals for the Federal Circuit unable to produce a majority opinion.

The judges instead produced six separate opinions covering 125 pages.

A majority said aspects of Alice’s patents covering a method of performing the idea weren’t eligible for protection, while the judges were evenly split regarding systems to implement that idea.

The Supreme Court will hear arguments in March or April and rule by July.

The case involves the basic question of eligibility for patent protection.

Other parts of the Patent Act, not directly at issue before the Supreme Court, impose additional requirements, including novelty and usefulness.

Alice argued in its appeal that the Federal Circuit is “admittedly and hopelessly fractured” on eligibility, necessitating Supreme Court review.

The company said the lead opinion at the Federal Circuit improperly required a showing that an invention was novel in order to clear the eligibility hurdle.

CLS argued that the lower court ruling is consistent with the policy behind the eligibility requirement: “ensuring that a patentee cannot preclude an entire realm of future innovation while contributing very little to the development of those inventions.”

That standard is important because it can be faster and cheaper to challenge a patent by arguing that an invention isn’t eligible for protection than to dig into details of the validity or infringement of the patent.

The eligibility argument is used by many companies sued by owners of patents for common Internet functions.

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