Software the Supreme Court and 3D Printing

January 25, 2015

Software—some mundane, some truly ingenious—runs the printers, scanners, and files that power 3D printing. In the past, inventors and technology owners could comfortably look to patent law to protect the proprietary advantage software inventions gave. But with its June 2014 decision in Alice v. CLS Bank, some say that the U.S. Supreme Court fundamentally changed the rules for software patentability. Since Alice, some believe that courts around the country have been on a software patent killing spree. Because of the large role software plays in 3D printing, those with a stake in the technology need to understand Alice—and the strategies that exist to get around it.

Alice’s invention and dispute

The software at the heart of the dispute in Alice involved a computer system for settling financial risk in transactions involving currency and instrument trades. The founder of the company developed software that facilitated computer-implemented methods of creating independent “shadow” escrow accounts to lower those trading risks. He then applied for a patent that claimed a computer system involving a computer, hardware, and programming, which the Patent Office granted.

CLS Bank, the defendant in the case, is owned by a number of banks and it offers services to lessen settlement risks in the foreign exchange market. Alice sent CLS Bank a letter saying that CLS Bank’s services infringed Alice’s software patent. Not waiting to get sued, CLS Bank brought a declaratory judgment action, which allowed CLS Bank, as a possible infringer, to take the first step and attack Alice’s patent. Alice then brought a counterclaim for patent infringement. The district court sided with CLS Bank, but the judges at Federal Circuit—the appeals court that hears all patent cases—couldn’t agree on a clear standard for deciding how to determine patentability of software.

Alice at the U.S. Supreme Court

In the past few years, the U.S. Supreme Court has issued a number of decisions to provide guidance about what things actually qualify as patentable subject matter under Section 101 of the Patent Act. These decisions have made it harder to get patent protection for certain kinds of inventions, including those that may involve “abstract ideas.” After these decisions, many believed Alice might actually be the end of software patents.

The U.S. Supreme Court didn’t go that far—but did say Alice’s invention was not patentable. To make that decision, the Court used the framework it had created for assessing the patentability of potentially abstract ideas in its earlier cases. The Court said that it didn’t want someone with a patent to be able to block use of an abstract idea and said that, to be patentable, there must be some “inventive concept” that is “something more than just an idea or concept.”

Protecting 3D printing’s software after Alice    

Software is still patentable after Alice, but some say that software patent cases have become a lot harder since that decision. Software that doesn’t do more than take a pre-existing general business process and apply a computer to it may have a hard time winning in court. But complex software and/or hardware solutions that analyze or somehow manipulate something may have a higher chance of success.

An earlier U.S. Supreme Court case shows what this may mean. That case, Diamond v. Diehr, involved a computer-implemented process for curing rubber. The invention used a well-known mathematical equation combined with a device that recorded constant temperature measurements inside the rubber mold to provide precise, real-time recalculations of remaining cure time. According to the Alice Court, that invention was patentable because it “transformed the process into an inventive application of the formula.” Similarly, when 3D printing software solutions work to improve existing printing processes and solve current printing problems, they begin to look more like the patentable invention in Diehr and less like the unpatentable “abstract idea” in Alice.

And, in fact, just how much 3D printing software actively “does something” may help create the argument needed to establish that “inventive concept” Alice says inventions need to be patentable. According to at least one commentator, when it comes to computers and software, “enough” may mean “action and demonstrating function beyond merely informing.” As with the rest of 3D printing, the availability—or lack thereof—of patent protection for the software at the heart of the process will help shape the exact contours of the technology’s disruption.


Alice lets some software patent holders live to fight another day. While many questions about the patentability of software remain, some 3D printing software will satisfy the Alice test.  To be one that does, the 3D printing software patent holder will need to understand Alice and—at the very least—be able to explain why their invention has the “inventive concept” Alice demands.

Reprinted with permission.

The original article appears at

The articles on our website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice. The views and opinions expressed in this article are those of the author(s) and do not necessarily reflect the views or official position of Robins Kaplan LLP.

Back to Top