Licensing

Alice has patented electronic methods, systems and computer program products in respect of its Alice Market design in a number of jurisdictions. These patents have priority dates between 1992 and 1995 and broadly cover innovative ways in which parties can contract electronically and anonymously with each other in a real time and secure environment for the purposes of:

  • Hedging known risks;
  • Investing in known risks for profit;
  • Lending/borrowing from one another; and
  • Exchanging value between one another.

While developing this suite of patents, Alice has also obtained claims to an innovative way of substantially reducing settlement risk in obligation exchanges.

Alice continues to offer licensing opportunities to entities wishing to commercialize its patents.

List of US patents

Litigation

CLS Bank Int’l v. Alice Corp. Pty. Ltd.

Alice is defending a subset of its US patent portfolio involving its exchange of obligations invention.

In early 2002, Alice became aware that the soon-to-commence operation of specialist foreign exchange settlement utility and banking industry owned, CLS Bank International (CLS), appeared likely to infringe claim 33 of the Company's '479 patent.

In early October 2002, after CLS had commenced operation in "live transactions" mode in September, Alice advised the Bank of its probable infringement of its '479 patent. Over the next three years Alice exchanged correspondence with CLS on a number of occasions, principally answering questions posed by CLS' legal counsel. During this period, Alice was granted its ‘510 “Methods of Exchanging an Obligation” patent in June 2005 and its ‘720 “Systems of Exchanging an Obligation” patent in December 2006.

Licensing correspondence between Alice and CLS continued, although without resolution. Then, in May 2007, CLS instigated a declaratory judgment action against Alice in the District of Colombia. Alice then countersued for infringement of its ‘479, ‘510 and ‘720 patents. Alice subsequently obtained, in May 2010, a further United States “exchange of obligation” patent – the ‘375 patent - titled “Systems and Computer Program Products for exchanging an obligation”. This patent was then added to Alice’s suit.

Key Milestones

Date Document
19 June 2014 Supreme Court rules on patent eligibility
31 March 2014 Supreme Court Oral Hearing Audio
31 March 2014 Transcript of Supreme Court Oral Hearing
19 March 2014 Alice files Reply Brief with the Supreme Court
February 2014 Amicus briefs are submitted in support of CLS:

Checkpoint Software, Inc., Collateral Analytics, Llc, Daily Motion, Inc., Github, Inc., Guidewire Software, Inc., Hipmunk, Inc., Jive Software, Inc., Linkedin, Inc., Message Systems, Inc., Netflix, Inc., Newegg, Inc., Quantum Corporation, Rackspace, Inc., Ring Central, Inc., Trulia, Inc., Twitter, Inc., And Yelp Inc.

Google Inc., Amazon.Com Inc., American Association Of Advertising Agencies, Dell Inc., Facebook, Inc., Intuit Inc., Linkedin Corp., Netflix, Inc., Rackspace Hosting, Inc., Verizon Communications Inc., And Zynga Inc.

Timothy K. Armstrong, James E. Bessen, Michele Boldrin, Irene Calboli, Brian W. Carver, Ralph D. Clifford, Wesley M. Cohen, Eric Goldman, Brad A. Greenberg, Bronwyn H. Hall, Christian Helmers, Karim R. Lakhani, David K. Levine, Brian J. Love, Eric S. Maskin, Michael J. Meurer, Shawn P. Miller, Connie Davis Nichols, Tyler T. Ochoa, Jorge R. Roig, Matthew Sag, F. M. Scherer, Jason M. Schultz, Katherine J. Strandberg, Alexander Tabarrok, and Eric von Hippel.

January 2014 Amicus briefs are submitted in support of Alice/Neither Party:

Balsam Hill LLC; Chico’s FAS, Inc.; Crutchfield Corporation; Dillard’s, Inc.; Express, Inc.; Food Marketing Institute; Hasbro, Inc.; JAND, Inc. d/b/a Warby Parker; J. Crew Group, Inc.; Jill Acquisition LLC; L Brands, Inc.; L. L. Bean, Inc.; Macy’s, Inc.; Main Sequence Technology, Inc.; National Restaurant Association; Newegg, Inc.; Overstock.com, Inc.; Parke-Bell Ltd. Inc. d/b/a Touch of Class Catalog; Presidio International, Inc. d/b/a A/X Armani Exchange; QVC, Inc.; Retail Litigation Center, Inc.; SkyMall, Inc.; and The Talbots, Inc.

Cantor Fitzgerald, L.P.; Cummins Inc.; Scientific Games Corporation; Align Technology, Inc.; Alcatel-Lucent; CoreLogic; Aristocrat Technologies Australia Pty. Ltd.; Bancorp Services, LLC; NAGRA USA, Inc.; BGC Partners, Inc.; Fallbrook Technologies Inc.; Architecture Technology Corporation; Sonitus Medical Inc.; Miramar Labs, Inc.; Great Lakes NeuroTechnologies Inc.; NeuroWave Systems Inc.; Flocel Inc.; Cleveland Medical Devices Inc.; Orbital Research Inc.; Spectral MD; Ameranth Inc.; RPost Communications; Enounce, Inc.; ManyWorlds, Inc.; FPX; Charles River Analytics Inc.; Casino Gaming, LLC; Horizon Digital Finance LLC; DDB Technologies LLC; Chief Experience Officer, Inc.; MONKEYmedia, Inc.; ParkerVision, Inc.; Subtle by Design Co.; iQ4 LLC; Crowd Cart; House- Tab, LLC; Neo Prime Solutions, Inc.; TIP Solutions, Inc.; Bi-Level Technologies; RedTxt.com.au Pty. Ltd.; U.S. Startups and Inventors for Jobs; Martin Goetz; Professor Richard A. Epstein; Professor Daniel F. Spulber; and Professor Jay P. Kesan
21 January 2014 Alice files Merits Brief with the Supreme Court
6 December 2013 Supreme Court grants Alice's petition
19 November 2013 Alice files Brief in Reply to CLS' Opposition of Alice's Supreme Court petition
6 November 2013 CLS files Brief in Opposition to Alice's Supreme Court petition
October 2013

Amicus briefs are submitted in support of the Supreme Court granting Alice's petition:

CME Group Inc., Bancorp Services, Llc, Regulatory Datacorp, Corelogic, Aristocrat Technologies Australia Pty. Ltd., Casino Gaming, Llc, Charles River Analytics Inc., Architecture Technology Corporation, Great Lakes Neurotechnologies Inc., Miramar Labs, Inc., Neurowave Systems Inc., Flocel Inc., Cleveland Medical Devices Inc., Orbital Research Inc., Tip Solutions, Inc., Monkeymedia, Inc., Chief Experience Officer, Inc., Horizon Digital Finance Llc, Extraordinary Re Holdings, Inc., Ddb Technologies Llc, Redtxt.Com.Au Pty. Ltd.
4 September 2013 Alice files Supreme Court petition
10 May 2013 Federal Circuit en banc rules on patent eligibility
9 July 2012 Federal Circuit rules on patent eligibility
9 March 2011 District Court rules on patent eligibility
25 May 2010 Alice’s 7,725,375 patent issues
13 October 2009 District Court rules on extraterritoriality
16 August 2007 Alice countersues
24 May 2007 CLS files for declaratory judgement
12 December 2006 Alice’s 7,149,720 patent issues
28 June 2005 Alice’s 6,912,510 patent issues
20 October 2002 CLS commences operation with "unrestricted settlements"
4 October 2002 Alice first contacts CLS advising the Bank of its apparent infringement of claim 33 of its '479 patent. Alice offers CLS Bank a license
September 2002 CLS commences operation with "live" transactions
19 October 1999 Alice’s 5,970,479 patent issues.

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US Patents

Priority Patent # Title
29 May 1992 5,970,479 Methods and Apparatus Relating to the Formulation and Trading of Risk Management Contracts
29 May 1992 6,134,536 Methods and Apparatus Relating to the Formulation and Trading of Risk Management Contracts
7 July 1995 6,157,918 Methods and Apparatus Relating to the Formulation and Trading of Investment Contracts
7 July 1995 6,622,130 Methods and Apparatus Relating to the Formulation and Trading of Investment Contracts
29 May 1992 6,912,510 Methods of Exchanging an Obligation
29 May 1992 7,149,720 Systems for Exchanging an Obligation
7 July 1995 7,617,147 Methods and Apparatus Relating to the Formulation and Trading of Investment Contracts
29 May 1992 7,725,375 Systems and computer program products for exchanging an obligation
29 May 1992 7,822,676 Systems and methods relating to the formulation of a multi-party contract
29 May 1992 8,050,996 Systems relating to the establishment of a contractual obligation
29 May 1992 8,401,954 Systems relating to the formulation of risk management contracts

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