Circuit judges continue to differ regarding the test for patent subject-matter eligibility under 35 U.S.C. § 101. The en banc decision in CLS Bank v. Alice Corporation produced five, six, or seven opinions, depending on one’s counting. The breakdown of the various opinions authored in connection with the court’s ruling is as follows:
- Per curiam opinion.
- Judge Lourie authored a concurring opinion joined by Judges Dyk, Prost, Reyna, and Wallach.
- Chief Judge Rader concurred and dissented, both in part, joined by Judges Linn, Moore, and O’Malley, except as to part VI, joined only by the Chief Judge and Judge Moore.
- Judge Moore wrote an opinion dissenting in part, joined by the Chief Judge and Judges Linn and O’Malley.
- Judge Newman concurred and dissented, both in part. No judge joined that opinion.
- Judge Linn dissented, and was joined by Judge O’Malley.
- Chief Judge Rader, authored “additional reflections.”
Thus, depending on whether “additional reflections” are considered an opinion, and whether the one-paragraph per curiam opinion is considered an opinion, this case produced five, six, or seven opinions. The per curiam opinions reads as follows:
Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute.
The judges sparred not only over the § 101 inquiry, but also regarding the precedential weight that should be afforded to any or all of the signed opinions that accompanied the ruling. Judge Lourie wrote that although
no single opinion issued today commands a majority, seven of the ten members, a majority, of this en banc court have agreed that the method and computer-readable medium claims before us fail to recite patent-eligible subject matter. In addition, eight judges, a majority, have concluded that the particular method, medium, and system claims at issue in this case should rise or fall together in the § 101 analysis.
Assuming that Marks applies to circuit courts, there may be rules of law to distill from the various opinions. See Marks v. United States, 430 U.S. 188, 193 (1977). Judge Rader’s opinion, however, suggests otherwise, noting that
[n]o portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent.
So, not only is there disagreement regarding the proper test under § 101 (covered nicely at Patently-O here), the various opinions show a meta-disagreement, regarding weather any rule of law emerges from the court’s en banc determination. Stay tuned.