- What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
- In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes? CLS Bank Int’l v. Alice Corp. Pty. Ltd., 484 F. App’x 559, 559-60 (Fed. Cir. 2012) (per curiam).
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 484 F. App’x 559, 559-60 (Fed. Cir. 2012) (per curiam).
The Current Opinions
Judge Lourie, in a concurrence joined by Judges Dyk, Reyna, Prost and Wallach, affirmed the District Court’s ruling in its entirety finding that all asserted claims were patent ineligible. Judge Lourie’s “integrated approach” involves the familiar step of first determining whether the claimed invention fits within one of the four statutory classes set out in Section 101 (i.e., processes, machines, manufactures and compositions of matter) and then, if so, determining whether the claimed invention is directed to one of the three judicial exceptions to patent-eligible subject matter (i.e., laws of nature, natural phenomena or abstract ideas). Lourie Op. at 18.
If a claim falls within one of the exceptions (i.e., it claims an abstract idea), then the next step is to “identify and define whatever fundamental [i.e., inventive] concept appears to be wrapped up in the claim so that the subsequent analytical steps can proceed on consistent footing.” Id. Once the “inventive concept” is identified, it must be examined to see if it is a “product of human ingenuity” that represents “more than just a trivial appendix to the underlying idea . . . [l]imitations that represent a human contribution but are merely tangential, routine, well-understood, or conventional, or in practice fail to narrow the claim relative to the fundamental principle therein, cannot confer patent eligibility.” Id. at 20.
Applying this analysis, Judge Lourie determined that the abstract idea at issue is “reducing settlement risk by facilitating a trade through third-party intermediation” and that “[n]one of th[e] limitations adds anything of substance to the claim.” Id. at 18-19. Because there was nothing added to this abstract idea, he then concluded that all the claims—whether directed to computer implemented methods, computer media or computer systems—were not patent eligible. Id. at 25-26.
- The court should hold that § 101 is an inclusive statement of patent-eligible subject matter—there is “no need for an all-purpose definition of ‘abstractness’ or ‘preemption,’ as heroically attempted today.” Newman Op. at 3.
- The court should hold that the form of the claim (e.g., whether system or method claims) does not determine § 101 eligibility. Id. at 4.
- The court should confirm that experimental use of patented information is not barred, and she expressed a concern that her colleagues and the “popular press” have “accepted the theory that experimentation is barred for patented subject matter.” Id. at 4 and 8.
If any case ever warranted U.S. Supreme Court review, this is it: the en banc Federal Circuit just issued a remarkable per curium affirmance, effectively admitting it cannot agree on the reasoning for the ultimate outcome of the case with respect to a subject that forms the starting point for any validity analysis of computer-implemented patent claims. In fact, several of the judges called on the U.S. Supreme Court to step in and provide guidance. Until the U.S. Supreme Court weighs in on these issues (and we expect it will) the patent-eligibility of computer-implemented claims remains a murky gateway involving, as Judge Newman lamented, additional, expensive litigation.