Those who have been following comments on the split decision in CLS Bank v. Alice Corp. case will be unsurprised to learn that yesterday the Federal Circuit ordered a rehearing en banc in the matter, vacating the panel decision originally decided on July 9, 2012.
The questions to be addressed on appeal are:
1. 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?
2. 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?
The parties have been invited to file new briefs on these questions, and the case will be heard based on the original briefs and any new briefs filed.
The conflicting majority and minority views are set out in an earlier “house divided” post
It is arguable that neither view is beyond criticism and that any emergent legal test as to patent-eligibility demands further development. There is much to commend the majority view that each of §§101, 102, 103 and 112 serves a different purpose and presents different questions and that under §101 only when it is apparent that the claimed subject-matter is a manifestly ineligible abstract idea should that subject-matter be excluded. Significant involvement of a computer in the working of the invention points towards invention.
But a clear answer to Judge Prost’s view on the facts that this particular invention is not patent-eligible is not discernible from the majority opinion. More questionable is her criticism that the majority should have followed “the Supreme Court’s unanimous directive to apply the patentable subject matter test with more vigor”. Authority binding on the lower courts is not an approach involving vigor or its lack, but rather the rule of law which can be derived from the earlier case and can be applied and developed to meet the new factual situation of subsequent cases.
Against this background, as commentators have pointed out, the decision in Prometheus v Mayo arguably fails to set out a rule that is fit for further development and which excludes mere patent-ineligible discoveries of rules of nature whilst allowing pharmaceutical inventions that have been considered patent-eligible for decades. Whatever the outcome, the decision in CLS will have effects beyond the software field and will deserve close scrutiny.
The views of the USPTO as amicus curiae is invited and other amicus briefs will be entertained and may be filed without prior consent. Widespread comment from interested parties can be expected in this interesting and significant case. Stay tuned.