The U.S. Federal Circuit on October 9, 2012 granted
en banc review of a
case in which a Federal Circuit panel held that a claim must not be
deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim
recitations into consideration, it is not “manifestly
evident” that a claim is directed to a patent ineligible abstract idea.
CLS Bank International v. Alice Corp., Fed. Cir., No. 11-1301,
10/9/2012. Alice Corp is an Australian company, suing for patent infringement in the United States.
The en banc court vacated the panel decision and requested briefing on the following questions:
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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?
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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 panel decision stressed that patent eligibility must be
determined by what is evident from specific, concrete applications of
the ideas behind an invention disclosed in the claims. The panel
opinion, written by Judge Linn in the wake of the Supreme Court’s
decision in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), included the following observation:
[N]othing in the Supreme Court’s
precedent, nor in ours, allows a court to go hunting for abstractions by
ignoring the concrete, palpable, tangible, and otherwise not abstract
invention the patentee actually claims. It is fundamentally
improper to paraphrase a claim in overly simplistic generalities in
assessing whether the claim falls under the limited “abstract ideas”
exception to patent eligibility under 35 USC §101. Patent eligibility
must be evaluated based on what the claims recite,
not merely on the ideas upon which they are premised.
The challenged patents in this case are directed to a computerised
trading platform for exchanging obligations in which a trusted third
party settles obligations between a first and second party so as to
eliminate “settlement risk.” The district court granted
a summary judgment motion that the claims were not patent eligible
because they are directed to an abstract idea. On appeal the Federal
Circuit panel reversed, concluding that the system, method, and media
claims are directed to practical applications of an
invention falling within the categories of patent eligible subject
matter defined by Section 101.
To read the Court’s order for en banc review, click
here; to read a summary of the panel decision and obtain a copy of Judge Linn’s opinion, click
here.