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Tuesday, October 16, 2012
by Tony Dutra
We may finally be making progress toward finding an answer to the question Is Section 101 of the Patent Act a "coarse filter" that pretty much lets everything through, or the only means to cut through a broad swath of patents that should never be granted? Or at least, maybe, as that question applies to inventions implemented on a computer.
The Federal Circuit granted a petition for rehearing en banc in CLS Bank International v. Alice Corp. The court will answer the question "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?"
Two years ago, the Supreme Court confused us all with Bilski v. Kappos. The claims at issue in Bilski were not implemented on a computer, but the court gave a shout-out to "the patentability of inventions in the Information Age." The court was one vote away from barring business method patent claims. Was it sending a message about software claims as well?
The Federal Circuit has been trying—and generally failing—to make sense of Bilski for two years.
The "coarse filter" approach was put forward in the first post-Bilski case the court covered, Research Corporation Technologies Inc. v. Microsoft Corp. At least three members of the court expressed what is unarguably an opposing view, in CyberSource Corp. v. Retail Decisions Inc.
Not to be outdone, the high court confused us all again with Mayo Collaborative Services v. Prometheus Laboratories Inc.. Though the claims there are not computer-related, the court drew lessons from the 30-year-old Benson-Flook-Diehr precedents on computer technology to find medical diagnostic methods ineligible under Section 101, and it vacated the "coarse filter" proponents' patent eligibility opinion in Ultramercial LLC v. Hulu for reconsideration in light of Mayo.
CLS v. Alice is one of eight cases the court has decided in the last two years that required applying Section 101 jurisprudence to inventions that are implemented on a computer. Click here to see the details on these cases, including how the 11 judges appear to be aligned on the issue. Judges Rader, Newman, and O'Malley seem clearly among the coarse-filter contingent. Dyk, Bryson, and Prost would put more teeth into Section 101. The other five judges are not so easy to categorize.
All are invited to file friend-of-the-court briefs, with the first briefs due Nov. 23. For anyone interested in software- or internet-related patenting, a contribution here is a must.
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