The Bloomberg BNA Intellectual Property Blog is the home of the "Do You Copy?" podcast and offers links to selected articles by the BNA IP team, which is accessible to both subscribers and non-subscribers as well as commentary and analysis exclusive to this blog.
Tuesday, July 10, 2012
by Tony Dutra
Here we go again.
The Supreme Court laid down the Section 101 patent eligibility law in Mayo v. Prometheus. It was about laws of nature, yes. And it was about medical diagnostics, sure. But didn't you think it had something to say about patent eligibility for computerized method claims when an abstract idea is involved? Didn't Bilski? Apparently not.
The Federal Circuit split 2-1 in CLS Bank v. Alice Corp., with both sides quoting Mayo for support of opposite positions. More concerning was that Mayo introduced a new term - the "inventive concept" of a patent claim - that was obviously intended to help in identifying what is claimed. But both the majority and dissent found different meaning in the term.
In dissent, Prost translated each step of a method claim into "plain English," reducing the patent to nothing more than financial intermediation, and faulting the majority for not specifically identifying the inventive concept in any of those steps.
O'Malley joined the majority opinion author, Linn, in responding: The inventive concept derives from looking at the claim as a whole. Nothing new, they said. The high court told us to do just that in Diamond v. Diehr in 1981. We're doing it with these claims and we find that they cover a practical application of financial intermediation that can be described in one 137-word sentence. If they meant that to be the "inventive concept," we're all in a lot of trouble. But I don't think that's what they meant.
I think they meant that the term has no new significance and it's not the court's job to point out the inventive concept. I think they ultimately fell back on the "practical application" versus "too-preemptive" comparison for abstract ideas. And to make that judgment, they relied on the Federal Circuit's first post-Bilski decision, Research Corporation Technology v. Microsoft. The RCT panel punted on defining "abstract" other than to say abstractness must exhibit itself “manifestly” “to override the broad statutory categories of patent eligible subject matter.”
The majority twisted that only slightly: "[W]hen—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, that claim must not be deemed for that reason to be inadequate under § 101."
The dissent categorized that standard as "more of an escape hatch than a yardstick."
And so the members of the Federal Circuit favoring Section 101 as a "coarse filter" win this day. With a different panel on a different day, will the result be the same?
As a not-insignificant side note, the three judges did agree to put the final nail in one particular coffin: Any idea that you can save a patent-ineligible method claim by expressing it as a system claim or through a Beauregard claim on computer media is now, officially, dead.
CLS Bank International v. Alice Corporation Pty. Ltd., No. 2011-1301 (Fed. Cir., July 9, 2012)
This decision was also discussed in Episode 29 of the "Do You Copy?" Podcast. Tony's full writeup of this decision is available here (accessible to both subscribers and non-subscribers).
to post a comment.
Unanimous Supreme Court Says No Patent Exhaustion for Monsanto Roundup Seeds
9th Cir. Affirms Righthaven Lacked Standing, Declines to Consider Broad Fair Use Ruling
Schumer Seeks Permanent, Expanded CBM PTAB Challenges on Any Management Patent
Key Players Update AIPLA on Growing Momentum for Patent Small Claims Court
Federal Circuit Split on Computer Method, Media, System Claims in En Banc CLS Ruling