Vacating a 2-1 panel decision that had held software-implemented business method claims patentable, the Federal Circuit has now ordered an en banc rehearing of the patent owner's appeal of the district court's judgment that patent claims were invalid. In its order in CLS Bank Int’l. v. Alice Corp., No. 2011-1301 (Fed. Cir. October 9, 2012), the Court directed the parties to brief:
a. 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?
b. 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 first question is interesting given recent practice by the USPTO, and the second question almost seems rhetorical. That is, concerning the first question, my recent experience is that patent examiners often withdraw Section 101 rejections if the applicant inserts the recitation of "a computer" or the like into the rejected claim. On the other hand, I have always thought it was pretty clear that the courts generally look past the simple presence of a computer in a claim to evaluate patentability.
And should different classes of claims, e.g., methods, systems, and storage media, be evaluated differently? I say this is a rhetorical question, because I know of no case where a court has evaluated such claims differently when the claims really cover the same subject matter.
With this en banc rehearing in the CLS Bank case, and the remand of the Ultramercial case from the Supreme Court, an interesting Section 101 season is coming up at the Federal Circuit.