In my previous article I applauded the clarity of the unanimous U.S. Supreme Court decision in Molecular Pathology v. Myriad Genetics, Inc. Unfortunately the recent Federal Circuit Court of Appeals decision in CLS Bank International v. Alice Corp. Pty., Ltd. could not have been more splintered and conflicting. Ironically the judges of this court had granted a rehearing to clarify patent eligibility for computer related inventions! It is also ironic that all the judges relied upon the same earlier United States Supreme Court decisions for patent eligibility of computer related inventions and business method patents. However, these same judges nevertheless arrived at disparate outcomes, as well as conflicting analysis for arriving at these outcomes.
For example, a majority of the judges concluded that the sentences defining “computer readable media” were not patent eligible because the sentences contained insignificant features applied to an abstract idea. For this majority, the limitations for the readable medium, process sentences contained identical insignificant features (limitations), and these features did not significantly add to the underlying non-patent eligible abstract financial procedure.
However, only half of the judges concluded that sentences designating “systems” (computers) were not patent eligible for several reasons. First the system sentences were directed to a system that is, a computer. A computer is clearly a machine, and machines have an explicit category of patent eligible inventions in the U.S. patent statute. Secondly, these judges observed that there were limitations in the system sentence that even in broad scope, designated further structure components of a specifically programmed computer. Third, the system claim sentence of broadest scope, as well as the patent specification, clearly contained sufficiently detailed technical information for a circumscribed mechanical application of an abstract financial escrow concept. Fourth, even if the system was a general purpose computer, the earlier Federal Circuit decision of In re Alappat, specifically held that a general purpose computer patent is patent eligible if programmed for a specific limited task.
The judges who found the systems patent eligible further distinguished the criteria for patent eligibility from the requirements for (i) novelty, and non-obviousness, as well as (ii) sufficient technical information for enablement and a complete written description. In other words, a computer programmed in a particular manner for a limited task should always be patent eligible; however, that same computer may not be sufficiently novel or non-obvious to ultimately merit patent protection.
In sum, we have reacquired a legal landscape much like that of the 1990s, and in which the identity of Federal Circuit judges determines whether a particular computer related invention is patent eligible. Furthermore, the recent U.S. Supreme Court decision of In re Bilski does not assist, because the Bilski patent application did not disclose any computer implementation or any other mention of computers. Consequently, we remain mired in that long grey tunnel along a continuum between (i) In re Bilski and (ii) computers explicitly structurally modified from previously computers. Unfortunately we still do not know the implementation or tangible application necessary to merit a defensible patent for a computer related invention between these two end points.
©2013 Adrienne B. Naumann
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