The Federal Circuit’s en banc decision that Alice’s claims were invalid generated seven separate opinions and failed to provide clear guidance as to the patent-eligibility of software claims. (See http://www.patents4software.com/2013/05/cls-bank-v-alice-a-hot-mess-of-illogical-nonsense/ for a discussion of that decision.) After that decision, many practitioners were hoping that the Supreme Court would hear the case and provide some clarity. Whether or not clarity will be provided remains to be seen, but certiorari has been granted, so the hope remains.
Alice’s petition defines the question presented quite broadly:
Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?
In light of the remarks in the plurality opinion of the en banc decision that “Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility,” the question presented by Alice appears to be precisely on point.
The petition emphasized the various and contradictory rationales of the decisions, and cited Judge Moore’s statement that
Our court is irreconcilably fractured over these system claims and there are many similar cases pending before our court and the district courts. It has been a very long time indeed since the Supreme Court has taken a case which contains patent eligible claims. This case presents the opportunity for the Supreme Court to distinguish between claims that are and are not directed to patentable subject matter.
CLS Bank’s opposition suggests that the question at hand is much more narrow, and that the case merely addresses “[w]hether the en banc Federal Circuit correctly affirmed the district court’s judgment.” The opposition also argues that the outcome was correct, and therefore there is no need to correct the Federal Circuit’s judgment. Furthermore, the opposition argues that the addition of three new judges to the Federal Circuit since the en banc decision was issued will allow the Federal Circuit to reconsider the issue in a future en banc decision and possibly resolve the “fracture” internally.
It is interesting to note that the opposition spends five pages pointing out why, if the Supreme Court wants to revisit the issue of the patent-eligibility of economic computer-implemented claims, this case is a good vehicle. In its reply brief, Alice naturally seized on this as good and sufficient reason for the Court to grant certiorari.
In granting certiorari, the Court declined CLS Bank’s invitation to rephrase the question presented to narrow the topic at issue, and will address Alice’s broad question.