Much-Anticipated CLS Bank v. Alice Corp. En Banc Decision Fails to Provide Guidance on Computer-Implemented Patents

In 1967 Arlo Guthrie wrote Alice’s Restaurant Massacree, an 18-and-one-half minute rambling, confusing, wonderful song.  In 1974, Congress subpoenaed tape recordings of Richard Nixon in the Oval Office, 18-and-one-half minutes of which were missing because they were “accidentally” erased.  Guthrie’s song and the 18-plus minutes of buzzing and static on the Nixon tapes are both models of clarity compared to the Federal Circuit’s 2013 en banc Alice Corp. decision.

The purpose of rehearing the CLS Bank v. Alice Corporation case en banc was nominally two-fold: (1) to determine what test to apply to determine whether computer-implemented inventions are directed to patent eligible subject matter; and (2) to determine whether it should matter if an invention is claimed as a method, system, or programmable medium.

Unfortunately, the members of the Federal Circuit could not come to any consensus on these issues.  The court issued six (SIX!) separate opinions, none (ZERO!) of which was joined by a majority of the judges.  Instead of cleaning-up the murky waters of patent-eligibility jurisprudence, the Federal Circuit danced around on the muddy bottom.

This post will not go into the details of the proposed tests for patent eligibility, other than to note they are somewhat incompatible with each other.

When votes across opinions are tallied, most of the judges did agree that it should not matter whether the invention is claimed as a method, a system, or a programmable medium.  This determination by itself is not particularly enlightening.  It does imply that a single test for patent eligibility should apply to any type of claim, because otherwise how can the claims rise and fall as one?  Of course, as noted, there is no consensus as to what that one test should be.

The Patent Office stated that it recognized several themes in the various opinions, including:  there is no bright-line test, the test for patent eligibility is distinct from the tests for patentability (novelty and obviousness), and the claim as a whole should be evaluated to determine if it adds meaningful limitations to an abstract idea or law of nature.  For now, the Patent Office has indicated that it is studying the decision to determine if it should provide detailed examination guidelines for its examiners based on the Alice Corp. decision. Financial services companies seeking patents for computer-implemented inventions will want to continue to emphasis the physical structures that are used to perform the actions in describing and claiming the invention to emphasize the concrete non-abstract application of their invention.

Unfortunately for financial services companies needing some certainty related to computer-implemented inventions, courts and the Patent Office will be free to get anything they want from the Alice Corp en banc decision.  Hopefully the Supreme Court will erase this figurative 18-and-one-half minutes of static and replace it with a workable test.