The Federal Circuit has long struggled to clarify the standard for determining whether a computer-implemented invention is patent-ineligible because it falls under the “abstract idea” exception to patentability. Most recently, in CLS Bank Int’l v. Alice Corp. Pty., Ltd., No. 2011-1301, an en banc Federal Circuit confronted this issue directly but could not reach a consensus on the applicable standard, resulting in six opinions by the 10 sitting judges. The core of the disagreement focused on how expansively the abstract idea exception to patentability should be applied, and how to interpret the U.S. Supreme Court’s “inventive concept” requirement to the abstract idea exception pursuant to Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012).

This article endeavors to identify the operative standards outlined by the various opinions, but this is not an easy task. Indeed, Chief Judge Randall Rader in his “Additional Reflections” opinion recognized the lack of clear direction from the Court:

"I enjoy good writing and a good mystery, but I doubt that innovation is promoted when subjective and empty words like “contribution” or “inventiveness” are offered up by the courts to determine investment, resource allocation, and business decisions . . . .

As I start my next quarter century of judicial experience, I am sure that one day I will reflect on this moment as well. I can only hope it is a brighter reflection than I encounter today."

This uncertainty will continue until there is clarification by either the Supreme Court (possibly in the short term), or Congress or subsequent Federal Circuit decisions in the long term.

CLS Bank Litigation Background

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