Determining Whether Computer-Implemented Methods (software) and Computer Systems are Patent Eligible Remains an "Abstract" Exercise

The test for determining whether particular computer-implemented methods (software) and computer systems (executing software) are merely eligible for patenting remains "abstract" in view of the en banc Federal Circuit in CLS Bank v. Alice Corp.  (CLS).  The CLS decision assessed U.S. patent eligibility of computer-implemented methods and systems based on whether the claims are directed to "abstract" ideas, and thus, not patent eligible, without actually defining "abstract" and/or "abstract ideas."  Perhaps, like Justice Potter Stewart in his infamous comment regarding pornography, the Court knows an abstract idea when it sees it.  However, for the rest of us, a test for "abstract ideas" needs to be more concrete, tangible and definitive and less obtuse, or dare I say, less "abstract."  Questions still remain as to what constitutes patent eligible computer-implemented methods (software) and computer systems and how one determines their patent eligibility.

The most "abstract" aspect of U.S. computer-implemented (software) patents is the 135 page judicial opinion(s) of a very divided en banc Federal Circuit bench.  Five of the 10 judges join a "majority" opinion, and five other judges concurred in part and dissented in part, in the en banc review of a lower district court's decision.  The CLS decision involves a determination of whether four subject patents, directed to computer-implemented methods (software) and computer systems were eligible for U.S. patent protection at all.  The "majority" opinion appears to give little useful and reliable guidance for allowing one to accurately and consistently determine whether a computer method, software, or even a computer system running software is eligible for consider of patentability.  Without reading a single word of the 135 pages, the shear number of differing opinions (majority, concurring, and dissenting) gives you a hint that there is no consensus of how one should analyze and determine eligibility of computer-implemented methods and computer systems.

The "majority" reiterates the widely accepted judicially created exemptions of patent ineligibility for claims directed to 1) laws of nature, 2) natural phenomena and 3) abstract ideas.  However, the majority appears to equate 3) abstract ideas with 1) laws of nature and 2) natural phenomena.  Moreover, the majority never defines the term, "abstract ideas."  Instead, the majority merely refers to prior cases of claims directed to 1) laws of nature and 2) natural phenomena as being directed to "abstract ideas". 

Finally, although Judge Moore, in her dissenting opinion, alleges that "this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents," the majority opinion, itself does not appear to be a real "game changer".  One slight footnote to this is with regard patent eligibility of computer systems.  Due to a tie in judges' votes, there was no majority decision with regard to patent eligibility of the computer system claims.  As a result, the lower district court's decision on patent ineligibility of the subject patents' system claims stood.

In summary, the CLS opinion does not appear to change the law of U.S. patent eligibility.  However, the decision does make it more difficult to access patent eligibility of computer-implemented methods (e.g. software) and systems and it introduces more uncertainty as to whether a patent/patent claim will be found to be patent eligible.

In view of an ever uncertain and indefinite test for patent subject matter eligibility based on an undefined criterion of "abstract ideas," patent practitioners and business people need to consider all functional aspects of computer-implemented methods (software) and draft patent claims of varying, ever more detailed scope and directed specific implementations (embodiments) so as to cover all bases and thereby ensure patent eligible subject matter.

© Stephen J. Weyer, 2013

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