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A Letter from the Court of Appeals for the Federal Circuit to the United States Supreme Court

Love Stamp [1]

May 10, 2013

717 Madison Place, N.W.
Washington, D.C. 20439

United States Supreme Court
1 1st St NE
Washington, D.C. 20543


Dear Supreme Court:

When Alice kindly petitions for cert, please grant it – we just can’t figure out how to apply Bilski v. Kappos [2] when it comes to computer system claims (and some of us are also unhappy when it comes to the method claims).

“The court, now rehearing this case en banc, hoped to ameliorate this uncertainty by providing objective standards for section 101 patent-eligibility. Instead we have propounded at least three incompatible standards, devoid of consensus, serving simply to add to the unreliability and cost of the system of patents as an incentive for innovation. Concurring-in-part and dissenting-in-part opinion filed by NEWMAN, Circuit Judge.

Lourie thinks that “[a]t its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.” (Concurring opinion filed by LOURIE, Circuit Judge, in which DYK, PROST, REYNA, and WALLACH, Circuit Judges, join.)

But, Rader “[d]isagree[s] with Judge Lourie that a computer must do something other than what a computer does before it may be considered a patent-eligible invention…. Requiring a computer to do something that a human could not would mean that computer implementation could never produce patent eligibility.” (Concurring-in-part and dissenting-in-part opinion filed by RADER, Chief Judge, LINN, MOORE, and O’MALLEY, Circuit Judges, as to all but part VI of that opinion. RADER, Chief Judge, and MOORE, Circuit Judge, as to part VI of that opinion.)

Rader “doubt[s] 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.” (Additional Reflections of Chief Judge Rader.)

Plus, Moore pointed out “[l]et’s be clear: if all of these claims, including the system claims, are not patent-eligible, 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.” (Dissenting-in-part opinion filed by MOORE, Circuit Judge, in which RADER, Chief Judge, and LINN and O’MALLEY, Circuit Judges, join.)

Not to be left out, Linn and O’Malley contest that the method claims should be vilified under 35 USC 101 because “[w]e do not see how Chief Judge Rader and Judge Moore, when analyzing the method claims, can ignore the fact that the specific functionality described in the figures applies just as much to them as to the system claims.” (Dissenting opinion filed by LINN and O’MALLEY, Circuit Judges.)

Newman cut to the heart of the matter:  “I propose that the court make clear that patent eligibility does not depend on the form of the claim, whether computer implemented innovations are claimed as a method or a system or a storage medium, whether implemented in hardware or software. Patent eligibility does not turn on the ingenuity of the draftsman.” (Concurring-in-part and dissenting-in-part opinion filed by NEWMAN, Circuit Judge.)

Besides, if you don’t grant cert, “with today’s judicial deadlock, the only assurance is that any successful innovation is likely to be challenged in opportunistic litigation, whose result will depend on the random selection of the panel.” (Concurring-in-part and dissenting-in-part opinion filed by NEWMAN, Circuit Judge.)

Please help us!

Sincerely yours,

Justices Lourie, Dyk, Prost, Reyna,
Wallach, Radar, Linn, Moore, O’Malley,
Linn and Newman

See the entire 135 page opinion here:  CLS BANK  v. ALICE (11-1301.Opinion.5-8-2013.1 [3])

Today’s post is by Guest Barista Ria Farrell Schalnat [4]* (ria.schalnat@dinsmore.com [5])  *The views conveyed herein are solely those of the author and do not reflect the views of Dinsmore & Shohl LLP or any of its clients.