Case Brief: CLS Bank v. Alice (A Judicial “Sigh”)

wah-smBy: Bill Harding

Here’s one you don’t see every day:  Additional Reflections filed by Chief Judge Rader in response to the confusion that is CLS Bank v. Alice Corp.  Yet somehow, after the flurry of concurrences, dissents, concurrences-in-part, and dissents-in-part filed in response to the court’s per curiam opinion, a little introspection (and, perhaps, self-flagellation) seems appropriate.  To summarize …

 

CLS Bank Intl. v. Alice Corp.

598 F.3d 1336 (2013)

Additional Reflections

Rader

–        Now in his 25th year of judicial service, Chief Judge Rader reflects on one of his first cases:  Arrythmia Research Tech v. Corazonix Corp (1992)

  • Invention:  Software that allowed swift computer analysis  of electrocardiogram images to detect heart attack risks
    • Court unanimously agreed on judgment, although senior members (Newman and Lourie) struggled with patent eligibility analysis
      • Physical connection
      • Preemptive effect
  • Then, as now, Rader expressed the view that such “laborious analysis” was not necessary
    • “When all else fails … consult the statute.”
      • Rader attributes this view to his early career as counsel to legislative branch
      • commitment to law as written
  • Rader says:  All else has failed
    • Before ArrythmiaFlook, Benson, In re Abele, In re Walter, In re Freeman
    • Since ArrythmiaBilski, Prometheus, Molecular Pathology, MySpace, Dealer-Track, Biogen
    • Rader says:  Remedy remains to consult the statute
      •  “…  both inventions and discoveries, including simply an improvement on a known process or product …” are patent eligible
      • “… even the mere new use of an old machine is eligible for patenting …”
      •  SCOTUS confirmed:  “anything under the sun made by man” (Diehr)
      • U.S. has no failed “software per se” exceptions like Europe and Asia
  • Section 101 is not a “condition of patentability”
    • After In re Alappat (1994), “enjoyed halcyon decade of reliance on the statute”
    • Prior art governed the patentability of claims  (under 102 and 103)
    • Patent eligibility of subject matter is not a claim-driven concept at all

–        Statutes have meaning:  “when all else fails, it makes sense to consult the simplicity, clarity, and directness of the statute.”

–        Statutes have purpose:  “… 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.”

If you would like to learn more about patent prosecution, please follow me on Twitter and connect with me on LinkedIn.

Search Widerman Malek

Categories

  • Careers at WM (7)
  • Local Stories (46)
  • Resources (10)
  • Uncategorized (7)