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

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


–        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.”

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