In <i>CLS Bank,</i> the Federal Circuit Agrees to Disagree

The Federal Circuit's decision included seven separate opinions spanning 135 pages, but the only precedential portion appears to be the one-page per curiam opinion affirming the district court's holding that the asserted method, computer-readable medium, and system claims are not directed to patent-eligible subject matter. Many of the judges agreed on the ultimate result, with seven out of 10 concluding that the asserted method and computer-readable medium claims were patent-ineligible, and five of those seven judges concluding that the system claims were patent-ineligible. But the Federal Circuit was unable to resolve some of the most important issues the case presented.

For example, the decision failed to provide a framework for determining what is an “abstract idea,” including whether a computer-implemented invention is a patent-ineligible “abstract idea.” The decision also failed to provide guidance regarding whether the type of claim affects patent eligibility under ' 101, including the related question of whether the presence of a computer is sufficient to provide patent eligibility. And the Federal Circuit's identification of three different tests for patentable subject matter raises a new issue for courts to consider: whether the analysis of patent eligibility turns on the entire claim, or only the portion of the claim that goes beyond a mere “abstract idea.”