April 24, 2014

En (many) Banc(s) Federal Circuit Decides CLS Bank v. Alice Corp.

On May 10th, the Federal Circuit issued a short per curium opinion affirming the district court’s decision that “a majority of the court affirms the [holding below] that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 USC s. 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute.” On page 2, the “majority’ writes:

“While Chief Judge Rader is correct to note that no single opinion issued today commands a majority, seven of the ten members, a majority of this en banc court have agreed that the method and computer readable medium claims before us fail to recite patent-eligible subject matter. In addition, eight judges, a majority, have concluded that the particular method, medium and system claims at issue [for reducing the risk of non-performance of an agreement between two parties by using a trusted third party to hold the pot] – in this case should rise or fall together in the s. 101 analysis.”

Not a promising overture to this legal opera. A novelette of five concurring, concurring-in-part and dissenting-in-part(2), concurring-in-part and dissenting opinions and even “additional reflections” (by Chief Judge Rader) follows and I certainly have not consumed all 140+ pages of that content by any means.

The opinion begins with a 38 page concurrence by Judges Lourie, Dyk, Prost, Reyna and Wallach. In my post on this appeal in October, I summarized the “facts of the matter” and emphasized the tension between Cybersource v. Retail Decisions (no patents for mental processes that can be performed with pencil and paper and no Beauregard claims either) and Ultramercial v. Wild Tangent, where an 11-step process to distribute copyrighted products via the internet was found to be patent-eligible, in part due to its “intricate and complex computer programming” and specific application of the internet in a cyber-market environment. On one side, you end up on the slippery slope of defining an abstract idea. On the other, you are faced with arguing that a rock with e = mc2 carved into it is patentable. So I was more than a little interested in how this tension would play itself out (or if it would).

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author


Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.


Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.