In July, a divided Federal Circuit panel held a large number of patent claims directed to a computer-related invention to be eligible subject matter under § 101 of the Patent Act. The court performed a claim construction analysis on the various limitations of the claims to determine the scope and content of the claims. The court then considered each entire claim as a whole to determine whether the it contained patent eligible subject matter.
At the time of the opinion, I noted that, while I agreed with the opinion, the court seemed to add uncertainty to this area of law. Judge Prost’s “common sense” approach in the dissent added to the notion that whether an invention is patent eligible seems to depend on the composition of the panel hearing the appeal.
Yesterday, the court ordered the original opinion withdrawn and that it will hear the case again en banc. Specifically, the court will consider two questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?