The Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l. Unfortunately, the Court did not heed Chief Judge Rader’s admonition to “consult the statute” in holding that all claims are invalid as not directed to patentable subject matter.
Justice Thomas, writing for a unanimous Court, wrote that the claims of the patent “are drawn to the abstract idea of an intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” The Court returned to the Bilski concept of “pre-emption” of an entire field of application.
Next, the Court unfortunately returned to the “framework” that it set forth in Prometheus where it conflated the concepts of patent eligibility with novelty and non-obviousness. The Court referred to this framework as a two step approach. First, it is necessary to determine whether the claims are directed to a patent ineligible concept (this seems to assume the answer), and then to determine whether the claims include “something more”, an inventive concept. This is, of course, where the Court refers to the prior art to determine subject matter eligibility.
In Alice Corp., the Court determined that the claims are directed to the patent ineligible concept, the abstract idea, of an intermediated settlement. The claims are merely directed to the use of a third party to mitigate settlement risk. The Court held this to be akin to the hedging found to be abstract in Bilski.
Turning to the second step of Prometheus “framework”, the Court concluded that the method claims at issue merely require generic computer implementation, which fails to transform the abstract idea into a patentable invention. Next, the Court refers to each of the claimed steps of the method and refers to them as merely “conventional.” This is, again, code for “not novel or obvious.” It seems that a prior art examination would have better resolved this question that subject matter eligibility.
Finally, the Court turned to the question of the patent eligibility of the computer system and computer-readable medium claims. These were the claims that the Federal Circuit had the most difficulty with. That court could not reach consensus on the system claims, as 5 judges found them eligible and 5 ineligible. The Supreme Court did not find a meaningful distinction between the method and system claims, holding
the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.
Justice Sotomayor wrote a separate concurrence that was joined by Justices Ginsburg and Breyer. She has taken Justice Stevens’ mantle from Bilski and would hold that a method of doing business do not qualify as a “process” under § 101.
Unfortunately, it seems that we’ve now come much too far to heed the admonition to “consult the statute.”