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Client Alert
May 13, 2013
A Fractured Federal Circuit Creates More Questions Than
Answers: CLS Bank Int’l v. Alice Corp., No. 2011-1301
By Jason D. Hall, Scott F. Llewellyn and Brian R. Matsui
On Friday, the U.S. Court of Appeals for the Federal Circuit issued its en banc decision in CLS Bank Int’l v. Alice
Corp. The decision includes 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 eligible subject matter under 35 U.S.C. § 101.
Although none of the seven issued opinions commands a majority, seven out of ten members1 of the en banc
court concluded that the asserted method and computer-readable medium claims are patent-ineligible under §
101, and five of those seven members 2 also concluded that the system claims are patent-ineligible. Further
adding to the confusion, the non-precedential opinions create three different tests for evaluating patent eligibility
under § 101.
Below, we set out the five most important questions the Federal Circuit was unable to decide, followed by the two
questions CLS Bank perhaps did answer.
CLS Bank left many questions unanswered, including:
• What is an “abstract idea”?
• What is the test for determining whether a computer-implemented invention is a patent-ineligible “abstract
idea”?
• When assessing patent eligibility under § 101, does the court consider the entire claim or only the portion of
the claim that goes beyond a mere “abstract idea”?
• Can the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible “abstract
idea”?
• Does the type of claim (e.g., method, computer-readable medium, system) affect patent eligibility under §
101?
CLS Bank did provide guidance on two questions:
• Does the presumption of validity apply to challenges to patent eligibility under § 101?
o Most likely. A majority of the judges, albeit in separate concurring opinions, agreed that a
presumption of validity applies when analyzing patent eligibility under § 101.
1 Chief Judge Rader, Judges Lourie, Dyk, Prost, Reyna, Wallach, and Moore.
2 Judges Lourie, Dyk, Prost, Reyna, and Wallach.
