By Michael Borella —

A previous
post presented the background of this case, as well as Judge Lourie's
plurality concurrence, and a second post addressed Chief Judge
Rader's concurrence-in-part and dissent-in-part.  As noted in those
posts, Alice's claimed inventions involved the reduction of settlement risk
using a third-party intermediary.  This post continues the story of Alice by discussing the dissenting-in-part opinion by Circuit Judge Moore, the concurring-in-part and dissenting-in-part
opinion by Circuit Judge Newman, and the dissenting opinion by Circuit Judges Linn and
O'Malley.

Judge Moore's
dissent-in-part

Judge Moore begins her opinion, which was joined by Judges
Rader, Linn, and O'Malley, with a warning:  "if all of these claims,
including the system claims, are not patent-eligible, this case is the death
of  hundreds of thousands of patents,
including all business method, financial system, and software patents as well
as many computer implemented and telecommunications patents."  She noted that 320,799 patents were granted
over a 13 year period in the USPTO's "Electrical Computers, Digital
Processing Systems, Information Security, Error/Fault Handling" technology
area, and that all of these patents were potentially at risk under Judge Lourie's
opinion.

Like Judge Rader, Judge Moore stated that claims must be
considered as a whole, and under that standard, Alice's system claims would be
patent-eligible.  She noted that Prometheus explicitly indicated that
interpreting the judicial exceptions to subject matter patentability too
broadly would "eviscerate patent law" because at some level all
inventions are based on abstract ideas, laws of nature, and/or natural
phenomena.

Judge Moore also argued against the conflation of § 101, § 102,
and § 103.  She noted that Judge Lourie's
"inventive concept" analysis introduced a time-dependency into the §
101 inquiry that was more appropriate for the inquiries of the other
sections.  To illustrate this point, she
provided examples:

Even
though the concept of addition is an abstract idea, the first calculator that
could perform addition was a patent-eligible machine under § 101.  If someone subsequently discovered that, by
rewiring the calculator, it could perform addition and subtraction (both
abstract mathematical concepts), the improved calculator would similarly be
patent-eligible.  The act of modifying the circuitry of a known device such that
it is configured to apply an abstract idea does not transform it into an
abstract idea.

Accordingly, largely based on the same general reasoning as
Judge Rader, Judge Moore would have found Alice's system claims
patent-eligible.

Judge Newman's
concurrence-in-part and dissent-in-part

Judge Newman begins by noting that this case has provided three
incompatible standards for § 101 analysis, opening the door for "opportunistic
litigation, whose result will depend on the random selection of the panel."  She plainly stated that the Federal Circuit
has failed to clarify the interpretation of § 101.

Judge Newman's position, like that of four of her colleagues,
is that the § 101, § 102, and § 103 inquiries are separate.  She writes "it is not necessary, or
appropriate, to decide whether subject matter is patentable in order to decide
whether it is eligible to be considered for patentability."  She propounded a simplification of the § 101
inquiry by suggesting that "when the subject matter is within the
statutory classes in section 101, eligibility is established."  Invoking the oft-quoted phrase that patent
law embraces "anything under the sun that is made by man," she would
push off all considerations of claim breadth to the other sections of the
statute.

Ultimately, Judge Newman positioned her separate opinion as
call for the Federal Circuit to affirm three basic principles of patentable
subject matter.

1)  "The
court should hold that section 101 is an inclusive statement of patent-eligible
subject matter."  Judge Newman
advocated eliminating claims that are abstract or that pre-empt abstract ideas or
the other judicial exceptions using "laws of novelty, utility, prior art,
obviousness, description, enablement, and specificity."

2)  "The court
should hold that the form of the claim does not determine section 101
eligibility."  Whether the invention
is claimed as a method, CRM, or system, and whether it is implemented with
hardware or software, would not be relevant to the § 101 inquiry for Judge
Newman.  Like Judge Lourie, she would
attempt to decrease the impact of the so-called "clever draftsman."

3)  "The court
should confirm that experimental use of patented information is not barred."  Perhaps most important of the three, Judge
Newman believes that the popular media has misconstrued the debate on
patentable subject matter to mean that a patented invention cannot further be
studied.  In particular, she would have
the Court hold that experiments that improve or build upon patented subject
matter, compare it with alternatives, seek to understand its mechanisms, and to
find new applications should be considered non-infringing activities.

Judge Linn's
and Judge O'Malley's dissent

In stark contrast to their colleagues, Judges Linn and O'Malley
would reverse the District Court ruling and find all claims patent-eligible for
procedural reasons.

Since the summary judgment motions were filed prior to claim
construction, the District Court gave the claims, for purposes of considering
these motions, an interpretation defined by Alice.  Thus, Judges Linn and O'Malley afforded that
the District Court was "required to read into the claims whatever
limitations Alice asserted a skilled artisan would assume they possessed."  And, as noted above, the parties stipulated
at trial that all claims required a computer and a memory to be performed.

Consequently, Judges Linn and O'Malley faulted Judges Rader and
Moore of improperly construing the method claims more broadly than the system
claims, and also reproached Judge Lourie for importing the breadth of the
method claims into the system and CRM claims.  Judges Linn and O'Malley would have all claims rise or fall
together.

With respect to the patent-eligibility of the system claims,
the judges reiterated the position of Judge Rader.  However, they would also apply the same
analysis to the method and CRM claims, and find those claims meeting the § 101
requirements as well.

Judges Linn and O'Malley concluded with a discussion of
software patents at large.  Rather than
use § 101 to mitigate a supposed "proliferation and aggressive enforcement
of low quality software patents" concerning the various amici curiae, they would push this issue
back to Congress for legislative action.  They suggested that Congress could limit the term of software patents,
or limit their scope by requiring functional claiming.

CLS
Bank Int'l v. Alice Corp. (Fed.
Cir. 2013) (en banc)
Opinion for the court per
curiam; concurring opinion by Circuit Judge Lourie, joined by Circuit
Judges Dyk, Prost, Reyna, and Wallach; concurring-in-part and
dissenting-in-part opinion by Chief Judge Rader, joined by Circuit Judge Moore,
and by Circuit Judges Linn and O'Malley as to all but part VI of that opinion;
dissenting-in-part opinion by Circuit Judge Moore, joined by Chief Judge Rader
and Circuit Judges Linn and O'Malley; concurring-in-part and dissenting-in-part
opinion by Circuit Judge Newman; dissenting opinion by Circuit Judges Linn and
O'Malley; additional reflections by Chief Judge Rader.