Although a majority of the judges on the court agreed that the method claims do not recite patent eligible subject matter, no majority of those judges agreed as to the legal rationale for that conclusion. Accordingly, though many supporting opinions were published discussing the proper approach to the patent eligibility inquiry, nothing in this opinion beyond the bare-bones judgment quoted above has the weight of precedent. This case and this issue have merely been propped up for the Supreme Court. That being said, the biggest takeaway (and biggest concern) for now appears to be the idea that even tangible system claims are not immune to the nebulous “abstract idea” analysis: “eight judges, a majority, have concluded that the particular method, medium, and system claims at issue in this case should rise or fall together in the § 101 analysis.” (J. Lourie, primary concurring opinion.) Ultimately we will have to wait for the Supreme Court to give us guidance on how to proceed with this analysis, but physical structure no longer seems to provide the safe harbor it once did.
Background / Facts: This is the much anticipated en banc rehearing that was supposed to offer guidance on the question of patent eligibility under 35 U.S.C. § 101 for inventions implemented by computers. The patents at issue cover a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” The claims recite a method of exchanging these obligations, a computer-readable medium embodying program code for implementing such a method, and a system of computer components that are configured to implement such a method.
Issue(s): Whether any of the method, computer-readable medium, or system claims directed to the exchange of obligations between parties using a computer meet the subject matter eligibility requirements of 35 U.S.C. § 101, rather than being merely an attempt to monopolize an abstract idea.
Holding(s): No. The ultimate conclusion that the method, computer-readable medium, and even system claims here are all drawn to patent-ineligible subject matter is clear. Unfortunately, however, the judges could agree on nothing else. The majority opinion in its entirety reads as follows: “Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 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.”