[A2k] US Federal Circuit to Consider Software Patentability

Seth Johnson seth.p.johnson at gmail.com
Tue Oct 9 10:41:06 PDT 2012

Yeah!  So can we get an amicus filing that explains that the test of
patentability of the software is the presence of a logic processor? As
in, software to the logic processor is *pure* abstraction, completely
independent in nature from the devices attached to the processor; and
software in higher level language form is just a description of the
software + empirical particulars in the form of attached devices doing
things. So, regardless of whether the contraption as a whole is
patentable, the software within the claimed invention is not covered,
because it is inherently pure. All pure abstraction must be excluded.
The hard abstraction test is about empirical abstraction, about how
and where to draw the line between *physical* laws of nature and
inventions. But for software, there is no such difficulty -- just a
confusion of types of abstraction in the legal arena.

> http://www.cafc.uscourts.gov/images/stories/opinions-orders/2011-1301%20order.pdf


(1) The petition of CLS Bank for rehearing en banc is granted.

(2) The court’s opinion of July 9, 2012 is vacated, and the appeal is

(3) The parties are requested to file new briefs ad-dressing the
following 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?

(4) This appeal will be heard en banc on the basis of the
originally-filed briefs, additional briefing ordered herein, and oral
argument. An original and thirty copies of all originally-filed briefs
shall be filed within 20 days from the date of filing of this order.
An original and thirty copies of new en banc briefs shall be filed,
and two copies of each en banc brief shall be served on opposing

CLS Bank’s en banc brief is due 45 days from the date of this order.
Alice’s en banc response brief is due within 30 days of service of the
CLS Bank new en banc brief, and the reply brief within 15 days of
service of the response brief. Briefs shall adhere to the type-volume
limitations set forth in Federal Rule of Appellate Procedure 32 and
Federal Circuit Rule 32.

(5) The court invites the views of the United States Patent and
Trademark Office as amicus curiae. Other briefs of amici curiae will
be entertained, and any such amicus briefs may be filed without
consent and leave of court but otherwise must comply with Federal Rule
of Appellate Procedure 29 and Federal Circuit Rule 29.

(6) Oral argument will be held at a time and date to be announced later.

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