In her dissenting opinion in CLS Bank, Prost wrote that her colleagues had creating an "entirely new framework" that is "more of an escape hatch than a yardstick." She also accused the majority of ignoring the U.S. Supreme Court's decision in Mayo v. Prometheus, in which the court struck down a method patent in the field of personalized medicine and, according to Prost, directed the Federal Circuit to "apply the patentable subject matter test with more vigor."
Perhaps emboldened by Prost's dissent, CLS' counsel, Mark Perry of Gibson, Dunn & Crutcher, petitioned the Federal Circuit for en banc review in August. The court granted the motion in October.
Perry said the panel decision in CLS Bank was an outlier. Generally, the Federal Circuit and Supreme Court are moving toward a stricter view of patent eligibility, he said. "The Federal Circuit has come to quite a degree of consensus, although not uniformity," he said. "We're asking the en banc court to continue that trend."
The way the Federal Circuit sculpted the questions presented on appeal — for instance "what test should the court adopt to determine whether a computer-implemented invention is a patent-ineligible abstract idea" — shows that it's concerned with adding clarity, said Erika Arner, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner. But she warned that clarifying may be an impossible task. Section 101 is meant to be flexible enough to allow for new innovation in developing industries, she said, and "it's tough to come up with a bright-line standard that's also flexible enough to allow for inventions we haven't even thought of yet."
"It's 90 percent likely the court will come up with some multifactorial test," Kenneth Parker of Haynes and Boone said. According to Parker, in the many amicus briefs that have been filed in the case, nobody has come up with a test that is both easy to litigate and consistent with the Supreme Court's directives in Mayo.
A multifactorial test would make sense from a legal perspective, Parker argues, but it wouldn't do much to address the concerns of patent skeptics. Multifactorial tests allow for a certain amount of judicial discretion, he said, and also tend to be expensive to litigate. "It's highly unlikely that the Federal Circuit comes out with anything that will decrease the litigation expenses in software patent litigation," he said.
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