Id. at 9 (citation omitted). In In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), the Court held that a claimed process would only be “patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or (2) it transforms a particular article into a different state or thing.” Slip op. at 6 (quoting Bilski, 545 F.3d at 954).
Applicants requested a rehearing, but the Board declined to modify its ruling. Applicants appealed to the Federal Circuit. On appeal, in light of its recent opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), the Court considered whether Applicants’ claims were directed to patent-eligible subject matter. The Court first considered Applicants’ method claims and determined that, although the method claims nominally fall into the category of process claims, the decision in Bilski established that the method claims were not directed to patent-eligible subject matter.
The newly expanded panel set aside the original panel’s decision and permitted joinder.The enlargement of a PTAB panel upon rehearing raises two questions. Is the PTAB authorized to expand an original panel after it issues its decision? And does such an expansion of the panel after it issues its decision raise due process issues? Both of these questions were in front of the Federal Circuit in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc), overruled on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The en banc Alappat panel consisted of 11 circuit judges.
The enlargement of a PTAB panel upon rehearing raises two questions. Is the PTAB authorized to expand an original panel after it issues its decision? And does such an expansion of the panel after it issues its decision raise due process issues? Both of these questions were in front of the Federal Circuit in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc), overruled on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The en banc Alappat panel consisted of 11 circuit judges.
[1] The Claims Court held also that the claims failed step two of Alice. “Specifically, ‘adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process.’” 122 Fed. Cl. at 255 (quoting In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)).[2] “Conventional,” “unconventional,” and “non-conventional” appear eight times in the court’s opinion.
[1] The Claims Court held also that the claims failed step two of Alice. “Specifically, ‘adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process.’” 122 Fed. Cl. at 255 (quoting In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)). [2] “Conventional,” “unconventional,” and “non-conventional” appear eight times in the court’s opinion.
2016)).[10]In re Bilski, 545 F.3d 943, 964 (Fed. Cir. 2008), aff’d but criticized sub nom, 561 U.S. 593 (2010).[11]Alice Corp. Pty v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).
The brief cites former Chief Judge Rader's dissent in In re Bilski, for his point that investors can and will put their money into inventions more certain than the "discovery of 'scientific relationships' within the body that diagnose breast cancer or Lou Gehrig's disease or Parkinson's []." 545 F.3d 943, 1014 (Fed. Cir. 2008). The brief then turns to the root source of the problem, the need for the Federal Circuit (in the first instance; it is Pollyannaish to think this story will end anywhere other than the Supreme Court) to clarify what the High Court meant in setting out the analytical framework in Mayo as "explained" in Alice v. CLS Bank.
4 See, e.g., In re Roslin Inst. Of Edinburgh, Scotland, 750 F.3d 1333, 1335 (2014); Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d 1336, 1340‐41 (Fed. Cir. 2013); Fort Properties, Inc. v. American Master Lease LLC, 671 F.3d 1317, 1320 (Fed. Cir. 2012); Cybersource, 654 F.3d at 1369; SiRF Tech. Inc. v. Int’l Trade Commission, 601 F.3d 1319, 1331 (Fed. Cir. 2010); In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009); In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc), affirmed by Bilski v. Kappos, 561 U.S. 593 (2010). 5 See,Bilski, 561 U.S. at 611; Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347, 2356 (2014).
’” Id. (quoting In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d on other grounds, Bilski, 561 U.S. 593).Concurring Opinion – Judge Mayer Spanning 12 pages, Judge Mayer’s concurring opinion was almost as long as the 14-page panel opinion.