Federal Circuit Revises Comiskey Decision in light of Bilski

In En Banc Ruling, Federal Circuit Orders New Decision to Address Whether Arbitration Methods and System Comply with Machine-or-Transformation Test  

In In re Comiskey, 89 USPQ2d 1641 (Fed. Cir. 2009) (en banc), the Court of Appeals for the Federal Circuit, sitting en banc, issued an order allowing the merits panel to issue a revised opinion found at In re Comiskey, 89 USPQ2d 1655 (Fed. Cir. 2009) and vacating the prior opinion found at In re Comiskey, 499 F.3d 1365; 84 USPQ2d 1670 (Fed. Cir. 2007).   The revised decision removes the portion of the opinion discussing claims 17 and 42, which were directed to a “system”.  Previously, the court had ruled that these claims satisfied the patentability test of 35 U.S.C. § 101, but were prima facie obvious under 35 U.S.C. § 103(a).  The revised decision instead remands the case to the Board of Patent Appeals and Interferences to determine, in the first instance and in light of the Federal Circuit’s recent decision in In re Bilski, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008) (en banc), whether these claims are patent-eligible under 35 U.S.C. § 101 but did not include the language arguably making such claims prima facie obvious.

By way of background, Stephen Comiskey filed an application for a method and system of mandatory arbitration.  Claim 1, a method claim, includes steps of enrolling a person in a mandatory arbitration system, incorporating arbitration language into a unilateral contract, requiring the complainant to submit a request for arbitration, conducting and providing support for the arbitration, and determining an award or decision in the arbitration.  Claims 17 and 42 recite a system having modules to carry out these steps; and depending claims 15, 30, 44, and 58 depend from the system or method and recite that “access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communication, or other communication means.”

The Examiner rejected all claims as obvious under 35 U.S.C. § 103(a).  Throughout the prosecution of the case, the Examiner did not reject the claims on any other grounds.  Comiskey appealed the Examiner’s rejection to the Board, and the Board affirmed the obviousness rejections.  Comiskey appealed to the Federal Circuit.

The Federal Circuit did not reach the Board’s obviousness determination.  Rather, the Federal Circuit found that the claims were “barred at the threshold by [35 U.S.C.] § 101”.  In re Comiskey, 89 USPQ2d at 1659.  The Federal Circuit held that Comiskey’s method claims were not patentable subject matter under 35 U.S.C. § 101, and, in the revised portion of the opinion, remanded to the Board to determine the patentability of the system claims and the method claims explicitly reciting the use of a computer. 

In reaching the decision regarding the method claims, the Federal Circuit first reviewed Supreme Court case law regarding algorithms and business methods.  Citing a long line of Supreme Court precedent, the Federal Circuit concluded that claims reciting an abstract idea per se are not patentable.  However, a claim directed to an abstract idea may be patentable if the claim recites a practical application of the abstract idea.  Such a claim is statutory only if, as employed in the process, the idea is embodied in, operates on, transforms, or otherwise involves a class of statutory 


subject matter.  Thus, a mental process standing alone, untied to any other category of statutory subject matter, does not recite patentable subject matter.

The Federal Circuit then turned to Comiskey’s method claims, finding that the exceptions to the “abstract idea” rule did not apply to these claims.  The claims did not require a machine, as Comiskey conceded.  Nor did the claims operate on or transform another class of statutory subject matter: they were not “a process of manufacture” or “a process for the alteration of a composition of matter”.  The claims merely described the steps of arbitration by a human arbitrator.  As such, the claims recited only mental steps, and were therefore not patentable.      The Court treated the system claims separately.  Unlike the independent method claims, the system claims recited limitations that, in their broadest reasonable interpretation, could be interpreted as requiring the use of a machine.  Claim 17 recited, among other limitations, “a registration module”, “an arbitration module”, and “a means for selecting an arbitrator from an arbitrator database.”  The system claims would thus be patentable, since they would be “embodied in” another class of statutory subject matter: machines.  The Federal Circuit did not, however, rule on this point.  Instead, the Federal Circuit remanded the case to the Board to determine, in the first instance, whether the system claims, as well as certain dependent method claims directed toward establishing access to arbitration over the Internet or other media, were patentable under 35 U.S.C. § 101. 

The difference between the 2007 opinion and the revised 2009 opinion lies in the treatment of the system claims.  In the original 2007 opinion, the Federal Circuit in fact ruled that the system claims recited patentable subject matter because, under the broadest reasonable interpretation, the claims could be directed to a machine.  In re Comiskey, 84 U.S.P.Q.2d 1670, 1680 (Fed. Cir. 2007)(withdrawn).  The Federal Circuit remanded these claims to the Board not to determine their patentability under 35 U.S.C. § 101, but to determine whether the mere addition of general purpose computers was obvious under 35 U.S.C. § 103(a).  In the revised opinion, the Federal Circuit retreated from its prior holding of patentability, instead remanding the case to the Board to determine the § 101 issue in the first instance, without reaching the obviousness issue.

The Federal Circuit justified the limited remand to the Board with respect to the system claims in part because, had the Board relied on 35 U.S.C.  § 101 to reject the new claims, Comiskey would have had an opportunity to amend the claims under 37 C.F.R. § 41.50(b).  The different treatment of the system claims and the method claims is curious in that Comiskey would have had the same opportunity to amend the method claims had the Board rejected those under 35 U.S.C. § 101.  The panel may have felt that the method claims presented a clear case of unpatentable subject matter, while the system claims did not.  This position would be consistent with the Federal Circuit’s subsequent In re Bilski decision.  88 U.S.P.Q.2d 1385 (Fed. Cir. 2008) (en banc).  In In re Bilski, the Federal Circuit limited the issue to “what the term ‘process’ means”, subsequently ruling the method claims at issue to be unpatentable subject matter because the method did not transform an article to a different state or thing or was not tied to a particular machine.  Id. at 1389.

Significance for Patent Owners

The Comiskey decision joins the Bilski decision as part of the Federal Circuit’s attempt to define the limits of patentable processes.  The original 2007 decision pointed the way to Bilski, and the 2009 revised decision stands as an application of the Bilski principles.  The Supreme Court, however, may soon have an opportunity to return to this area of the law for the first time since Diamond v. Diehr; Bilski recently filed a petition for certiorari with the Supreme Court.  Unless the Supreme Court weighs in, the principles of Bilski and Comiskey remain the law: a method cannot be patentable unless the method transforms an article to a different state or thing, or is tied to a particular machine.  Purely mental processes, such as Comiskey’s arbitration method, are barred by 35 U.S.C. § 101.  As such, applicants should ensure that methods, both in the specification and claims, specifically recite the processors and machines with which they interact in order to better assure compliance with the Federal Circuit’s new machine or transformation test.


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