Does the subject matter?

Does the subject matter?

Scotus has recently taken a lot of interest in section 101's definition of patent eligible subject matter. It all started with Bilski. Many of didn't really care about Bilski. Nobody ever thought his claims were patentable. The Examiner, the BPAI, the CAFC and Scotus all agreed the Bilski claims were well outside the scope of section 101.

However, the CAFC, in deciding the Bilski case gave us the machine or transformation test [MOT] for determining patent eligibility.

A lot was said about MOT, but SCOTUS had the final word:
The machine-or-transformation test is not the sole test for patent eligibility under §101.  The Court’s precedents establish  that although that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under §101.

The CAFC focused on useful and important and found themselves at odds with their brethren on the bench at SCOTUS over cases like Mayo v Prometheus and  Ultramercial v Hulu. 

In the midst of all this uncertainty the CAFC decided two seemingly similar cases: Bancorp v Sun Life Assurance and CLS Bank v Alice corporation. The court found the claims in the first case non-patentable and in the second case patentable.

In CLS bank the court decided "... when-after taking all of the claim recitations into consideration -it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101."

This offended Judge Proust, who wrote an opinion in dissent, but seemed perfectly reasonable to many of us.

Both Bancorp and CLS were the subject of petitions for en-banc re-hearing. CLS is being reviewed en-banc and the oral arguments were presented recently.
 
At issue is whether a claim directed towards a system with concrete and tangible parts can be patent ineligible according to section 101 because it is actually a method which covers an abstract idea.
 
For those of you who worried about fallout from Mayo v Prometheus, it has arrived.
 
In contrast to Bilski, all of these cases revolve around granted patents that are becoming "patent ineligible subject matter" duriung enforcement proceedings.
 
All of this give new meaning to the phrase "presumption of validity".