Wednesday, January 23, 2013

CLS Bank v. Alice Corporation


CLS Bank v. Alice Corporation ("Alice")

If you have been reading this blog, you might have noticed that I was very critical of the Mayo v. Prometheus ("Mayo") case, see  http://annebarschall.blogspot.com/2012/05/mayo-v-prometheus.html

Aside from finding the reasoning defective in that opinion, I would characterize it as follows.  If
   the claim recites a known method of measuring a response of a natural system, and
   the only invention is that a measurement taken in accordance with the method is within a new range of values
then the invention is not patentable subject matter.  I would appreciate comments about this interpretation.

For the moment, though, going with that interpretation, I am a bit surprised at those who feel that the Alice case necessarily needs to be governed by the Mayo case.  Granted, it was unfortunate that Mayo was not mentioned in Alice.  Still, it's not clear to me why it absolutely should have been.

Alice seems to be squarely within the purview of Bilski, a case about a business method, not at all in same category as Mayo, which deals with natural systems.  The mere fact that both cases are within the domain of patentable subject, does not mean that the later one need necessarily be governed by the earlier one.

A court might easily conclude that business methods are not mere abstract ideas or natural laws, and that, therefore, they are not subject to the same kind of scrutiny as was applied in Mayo.

If there is a known apparatus, such as a computer, and the invention lies in applying the computer to a business method, to me this seems very different from applying the computer to measuring a response of a natural system.

In any case, I like the way the federal circuit analyzed the Alice case already -- and fervently hope that the “Supremes” leave it just the way it is.