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 matter, 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.
