I hope that some of my loyal readers noticed that my last post on CLS was incomplete, since it did not elaborate on the rationale for the decision(s) arrived at by the majority, either directly or by default.
The first 23 pages of the opinion, written by Judge Lourie, joined by Dyk, Prost, Reyna and Wallace, mostly plods down the well-worn legal trail of Benson, Flook, Diehr, Bilski and now, Mayo v. Prometheus. I read it mostly looking for something new, perhaps a hint of what additional material would render a claim reciting a law of nature patentable.
For example, for some time I have wondered in print what feature in Diehr distinguished the patent-eligible curing process from the patent-ineligible one in Flook. In Parker v. Flook, the Supreme Court held: “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Slip op. at 12. This is a much finer filter than one might expect , since the Flook process was drawn to the catalytic chemical conversion of hydrocarbons, but the Court tossed it into the dumpster of “abstract ideas” anyway. Judge Lourie noted that the Supreme Court had started from the posture that the case must be treated as though the abstract principle or mathematical formula were well known. If so, then the claim must contain “some other inventive concept in its application.”
