Discussion of Judge Prost's Sharp Dissent to CLS v Alice

The Federal Circuit Court of Appeals issued an opinion in a case on the patentability of business methods earlier this week.

We covered that case, CLS. v. Alice Corp., on our blog, but in the aftermath of the decision, lawyers and corporate counsel are left scratching their heads. The dissent, offered by Judge Sharon Prost, is of particular interest, as she expressed a concise difference of opinion from the majority.

The crux of the debate over the patentability of business methods comes down to whether or not they are abstract ideas (which cannot be patented) or tangible processes that are patentable.

Judge Sharon Prost offered a strong dissent, citing that the business method employed by Alice Corporation was merely the age-old idea of credit intermediation thrown into a computer.

Critics of the opinion agree with Prost, arguing that taking an idea and throwing it into a computer system doesn't per se make something patentable.

In her dissent, Judge Prost focused on a different reading of the recent Supreme Court decision in Mayo v. Prometheus.

The Prometheus case addressed the "law of nature" aspect in Section 101 of the Patent Act, finding that purely obvious observations cannot be patentable.

Judge Prost said that this opinion extended to the "abstract idea" aspect of Section 101.

She went on to draw out a table, mapping the text in each of the four steps of the claim in "plain English." The result, she argued, showed that the patents were nothing more than the repackaging of an age-old idea that dated back to the Roman era.

The Prometheus case has left much confusion in the patent world and now, with the recent Alice Corp. case, the discussion isn't over just yet.

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