Today the U.S. Supreme Court granted certiorari to consider the patent eligibility of computer-implemented inventions in Alice Corp. v. CLS Bank (the docket is available from SCOTUSblog).  You may recall that a hopelessly divided en banc Federal Circuit held that the computer-implemented patent claims at issue were invalid because they were not directed to patentable subject matter, but there was no majority agreement as to why (see our May post explaining the patent claims and division within the court).

At the surface, this case concerns technical patent nuance issues about the Section 101 standard for what things can be patented.  The issue with computer-implemented inventions typically is whether the patent is simply claiming some broad mathematical concept, thought process or other basic tool of innovation.  The concern is that giving someone exclusive rights to basic tools of innovation (mathematical equations) would keep others from using those tools, thus stifling innovation:  How much progress would be made if only one person was allowed  to use addition, subtraction or multiplication.

This issue is separate from the concern whether someone is trying to patent something that is not new, would have been obvious, is too vague to denote definite bounds of the invention or other traditional patent invalidity defenses.  But often those traditional invalidity issues invade the patentable subject matter debate.  For example, a concern often is whether someone has simply claimed “do a mathematical computation that people have done before by hand or in their mind, but use a computer to do it instead.”  The mathematical computation aspect concerns patentable subject matter issues, but the more visceral reaction often is that’s not an innovation given how obvious it would have been to use a computer to do the computation once computers were available.

This concern is not limited to computer-implemented inventions.  For example, gauge your own reaction when reading U.S. Patent No. 5,443,036 granted in 1995 that is directed to a method of exercising a cat by having it chase a laser light beam.  Do you react more to whether exercising a cat should be eligible for a patent or to whether that is actually an innovation — e.g., cats had been chasing flash light beams and the such long before there were lasers and it would have been obvious to use a laser once handheld lasers became available?

So the deeper dive beyond the surface technical Section 101 issue is what balance will the Supreme Court take in addressing this issue.  Will the Supreme Court put its thumb on the scale to keep the door open to what innovations can be patented and rely on traditional defenses of whether its actually a concrete ”innovation”, or will it put its thumb on the other side of the scale.  We’ll eagerly watch and hope that, as they address whatever actual problems may exist with the patent eligibility standard and provide the guidance that the Federal Circuit failed to give, they do no harm to our patent system for innovation in the process.