By: Robert R. Sachs
In my recent analysis of the Alice decision, I wrote the following:
In Benson, the Court believed (wrongly it turned about, but that’s beside the point) that the claims covered the basic algorithm for converting binary coded decimal to binary, something that appeared “fundamental” to the domain of computer science and mathematics. Similarly, in Mayo, the Court believed (again, wrongly, but again that’s beside the point) that Prometheus’s claim covered a so-called “law of nature,” something “fundamental” to the domain of medicine and biology. (It’s ok that the Court was wrong on the facts in Benson and Mayo, because what really matters for the future application of § 101 is the methodology and underlying theory, not the specific facts.)
Michael Risch, Professor Law at Villanova School of Law, responding to the last sentence commented that:
This can't be right. Being wrong on the facts of what is abstract or natural half the time is the core of the problem! This is where lower courts will screw up!
Michael is of course right that being wrong on the facts in patent cases, including patent eligiblity is the core problem, and that the lower courts are likely to decide an eligiblity question incorrectly if they "screw up" the facts.