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[JUDICIAL ERROR - MENTAL] Bancorp Services v. Sun Life Assurance (687 F.3d 1266, 2012 July 26)

Decision Parameters

Decisions It Cites

    Gottschalk v. Benson [409 U.S. 63, 1972]
    Parker v. Flook [437 U.S. 584, 1978]
    Diamond v. Chakrabarty [447 U.S. 303, 1980]
    Diamond v. Diehr [450 U.S. 175, 1981]
    Mayo Collaborative v. Prometheus Laboratories [560 U.S. ___, 2012]
    Cybersource v. Retail Decisions [654 F.3d 1366, 2011]
    Dealertrack v. Huber [674 F.3d 1315, 2012]

Rules & Quotes

[JUDICIAL ERROR - MENTAL] {1} Indeed, prior to the information age, a "computer" was not a machine at all; rather, it was a job title: "a person employed to make calculations". Oxford English Dictionary, supra. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes.

[JUDICIAL ERROR - MENTAL] {2} Thus, under CyberSource and CLS, a machine, system, medium, or the like may in some cases be equivalent to an abstract mental process for purposes of patent ineligibility. ... On the facts of this case, we hold that the district court correctly treated the asserted system and medium claims as no different from the asserted method claims for patent eligibility purposes. ... There is no material difference between these two categories of claims in the asserted patents. The equivalence of the asserted method and system claims is also readily apparent.

[JUDICIAL ERROR - MENTAL] {3} In Bilski, the patent applicant "attempt[ed] to patent the use of the abstract idea of hedging risk in the energy market and then instruct[ed] the use of well-known random analysis techniques to help establish some of the inputs into the equation." 130 S.Ct. at 3231. Here, Bancorp's patents "attempt to patent the use of the abstract idea of [managing a stable value protected life insurance policy] and then instruct the use of well-known [calculations] to help establish some of the inputs into the equation." ... The district court correctly held that without the computer limitations nothing remains in the claims but the abstract idea of managing a stable value protected life insurance policy by performing calculations and manipulating the results.

[JUDICIAL ERROR - MENTAL] {4} No such technological advance is evident in the present invention. Rather, the claims merely employ computers to track, reconcile, and administer a life insurance policy with a stable value component - i.e., the computer simply performs more efficiently what could otherwise be accomplished manually. ... Here, in contrast, the computer merely permits one to manage a stable value protected life insurance policy more efficiently than one could mentally. Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.

[JUDICIAL ERROR - MENTAL] {5} Bancorp's claimed abstract idea impermissibly "preempt[s]" the mathematical concept of managing a stable value protected life insurance policy. Benson, 409 U.S. at 72, 93 S.Ct. 253 (rejecting claims that "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself").

[JUDICIAL ERROR - MENTAL] {6} And unlike in CLS, the claims here are not directed to a "very specific application" of the inventive concept; as noted, Bancorp seeks to broadly claim the unpatentable abstract concept of managing a stable value protected life insurance policy.

[JUDICIAL ERROR - MENTAL] As Cybersource committed judicial error in resurrecting the mental steps doctrine which this same court had rejected in 1969, it is judicial error for Bancorp to cite Cybersource to reject what it labels "mental steps", especially because across these recent decisions, the Federal Circuit refuses to define what it means by "mental". Much like Cybersource, Bancorp Services should not be a precedent for any decision on mental steps. There is no one on the Court of Appeals of the Federal Circuit who understands the scientific difference between decisions made by the human mind, and decisions made by computers.

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