[JUDICIAL ERROR - MENTAL] SmartGene v. Advanced Biological Labs (CAFC 2013-1186, 24 January 2014)

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[JUDICIAL ERROR - MENTAL] {1} The district court correctly held that the claim 1 method falls outside the eligibility standards of section 101 as that provision has been construed. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. ... Our ruling is limited to the circumstances presented here, in which every step is a familiar part of the conscious process that doctors can and do perform in their heads. ... Whatever the boundaries of the "abstract dieas" category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify new medical options.

[JUDICIAL ERROR - MENTAL] This is judicial error, since Cybersource's reasoning was not based on earlier precedents that themselves had any precedential basis. Prior to Cybersource resurrecting what Prater II had rejected, there was no intervening Supreme Court holdings or Congressional intent that restored/created the mental steps doctrine. As Cybersource has no basis in caselaw, it is judicial error for SmartGene to cite Cybersource. Much like Cybersource, SmartGene should not be a precedent for any decision on mental steps.


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