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« Court Report | Main | Sandoz Inc. v. Amgen Inc. (Fed. Cir. 2014) »

December 08, 2014

Comments

"Judge Mayer's far-reaching application of the Alice test is evidence that the Federal Circuit is still fractured over § 101."

Michael,

With all due respect, it is clear evidence that Judge Mayer should be retired permanently, along with the utterly broken Alice test.

This is a fine analysis of the 101 aspects of the case, but it seems to me that this case is also important as only our second data point on indefiniteness post-Nautilus. I think that there are a lot of claim drafters breathing a sigh of relief to see that "look and feel elements" survives the reasonable certainty test.

Meanwhile, I can heartily agree with EG that the Alice test is "utterly broken," but I have dim hopes of any improvement until Congress steps in. The SCotUS seems bent on reviving the old "inventiveness" doctrine, and the only way to stop them is the same way that was done back in the 1952--revise the USC.

Michael,

Could you tell me, based on your analysis of this case, whether the patent claims any more than framing or iframing somebody else's web page so that it appears on your own. (I have been doing this for years with the materials on the webpage for my computer law course at GW.) If I remember correctly, some time in the 1990s a Princeton computer science professor did this with the Dilbert comic strip webpage (he wrote a Perl script because this was before HTML supported frames), and the lawyers for publishers of Dilbert descended on him with a ton of bricks.

Isn't framing another person's webpage so that it appears on your webpage, surrounded by your own "look and feel," a routine, conventional, well known, trivial expedient? Webpage proprietors have been complaining for years about other people doing that to them. Sometimes suing them for copyright infringement.

Or is this claimed invention something else? Something novel, startling, and unexpected?

Prof. Stern,

If the claim indeed covers HTML framing, then that should have been brought up as grounds for invalidity under 102 or 103 (I'm not sure if it was at the District Court level).

At least with 102 and 103, we have a well-established procedure for making the respective determinations with limited subjectivity. Not so for the Alice test.

The point of all of my recent 101 writing is not whether the claims of Bilksi, Alice, Ultramercial and so on are actually valid. Instead, I am asserting that the wrong part of the statute is being used to make validity determinations.

Speaking of the statute, I don't recall where inventions are required to be startling and unexpected. At best, those terms describe secondary considerations of non-obviousness.

Mike

Greg,

Interesting point. I had not considered the case from that angle.

Mike

According to the '399 patent, frames do not provide the advantages of the invention: "At best, affiliates are able to use 'frames' to keep a shell of their own website around the vendor's site, but this is only a marginally effective solution. No alternatives have been able to address a fundamental drawback of the affiliate programs--the loss of the visitor to the vendor."

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