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January 05, 2015

Comments

Michael,

Just another poster child of why the Alice test is broken. More "claim dissection" in violation of Diehr's "claim as a whole" at its worst. If the claimed method of Content Extraction has a problem, it's under Section 112 (enablement), not Section 101.

Or 102. Or 103...

Michael,

Agree that 102 and 103 would also be in play. The problem is Breyer's myopic view in Mayo that 101 would be "dead letter" if the other patent statutes were considered first. In fact, at least 112 has to be considered first because 112 says that the invention is defined by the claims. In other words, the numerical order of the statutes doesn't determine which should be considered first.

What it is coming down to, and you can see it in this case and in Judge Mayer's writing, is using 101 to kill off an infringement suit before discovery. While this may be the right thing to do in certain situations, the 101 inquiry is too much of a gray area for that to be commonplace.

To borrow a phrase, the "Gist/Abstract" sword give the Court (and lower courts) the ability to not bother with actual claim construction, making the use of 112 prior to 101 a "dead letter."

The Court simply will not allow the actual words of Congress to deprive them of their accustomed ability to twist the patent law nose of wax to whatever shape they desire.

Will we have a redux of the movement akin to Flash of Genius and the 1952 Act?

Sadly, I remain...

EG: "The problem is Breyer's myopic view in Mayo that 101 would be "dead letter" if the other patent statutes were considered first."

That wasn't Breyer's view and it's not the holding of Mayo v. Prometheus.

Mike Borella probably knows this. I hope he does anyway.

Regardless, your welcome for the correction.

Keep up the great work, guys.

The comments to this entry are closed.

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