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October 04, 2016

Comments

The epitome of the "Gist/Abstract" sword - and how that weapon provided by the Supreme Court has rendered the law of 101, as rewritten with the scrivinings of the Court, as Void for Vagueness.

Hey Joseph,

As others have also noted, Mayer's concurrence is an embarrassment, and frankly should be completely ignored.

A few responses:

1) "[A] bit confusing..."? That is the understatement of the year.

2) Anyone else notice that Judge Dyk distinguished Bascom on the grounds that the patent in Bascom solved an "alleged" technical problem in the network? In other words, he will not even concede there was a real problem solved in Bascom. He clearly hates that case, and plans to cabin it into irrelevance.

3) I always want to scream when I see people write that "the pendulumis swinging back" or "the tide is turning" after a Bascom or a CellzDirect. We are still getting ~5 *in*eligibility holdings for every 1 eligibility holding. No tide is turning. No pendulum is swinging back, yet. It is still going to get worse before it gets better.

Hey GrzeszDel,

Like you, not surprised that Dyk chose to distinguish Bascom. Dyk is one of the most, if not the most, anti-patent judge on the Federal Circuit.

With panel decisions one is only getting the views of two or three Fed. Cir. judges, and it is not surprising that there will be differences between panel decisions on a legal subject like this. Look at the long history of differences in claim scope interpretation within and between Fed. Cir.panels, for example.

"No tide is turning. No pendulum is swinging back, yet. It is still going to get worse before it gets better."

It's never getting better, and the reason why is set forth plainly by Mayer. Ignoring Mayer's concurrence is like ignoring the asteroid hurtling directly towards your city. Mayer's concurrence is the future and its very real.

BASCOM was a nonsensical decision. "Do it remotely" will never suffice to rescue otherwise ineligible subject matter because "doing it remotely" has been in the prior art for a long long time. The same is true of McRo which was also completely
(and correctly) ignored by this panel.

"In terms of determining what is conventional, it seems that the Court can characterize the claims in a way to achieve a desired outcome."

Remember that the entire game played by 'do it on a computer' applicants is to pretend that conventional technology doesn't exist. According to the applicants, when you progam a computer to do anything "new", it's a "new computer". Never mind that the whole point of the old computer was to be programmed.

"Conventionality" itself is a red herring. What matters is whether the combined physical structures recited in the claim (e.g., computers, displays, servers, etc) were in the prior art as connected or not. Layering ineligible subject matter ("look for this kind of bad data") over that conventional technology isn't going to cut it.

There really isn't anything "confusing" about this. But it does irritate some people. On the other hand, it makes a whole lot more people really glad! Step out of the bubble some time and ask around.

Paul Morgan,

Panel decisions must hew to stare decisis and are not a "free-for-all" for voicing the nonsense that was in the concurence.

The "physical structure in the claims" infection has spread here.

PatentDocs, get well soon.

Skeptical, defending the concurrence here is definitely not the most relevant issue [much less my views], and since it is not a decision it cannot violate stare decisis, nor is it any precident.* [Not that intra-panel (versus en banc) decision stare decisis is always followed that strictly by Fed. Cir. panels.]
What is significant here is the majority opinion, following so soon after two prior Fed. Cir. decisions rejecting Alice based defenses and "distinguishing" them, albeit with somewhat different facts.

*Likewise for some of Judge Newman's more popular concurrences or dissents.

Your point is well taken, Paul.

Thanks

"Dyk is one of the most, if not the most, anti-patent judge on the Federal Circuit."

This is a tough call (when one is up against Mayer, or Wallach, or Hughes). In the end, though, I would agree with you in awarding the prize to Judge Dyk. I cannot recall a case in which he was presented with a 101 issue that he did not hold for ineligibility (including some real doozies like BRCA-1 or Roslin), and even where 101 is not presented, he is game to bring it up unsolicited (Comiskey).

Hey GrzeszDel,

Fair assessment that other Federal Circuit judges may be on par with Dyk for anti-patent views. Having both Dyk and Mayer on a panel, as happened here, must rank as a "nightmare" for any attorney representing the patent owner.

GrzeszDeL, you wrote:

"Anyone else notice that Judge Dyk distinguished Bascom on the grounds that the patent in Bascom solved an "alleged" technical problem in the network? In other words, he will not even concede there was a real problem solved in Bascom. He clearly hates that case, and plans to cabin it into irrelevance."

That is not hostility, but simply due to the procedural posture of Bascom. The district court granted a 12(b)6 motion to dismiss. Factual allegations in the complaint are assumed to be true, but they are not necessarily facts.

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