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September 16, 2009



Prometheus is certainly a huge improvement over the ghastly opinion (if you can call it that) in Classen. But Prometheus also highlights how unworkable and subjective the Bilski "machine or transformation" test is.

I don't envy Judge Lourie's task of trying to reconcile the "natural phenomena" prohibition with the Bilski test. (And I don't mind at all that he took a backhanded swipe at Justice Breyer's dissenting opinion in Metabolite.) Frankly, Prometheus wastes all this judicial verbiage on what should have been any easy ruling (the claimed method is statutory subject matter under 35 USC 101 without blinking an eye).

The Federal Circuit, as well as SCOTUS, need to drop 35 USC 101 as the primary screen, and instead focus on 35 USC 112, followed by 35 USC 102/103. That's basically what Professor Risch at West Virginia said, and he's got it right.

The court found an easy way out with the "injecting the drug" argument, which clearly is a transformative step. My concern is for those diagnosis claims that do not have such a clear step of administering or obtaining a sample or performing a reaction. Although this is somewhat of a relief for medical diagnosis claims, we will have to wait and see what the Supreme Court does with Bilski.


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