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January 29, 2014



Nice write up on Smartgene and why its reasoning is problematic. I wrote an article for IPWatchdog on the district court decision in this case: http://www.ipwatchdog.com/2012/04/13/divining-what-mayo-means-exploring-the-smartgene-case/id=24153/ . The nonsensical reasoning in Mayo and now its progeny as illustrated by Smartgene, is creating utter chaos and illogicalness in determining patent-eligibility under 35 USC 101 of any method/process, even when it's computer implemented, and in complete derogation of Diehr's command that the claimed subject matter be considered "as a whole," even under 35 USC 101.


Thanks for the interesting perspective. My biggest problem is perhaps illustrated by the Judge Lourie quote in the second to last paragraph. His view of accelerated calculations implicitly combines sections 101, 102, and 103. Sure, a claim directed to a computer performing routine calculations is subject to invalidity under 102 or 103, but with Lourie's 101 analytical framework, the claim can be invalidated under 101 without citing any evidence or prior art. So now 101 is now an end run around 102 and 103, and facts don't matter.

As you noted, we can thank Mayo for that.


You're most welcome. The Mayo opinion is an utter travesty and disingenuously says it is consistent with its prior SCOTUS precedent, including Diehr. There is simply no way to logically square the reasoning in Mayo with the prior precedent in Diehr. And Diehr has it right in terms of you must consider the claimed subject matter "as a whole" across the validity statutes (101, 102, 103, and 111) or you'll have a huge disconnect in claim construction, including how those claims are construed for infringement purposes.

In my opinion, Lourie uses the most obtuse and odd reasoning in his opinions, including his Prometheus opinion that was overturned by Mayo. Now, as illustrated by Smartgene, he no longer has any will to "buck" the nonsensical reasoning of SCOTUS.

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