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April 06, 2014


An interesting write-up up until the end.

It appears that Breyer wants his cake of "cannot just say LON and apply it" (for patentees) and to eat it too (for Justices to say "abstract" and apply it), when what is abstract and what is not is muddled by opposing viewpoints.

While the Justices may want to have a narrow focus, would such a focus even begin to address everything on the record for this case - from the stipulation (something often overlooked in many other analysis) to the scream for 'something more' from the CAFC,...

...would anything less than an answer to the question presented - itself a broad question - suffice? I remain...


Given my review of the oral argument transcript, it's possible there could be a "split the baby" decision: (1) Alice Corps' claimed method most likely will be deemed patent-ineligible under 35 USC 101 (by 7-9 Justices, Scalia and Thomas being the only ones I'm not sure of) based on no clear computer-implemented recitation in the claims; and (2) Alice Corps' claimed system deemed patent-eligible under 35 USC 101 because it is clearly computer-implemented (essentially the 4 Justice plurality from Bilski that sided with Kennedy, plus Scalia who now appears to recognize that computer-implementation means something this context). Not a "for certain," but a distinct possibility.

I would also add that any attempt to sculpt a narrow result will necessarily create more room for those whom Breyer would hold in contempt (the scriveners of the world) to play with language and attempt to obtain patent coverage for inventions that can be described in the very broad terms of the categories of 101 and that have utility that people will want to have.

Yes, I know the Court never likes bright line rules, but they cannot play in the shadows of grey themselves and realistically believe that only they will play in that grey zone they create.

The Court's waffling here reminds me of something my late friend Ben Parker would often say: With great power comes great responsibility.

It appears that the Court wants to be able to keep its power of drafting implicit patent law (as can be seen with Breyer's comment in Prometheus about the refusal of the Court to let its exceptions to become dead letters), and yet not have the concomitant responsibility for articulating exactly, clearly, and concisely, the bounds by which applicants can approach patent law and charge their scriveners with obtaining the fullest coverage of protection that they have a right to under the law.

I offer this humble challenge: Justice Breyer, tear down the wall of uncertainty and remove the unknowable barrier that the Court has erected.

"I offer this humble challenge: Justice Breyer, tear down the wall of uncertainty and remove the unknowable barrier that the Court has erected."

Hey Skeptical,

Like the MasterCard commercial, "priceless"!

I, too, hope that the Court finds some way to clarify this aspect of Sec. 101. But aside from the approach that Judge Newman proposed, which would result in 101 being a very coarse filter and punting all considerations of prior art over to 102 and 103, I don't see how the Court is going to do that.

Mike, what would be the problem of punting prior art over to 102/103? That is where prior art jurisprudence is.

I have no problem with punting to 102/103, as doing so would simplify our lives immensely and still provide the USPTO and courts ample means with which to reject or invalidate "bad" claims.

However, I don't think that the Court is ready to walk back Breyer's analysis from Mayo just yet. They never questioned whether the abstract idea analysis should or shouldn't be handled under 101 - instead they were reaching for a rule that would permit only "good" claims through the 101 filter.


But according to Breyer, there was NO using 102/103 in the 101 question that he answered.

(Yes, I had to supress a guffaw when I typed that, but read again the opinion - that is exactly what Breyer thinks he is saying)

Then read the oral transcripts to the Alice case - Breyer is basically admitting he made up his position whole cloth and was hoping for someone else to, um, 'fill in it.' When one reads Breyer on what Breyer thinks of Breyer in Prometheus, one is left with the distinct impression of Jim Carrey in the 1994 movie The Mask with the line of "Somebody stop me!"

Confused. In Mayo, Breyer wrote "[w]e recognize that, in evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap." He went on to reject the notion of shifting parts of the 101 analysis to 102, 103 or 112.

But yes, Breyer seems to be acknowledging that Mayo didn't serve the community very well at all.

That's a nice understatement of Breyer on Breyer.

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