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July 23, 2014



This first post-grant review by the PTAB applying Alice Corp painfully illustrates why the logic of Our Judicial Mount Olympus on patent-eligibility is nonsensical and utterly violates the fundamental principle of Diehr that the claimed invention shouldn't be dissected as Alice Corp did. Also, how can this method be carried out "automatically and in real time" if not integrally linked with a computer? In other words, and contrary to what the PTAB says, this is more than just doing something "faster and more efficiently." Again, judge the claimed method for patentability under 35 USC 103, not patent eligibility under 35 USC 101.

"more likely than not" for a granted patent...

Noting the posture - and not the end result - clearly indicates that a stick in the bundle of property rights has been taken away by an executive agency Article I court.

Not even Congress is allowed to write a law that violates the takings clause of a (already granted) property right, property being one of the fundamental rights protected by the Due Process clause. This is not to say that the government can NOT take away a property right - they surely can. But here, there is an evident lack of the protections that must exist when such a taking by the government happens. When those protections are absent - as here - the law is unconstitutional.

Great result! I'm glad to see the PTO applying the recent Supreme Court decisions accurately and fairly. This is exactly the result that most people are looking for and more decisions like this will certainly improve the utility of the patent system overall.

Jeff C.,

What is the utility of the patent system in your view?

You state a rather nice sounding soundbyte - but one that seems rather disconnected to a legal understanding.

It seems like a claim which satisfies the second the third prongs for the test (i.e. (ii) must be directed to a business method, and (iii) must not be directed to a technological innovation) will always fail to satisfy 101 under CLS Bank. Can anyone think of an example that does not?

Jeff C.,

Who are "most people"? Perhaps you mean Google, Oracle, Microsoft, Facebook and other big tech?

Most people I know (inventors and small businesses) find this destruction of the patent system and the taking of their rights disgusting, appalling and unjust.


Can you give me a non-circular definition of "technological"?

I would posit that most every business method can fit into that definition.


Having read the PTAB decision, it seems like the claims, and what was said about them in the specification, left the PTAB with little choice. In fairness to the Applicant, in April 2007 when the application was filed, none of us could have imagined the judicial environment post-Alice. Let us remain optimistic that there will be a CBM which is upheld by the PTAB to give us some positive guidance for drafting and prosecution.

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