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« Court Report | Main | Apotex Inc. v. UCB, Inc. (Fed. Cir. 2014) »

August 18, 2014


"[P]rinciples related to commercial or social interaction" sounds like economics to me, which when you get down to it is the attempt to explain and predict human behavior. Explaining and predicting is, of course, the hallmark of scientific inquiry. Maybe that's why a lot of economics, just like a lot of physics (and these days, some biology) involves heavy-duty mathematical modeling. Is one science and the other not? Does the difference (if there is one) lie in the fact that if I apply some principles of physics, I can make a telegraph, or a laser, or a smartphone, whereas if I apply some principles of economics, I can't really build you something physical but I may be able to tell you when to buy or sell something? Or maybe the difference is that economics is less scientific, in the sense that it's hard or impossible to run large-scale, controlled experiments to test hypotheses, and in real life there are often too many variables to account to make accurate predictions?

And what's "overly broad"? What's "technological"?

What a mess.


This isn't the first time Judge Mayer has grossly overreached his judicial authority in raising patent-eligibility issues that neither party has raised. And as you correctly point, a majority of Our Judicial Mount Olympus hasn't ruled so-called "business methods" patent-ineligible, nor should they. (Besides Mayer, I've also got nothing but contempt for the 3 Justices in Alice who won't obey Congress' implicit if not explicit recognition that at least some so-called "business methods" are patent-eligible.)

I see the disturbance: one of three judges telling us what the law is based on three of nine Supreme Court Justices' view of the words of Congress.

Are my naysayers still holding the line that the law is being "interpreted" rather than being re-written?

While the good news is that this decision is labeled nonprecedential, the bad news is that panel composition will play a part in binding decisions and woe to those that draw Judge Mayer and one other like-minded judge to a panel. Clearly, we have a problem in the judiciary in which judges are refusing to honor precedent and are pursuing their own pre-ordained views of what the law is (or rather, what they want the law to be).

The power to write law is indeed addictive. This addiction needs to be addressed, not coddled or ignored.

But will our Congress, divided by partisanship, enthralled by lobbyists, and seemingly unable to recognize the basics of innovation theory, be able to step up to their "Churchill" task?

Sadly, I remain...

The scary thing is:"...the § 101 analysis should precede novelty, non-obviousness, and written description analyses because "[p]atent eligibility issues can often be resolved without lengthy claim construction,..."

Whatever happened to "The name of the game is the claim?"

It seems as though at least one judge is anxious to clear the docket quickly. I thought the backlog was at the USPTO not the CAFC.

"Patent eligibility issues can often be resolved without lengthy claim construction." Oy.

Perhaps it's time to revisit the notion that a 101 analysis needs to be carried out as a threshold test, prior to evaluation under 102, 103 and 112. (Memo to Judge Mayer: "overly broad" is a 112 issue.)

My impression is that judges, faced with claims that they desperately want to find invalid, have been committing judicial mayhem: mangling the law to fit the Procrustean 101 bed presented by the case before them, in what could/should have been open-and-shut 103 cases. And now we have Judge Meyer trying to drag some of that muddy thinking into what is at heart a 103 case.

Wouldn't we be better off if 101, 102, 103 and 112 questions were addressed in parallel?

The problem is: what this tries to claim is old. So old, in fact, that this was never properly the subject matter of patents. And doing it on a computer doesn't make it patent eligible.

The claim method is the same thing any and every genealogist has used. "Oh, you're looking for some aspect of so and so. Someone else also was looking for so and so. I can use those results, and give you the aspect you're looking for."

I don't see that even Judge Mayer's position is so out in left field.

This was the plainly correct result.

The result is not at issue. The process used to get there is problematic, as it could be used to invalidate / reject inventions that patentably distinguish over the prior art.

both the USPTO and Jury found the patents valid and infringed...what, 7th amendment doesn't apply anymore?

Google itself admitted they never raised the 101 defense...what happened to the federal rules of civil procedures?

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