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« Guest Post: Myriad-Mayo Guidance -- Consistency With International Harmonization and TRIPS | Main | Ferring B.V. v. Watson Laboratories, Inc. (I) (Fed. Cir. 2014) »

August 27, 2014



Cases like these show why the current patent-eligibility standard ("inventive concept") concocted by Our Judicial Mount Olympus in Alice Corp. has hopelessly and nonsensically comingled Sections 101, 102 and 103.

True, but at this point I think the debate needs to shift to how we prosecute applications and conduct litigation in view of CLS Bank being a reality. Unfortunately, there are more questions than answers.

Mike, much as I disagreed (respectfully) with Dr. Noonan, the time is now to draw the line in the sand and rebuke the Court for its overstepping and writing (poorly - as in impermissibly vague) of patent law.

Remember - ANY adjustment you make now in light of the decisions can easily be wiped away by the Court, as they have shown a visceral disdain for scriviners fully complying with the words of Congress, and yet - in the Court's eyes - merely trying to get around the Court's own implicit - and policy-driven - writings. You very much risk a massive waste of your client's funds REacting now (in any manner), writing and prosecuting applications that at some distant future point can be simply negated by a Court that has the power to use words that it refuses to define.


I hear you. But as you admit in your response to my comment, how do you counsel clients rationally about a decision that "has more questions than answers"? The problem is Our Judicial Mount Olympus won't adhere to what the patent statutes actually say. Where are these so-called "exceptions" described in the patent statutes? Answer: they're not which means Our Judicial Mount Olympus is abrogating its responsibility to interpret the law as Congress has enacted it.

Worse yet, they keep hurling "thunderbolts" at the Federal Circuit that create a chaotic mess, then leave it to the Federal Circuit to unravel this mess that they, the Royal Nine, created. How would you like the Federal Circuit telling us, like the Alice Corp decision did, that "it's not our job to define what an "abstract idea," it's up to you to figure it out with whatever 'crystal ball' you've got." commingle the patent statutes with

No one is above the law and that includes Our Judicial Mount Olympus, whether they like it or not.

I'm not trying to say that the Court is right here - I think it's munging of 101 and 103, as well as the vagueness of the Mayo test, are a mess.

However, we do need to advise clients, and there is advice to be given, especially about how to write claims and specifications, as well as manage portfolios, in a post-CLS-Bank world.


I agree with you to a point and sharply disagree with to another.

Yes, clients need advice and we need to give it - agreed.

No, what that advice is - is not ascertainable right now. Certainly not with any certainty.

Yes, we need to "give it our best shot," because - in part - as Dr. Noonan asked, what else can we do? But giving it our best shot is far from what we can - and should be doing. It may be a part of what we are doing, but it cannot and it better not be the sum total of what we are doing.

At a minimum, we need to be advising clients that no matter how we apply our scrivining talents, the Supreme Court can years from now wipe out all value without explaining any details or providing any "correct" way of doing things. Our clients need to understand that ALL bets are off when NO guidance is truly available.

A more progressive step is to enjoin the battle and try to get Congress to act like it did in 1952. This anti-patent Supreme Court is not the first time in our history that the Supreme Court has been anti-patent.

Congress does have the capability of limiting Supreme Court review. This perhaps is the best path forward.

Unfortunately, those in power in Congress have not shown interest in reclaiming what is their power per the constitution. Will that change in the short term? Alas, I remain...

"However, we do need to advise clients, and there is advice to be given, especially about how to write claims and specifications, as well as manage portfolios, in a post-CLS-Bank world."


How, pray tell, do we "advise clients" (and "what advice [is there] to be given" in view of this utterly rudderless and subjective standard for patent-eligibility when no one (including the Royal Nine) will define for us "mere mortals" what an "abstract idea" is or give us an example of that "something more" (other a vague reference to Diehr)? And now we've got another of these nonsensical Alice-style decisions (BuySafe v. Google) that came out yesterday, now by a 2-judge panel, and again authored by Taranto who, as far as I can tell, doesn't know squat about patent law?

I'm to the point of recommending to clients who have data processing/management methods/systems potentially in the "Alice Zone" that they file provisional and wait to see how the Federal Circuit/USPTO further responds to this Alice inanity. Frankly, unless Congress steps in (unlikely in the foreseeable future) the rectify this mess created by Our Judicial Mount Olympus, as well as chastising the Royal Nine for overreaching by "making law" (that's what the Royal Nine has done), instead of interpreting the express language of the patent statutes (as enacted by Congress), the patent-eligibility of data processing/management methods/systems will remain a quagmire


Until Congress steps in, if they step in, the reality is that claimed data processing methods are going to have to have enough supporting evidence that they provide an improvement to a technical (non-financial) process. For instance, a set of results that demonstrate that the claimed method provides better accuracy with the same processing requirements, or the same accuracy with less processing requirements, than the prior art.

I'm not saying that this will do the trick in all cases, but if the words of the Court are going to be followed, it should.

At the rate that patents are falling under the Alice test these days it may be a matter for time before the industry begins lobbying Congress for a fix.

"[T]he reality is that claimed data processing methods are going to have to have enough supporting evidence that they provide an improvement."


I hear you (sigh). The problem is that "improvement" relates to patentability under 35 USC 103, not patent-eligibility under 35 USC 101. Also, what your suggesting is a "technical art" standard for patent-eligibility under 35 USC 101 which is required, for example, in Europe, but up to now, has not been the requirement for patent-eligibility in U.S. Also, Congress has already recently stated which so-called "business methods" (i.e., tax avoidance schemes) aren't patent-eligible under 35 USC 101. Why can't Our Judicial Mount Olympus (for once) acknowledge when Congress has spoken explicitly on the patent-eligibility issue?


As Harold Wegner points out regarding the more recent BuySafe v. Google case, some members of the Federal Circuit resort to "myths" (not facts) in supporting these patent-eligibility decisions under 35 USC 101, for example, patents as inhibiting further discovery: "The panel quotes with approval recent Supreme Court mythology that 'patent law not inhibit further discovery….' by granting patents to basic concepts. (emphasis added). The idea that patents block research is contrary to two centuries of case law dating back to Joseph Story: 'There is a fundamental right of the public to experiment on a patented invention.'"

This whole "mythology" about "patents inhibiting future discovery" that the Royal Nine, as well "some members of the Federal Circuit" perpetuate (without any citing any factual record to support that "mythology") reminds me of a quote by Judge Sporklin (D.C. District Court) in U.S. v. Microsoft where he ruled that a consent decree between the FTC and Microsoft in an antitrust case was "not in the public interest" under the Tunney Act based on an insufficient factual record to support it. Sporklin wryly noted that Tunney Act courts "are not mushrooms to be placed in a dark corner and sprinkled with fertilizer." "Fertilizer" was an obvious reference to manure. Similarly, I and others members of the patent law bar don't enjoy (or respect) being treated by the Royal Nine, as well as certain members of the Federal Circuit as "mushrooms to be placed in a dark corner to be sprinkled with [manure]."

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