About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Top Stories of 2014: #10 to #7 | Main | Top Stories of 2014: #6 to #4 »

January 05, 2015



Just another poster child of why the Alice test is broken. More "claim dissection" in violation of Diehr's "claim as a whole" at its worst. If the claimed method of Content Extraction has a problem, it's under Section 112 (enablement), not Section 101.

Or 102. Or 103...


Agree that 102 and 103 would also be in play. The problem is Breyer's myopic view in Mayo that 101 would be "dead letter" if the other patent statutes were considered first. In fact, at least 112 has to be considered first because 112 says that the invention is defined by the claims. In other words, the numerical order of the statutes doesn't determine which should be considered first.

What it is coming down to, and you can see it in this case and in Judge Mayer's writing, is using 101 to kill off an infringement suit before discovery. While this may be the right thing to do in certain situations, the 101 inquiry is too much of a gray area for that to be commonplace.

To borrow a phrase, the "Gist/Abstract" sword give the Court (and lower courts) the ability to not bother with actual claim construction, making the use of 112 prior to 101 a "dead letter."

The Court simply will not allow the actual words of Congress to deprive them of their accustomed ability to twist the patent law nose of wax to whatever shape they desire.

Will we have a redux of the movement akin to Flash of Genius and the 1952 Act?

Sadly, I remain...

EG: "The problem is Breyer's myopic view in Mayo that 101 would be "dead letter" if the other patent statutes were considered first."

That wasn't Breyer's view and it's not the holding of Mayo v. Prometheus.

Mike Borella probably knows this. I hope he does anyway.

Regardless, your welcome for the correction.

Keep up the great work, guys.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29