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« MacroPoint, LLC v. FourKites, Inc. (N.D. Ohio 2015) | Main | Prometheus Labs., Inc. v. Roxane Labs., Inc. (Fed. Cir. 2015) »

November 11, 2015


It is not true that the Federal Circuit has ever held claims in the Beauregard form to be patent-eligible. The court did not decide In Re Beauregard, on account of lack of jurisdiction:

'Briefly, on August 4, 1994, the Board rejected Beauregard's computer program product claims on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103." The Commissioner states that he agrees with Beauregard's position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists.'

Personally, I think the Commissioner was correct to agree with Beauregard. The European Patent Office Boards of Appeal have reached the same conclusion, as had the UK High Court. Claims in this form are now regarded as patent-eligible (so long as the underlying computer-implemented process is patentable) in all jurisdiction of which I am aware.

But the position in the US really should not be regarded as settled.


Issue estoppal...?

...by that, I mean, since the case was before the court, the court COULD HAVE weighed in and stated that the government's position was wrong, and that therefor, even if the government was "in agreement," there remained a true issue because the government's original assertion was still "true."

At least for argument's sake, the court has weighed in, since a decision not to decide is in itself a decision.

Also, contrast with the Alice case, in which both parties stipulated that claims MET the "hard goods" category prong of 101, and yet the Court continued onward to make a decision directly contradicting an item that lacked "present case or controversy."

Can the courts have it both ways?

Thanks Mark, for noting this common misrepresention of the NON-decision in In re Beauregard.

"Skeptical", the Court could NOT have "weighed in," and had to dismiss the case without any decision, because, as noted, there was no requisite "case or controversy" left after the PTO Commissioner formally fully agreed with the appellant.
UNlike Alice, where only one aspect of the unpatentable subject matter issue [which has always been broader than the literal 101 language]* was undisputed.
*Even the Supreme Court in Diamond v. Chakrabarty specifically stated that: "This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O'Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). "

Mr. Morgan,

You quite miss the point that the court in order to do what it did had to agree with the Office that the change in Office stance was indeed correct.

They very easily could have taken the Office view, said, "No, you are not correct, and thus the ORIGINAL complaint remains."

They did not do that.

In order to reach their conclusion they NEEDED to rest on a decision agreeing with the Office.

As to your view for Alice, you also are in error, as there, the stipulations by both parties was very much affected by the Court.

Your quote to Chakrabarty does NOT help you in this facet.

That misses the point of the "case or controversy" requirement for an Article III court. If there is no controversy left between any parties to the case, whatever the validity or reason for that situation, the court no longer has jurisdiction left to decide anything, much less give sua sponte advisory opinions.
Not to be confused with PTO post grant proceedings, where the PTO, as an interested party, can continue the proceeding in some cases even if the adverse party petitioner drops out.


It is you that misses the point (again).

The court has to decide whether or not it believes the Office position IN ORDER TO REACH the point of whether or not any case or controversy has gone away.

You are STILL not viewing, thinking about, comparing and contrasting THE VERY SAME THINGS that went on in the case you want to "dismiss" and the Alice case.

I have no idea why you want to drag into THIS conversation your love of the post grant proceedings. Maybe you want to have another "hoo rah" before those are tanked in an unconstitutional blow back....

Skeptical --

Cool off. Your understanding of constitutional "case or controversy" is incorrect. If a court lacks jurisdiction, that's the end -- without constitutional jurisdiction a court is forbidden from expressing any opinion on either party's view.

Beauregard stands for nothing, for the reason Paul explained.

Respectfully Mr. Boundy, it is you that is mistaken.

This is perhaps a subtle point, so let me guide you.

Ask yourself what would have happened if the court did not agree with the government's position.

The fact that no standing was found mandates that the court did in fact decide to agree with the government's position.

I think that you missed the subtle difference between that agreement and the different point of deciding a case on the merits of the case.

If you STILL disagree, then I invite you to actually think about and compare and contrast what the Court did in the Alice case - especially concerning those claims removed from case or controversy by the mutual stipulation of the parties involved. I noticed that you were TOO COOLED OFF to take that step, and yet, the point of my post hinges on the very evident dichotomy and the plain fact that you (the royal you, of course) simply cannot have it both ways.

Skeptical --

If the court did not agree with the government's position, but the government and Beauregard agreed with each other, the court would have written exactly what it did in Beauregard. Word-for-word.

"Case or controversy" is constitutional. If there's no case or controversy (or any other defect in subject matter jurisdiction), an Article III court can't do anything more than you see in the excerpt quoted by Mr Summerfield. For any issue where jurisdiction is lacking, a court is forbidden from deciding, or even hypothetically opining, on any issue.

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