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« Court Report | Main | USPTO Launches Dossier Access »

November 23, 2015


The issue whether positive evidence of inventive step under section 103 should count in the analysis of an invention under section 101 is one of the questions raised in my amicus brief in Sequemon, citing a range of Supreme Court opinions from the late 1800's e.g Webster Loom v Higgins through the Adams Battery case to KSR. A number of the other briefs in Sequemon raised the same issue. On the whole I think that commercial success may be less compelling than unexpected new technical result. However, the principle is important, and it is to be hoped that it will receive proper and informed consideration when, as hoped, the Sequemon case is taken en banc.

If that happens, it is profoundly to be hoped that the case will be argued by attorneys with sufficient depth of knowledge of patent law and technology. I have recently re-read the oral argument in Myriad, and in hindsight am dismayed by the lack of pertinent knowledge shown by the attorneys on both sides who failed to assist the court by directing attention to pertinent case law and by the somewhat rambling nature of their arguments showed that they were not on top of the case either legally or factually. For example, although bits chopped out of trees were much discussed, the importance of the "manufacture" heading of Section 101 was not clearly pointed out, and the significance of the Hartranft decision approved in Chakrabarty to that discussion did not surface as it should have done. Argument in these cases should be less in the hands of alleged litigation powerhouses and more in the hands of patent professionals who really know the law and have it sat their fingertips so that they can field the awkward questions that the court will routinely throw at them. However, about 15 out of 15 of the attorneys I asked at the recent AIPLA Annual Meeting meeting what were the criteria for a case to go en banc in the Federal Circuit could not give me the answer, which suggests that people of the right caliber may be thin on the ground.

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