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December 14, 2015


Not to be contrarian, but if all that you are doing is re-presenting the arguments that have already been put forth for the en banc consideration, and re-labeling them as "compelling for cert," you very much are "crying over spilled milk."

And certainly, the judges that make up the CAFC do not (yet?) have the same mindset as the Justices of the Supreme Court (a few more uses of a fire hose may yet train those monkeys), but something tells me that the same arguments may very well lead to the same denial of being heard.

What ELSE can be put into the cert petitions?

@ Skeptical

"Furthermore, the findings in the joint opinion of Lourie and Moore point strongly towards the claimed subject matter being a new and useful process covered by the clear wording of § 101, and it is difficult to see how the test in Mayo applied the breadth attributed to it by the Federal Circuit avoids reading limitations and conditions into patent law that the legislature has not expressed, contrary to principles of statutory construction recapitulated by Justice Rehnquist in Diamond v Diehr."

If you think about it, the Lefstin question is on much the same point.

I was told by a person who ought to know that this case is "dynamite". If you want a dynamite issue, there it is! If you live in a paranoid world of smoke and mirrors you might conclude that Lourie and Moore wrote their opinion with just this question in mind, though leaving it to the petition stage for the question to surface in explicit form.

Interestingly, it is just what many commentators on this and other posts have been saying for some years, and the significance of which I have belatedly recognised.

Mr. Cole,

I am not questioning the arguments already put forth as to whether or not they are "on point."

Believe me, your post here is definitely "preaching to the choir" with me.

But again - if the only thing you are doing is recycling that which has FAILED to garner en banc, WHY would you expect a different outcome for cert?

All I see here is crying that the milk spilled on the floor "really is" valuable milk.

Yep. I agree with you. The milk on the floor really is valuable milk.

But such just does nothing to "un-spill" it.

I am inclined to concur with the decision; as I look at the scope of the claims they are overly broad
what really bothers me is lack of guidance from the court as to how a patentee could narrow the scope of the claims to make the claims patent eligible under 35USC 101....

@ Shahid

With both Mayo and Ariosa it is not too difficult to write claims that would have had a greater chance of being upheld. If you are in any doubt about that, have a read of the opinion of Dyk.

However, the question here is 101 eligibility, not 112. And a correct outcome for the wrong reasoning can create just as much havoc as a completely wrong decision.

The question is how can we make sense of the claims that we have here, what do they mean, and do they claim an invention that is in principle eligible.

Mr. Cole,

I do suspect - and will "go out on a limb" and predict - that the same stony silence that my points to you yield will mirror the silence (read that as denial of cert) that - without more - the entreaties to the Supreme Court will receive.

And yes, I still believe that the milk you present, even as it lay spilled upon the floor, is mighty fine milk.

@ Skeptical

The comments about milk are greatly appreciated. It would be good if there is cream as well, but if so then others more knowledgeable than me will have to provide it.

The comments to this entry are closed.

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