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« Sequenom Petitions for Certiorari | Main | CRISPR Interference Motions Set »

March 22, 2016


Hey Michael,

Yet another example showing that the broken Alice test is completely untethered to any sort of rational factual determination. The statement by this court that the "Federal Circuit allows district courts to determine whether claim construction is needed for the § 101 analysis" is mind-boggling, as it essentially says that 35 USC 112, 2nd paragraph/112(b) can be ignored in any determination of patent-eligibility under 35 USC 101. And as you astutely and correctly point out, the "notion that § 101 is to be assessed as a matter of law is undermined by the introduction of 'prior art.'" What SCOTUS has "sowed" here is "reaping" shameful results having no proper factual foundation other than judicial fiat. (And I'm also not suggesting that this claimed map navigation method might not fall under 35 USC 112, 102 and/or 103 if the factual record had been properly developed.)

Patent suit defendants could have a lot more sympathy for the many complaints like this about these low-cost ab initio Alice 101 decisions, were it not for the fact that the only prior practical alternative in almost all cases was a settlement just to avoid litigation costs with no validity test. Even in the many cases like this where the patent claims seem very vulnerable on 103 or even 112 enablement grounds, when that was even reachable only after several million dollars in discovery burdens and a full blown trial and appeal.
Increased use of IPRs for 103 issues should reduce the need for these Alice-based Rule 12(b)(6) motions to dismiss on the pleadings.

Paul you nailed the key point of the 101 issue. Even an IPR is about a $500K-$700K expense to a determination.

The Alice test is indeed flawed and arbitrary, but the policy result is essential for justice.

What is needed is a stronger doctrine around "abstract ideas" and rules of procedure that allow judges to kill junky patents early in cases with consistency.

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