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« USPTO Seeks Comments on New Patent Quality Metrics | Main | Avago Technologies General IP (Singapore) Pte Ltd. v. Asustek Computer, Inc. (N.D. Cal. 2016) »

May 02, 2016

Comments

Hm, I am slightly surprised that the government did not care to weigh in at this stage.

Hey Don,

While the briefs tend to blame the lower courts, especially the Federal Circuit, for misapplication of the Mayo/Alice framework, the problems lies at the foot of Our Judicial Mount Olympus to clean up the mess they've created with this framework. This framework, as "sown" in Mayo and Alice, was broken at the outset, so SCOTUS needs to rectify/modify this framework now and explain how us "mere mortals" can properly apply it, or we'll continue to "reap" the undesirable "fruits" of this broken framework.

" This framework, as 'sown' in Mayo and Alice, was broken at the outset..."

Exactly!

EG

As explained in the EPI brief, this is not the case. The difficulty is inappropriate and over-broad interpretation by the lower courts.

Hey Paul,

With all due respect, I beg to differ: the problem starts at the top with SCOTUS who created this broken and nonsensical Mayo/Alice framework, then tells the lower courts "try to apply it correctly" but "we aren't going to give you any guidance on how to do that," including no definition of "abstract idea," and no explanation of what "something more" is. Also, where does SCOTUS tell us "mere mortals" what an "inventive concept" (a term nowhere appearing in any of the patent statutes) is, other than by conflating 35 USC 102/103 with 35 USC 101. I don't blame the Federal Circuit for being "leery" of again getting into this "hide the pea" guessing game as to what's in the "minds" SCOTUS, having been repeatedly trounced for guessing "wrong."

EG,

Paul valiantly (but in error) is attempting to "breath sanity" into what the Supreme Court has done.

The problem of course is that even if one wants to take Paul's view, the back and forth since 1952 over the 101 doctrine has made an irreconcilable mess of something that the Court should not have been sticking their fingers into anyway.

One of the major problems, as noted in the CIPA brief, is that the Federal Circuit has become habituated to go straight to the judicial exceptions without reference to the statutory categories within 101 and their meaning as set out in well-known decisions, including those of the Supreme court. To describe this as crass error is an understatement.

Unfortunately there is now a mindset in the Federal Circuit which only a better Supreme Court opinion or legislation can remedy. The latter is what Skeptical believes necessary, but in the short term the Ariosa appeal gives at least the opportunity for favourable reconsideration.

Hey Paul,

One item I completely agree with in the CIPA brief (and I'm glad they pointed it out) is Section III: the Mayo/Alice framework, as is or as applied, can't be reconciled with the U.S.'s obligations under TRIPS. Indeed, the Bioindustry brief plainly (and painfully) illustrates that similar claims in Europe, Australia, Canada, and Japan have encountered no such patent-eligibility issues. I do hope that SCOTUS is told "loud and clear" that it's vague and broken Mayo/Alice framework for determining patent-eligibility is putting the U.S. at high risk of violating its obligations under TRIPS.

"The difficulty is inappropriate and over-broad interpretation by the lower courts."

This seems like a distinction without a difference. Yes, Mayo/Myriad/Alice would not be so bad if they were applied more narrowly by the lower courts. On the other hand, the fact that the SCotUS keeps taking 101 cases (including GVRs) to reiterate the "apply Mayo" mantra, one can hardly blame the lower courts for thinking that they are not meant to cabin Mayo/Myriad/Alice to the narrow holdings of each, but have rather been given the marching orders to use the Mayo two-step rather liberally as a tool to invalidate patents. In other words, I do not think it is really fair to excuse the SCotUS here and put all the blame on lower courts.

Hopefully, the SCotUS can use this case as a vehicle to step back from the brink (just as they did with Diehr, after the untoward consequences of Benson/Flook became visibly apparent).

"I... hope that SCOTUS is told... that it's vague and broken Mayo/Alice framework... is putting the U.S. at high risk of violating its obligations under TRIPS."

Indeed. It is only too bad that they were not briefed on this point back during the original Mayo proceedings.

Paul Cole deserves a lot of credit for making this point better known.

I've been holding off from mentioning the TRIPs issue b/c I didn't want to steal Kevin's thunder - he's the one who pointed it out to me, but I don't think he's mentioned it in this blog - but now that that issue is has been raised: if SCOTUS doesn't get things fixed, it's not unreasonable to expect the issue to wind up before the WTO. That would be rich: after years of the US asserting, often falsely, that many other countries have deficient IP regimes, the US would be told that its own patent system is defective. Such a decision would pave the way for economic sanctions if the US doesn't fix this mess.

I think that WTO litigation is the only plausible way that this problem gets fixed. The problems caused by Mayo/Alice just are not on the U.S. Congress' radar yet. We know from the Brazilian cotton farmers' successful WTO action against the U.S., however, that WTO sanctions get the Congress' attention very quickly. Therefore, our best hope for getting Congress to reverse Mayo/Alice (perhaps even Myriad) by statutory amendment is to drag the U.S. before the WTO and have them find us non-compliant with our TRIPS obligations.

I have been mentioning this to all of my EP colleagues, in the hope that eventually some EP jurisdiction can be goaded to raise the matter in the WTO. That is probably a slow solution (our EP allies are understandably chary about dragging the U.S. into court), but it is the only realistic path to a reversal of Mayo/Alice that I can see.

"If SCOTUS doesn't get things fixed, it's not unreasonable to expect the issue to wind up before the WTO. That would be rich: after years of the US asserting, often falsely, that many other countries have deficient IP regimes, the US would be told that its own patent system is defective. Such a decision would pave the way for economic sanctions if the US doesn't fix this mess."

Hey Dan,

That would be "rich" and ironic. But also appropriate. Anything that would get Congress' attention as to "over the line" nonsensical Mayo/Alice framework by SCOTUS on patent-eligibility would be a huge plus. And as Skeptical has correctly pointed out, why does SCOTUS continually ignore 35 USC 112(b) (and its predecessor) as to what defines what the claimed invention is for patent-eligibility purposes?

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