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« Conference & CLE Calendar | Main | Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. 2016) »

May 22, 2016


Hey Michael,

Just more evidence that the Alice test is utterly broken.

"because it is another reminder that the wall between patentable subject matter, obviousness, and written description is now rubble."

Is anyone really surprised when the Court attempts to ignore the words and desire of Congress - as evidenced in the 1952 Act - in trying to ply powers taken from it in that act, that any other result would be forthcoming?

Prior to 1952, there was but one single paragraph that reflected the "wall-less" (and now law-less) "rubble" and to which Congress had previously authorized the judicial branch to set the meaning of the word "invention" through the common law evolution tool.

The 1952 Act changed that - both removing that common law tool from the judicial branch and separating that single paragraph into the separate sections of the law of 101/102/103/112.

The Court would do well to reflect on the carnage wrought by its own actions, humbly recognize the limits of its authority - admit that it has overstepped that authority and fully respect the statutory law as written by Congress according to the Constitutional allocation of authority to write that statutory law.

If the Court can (validly) find some present case or controversy (notably not the mere future conjectural "may happen" as it has used in the past), then the Court should set the solution to such a problem properly. This means telling Congress to rewrite the law to "be" Constitutional, rather than the Court legislating from the bench to ESSENTIALLY rewrite the statute according to its desired "policies" - especially given the fact that such writing (scrivining - if you want to be so bold as return the slight) has been of such poor quality as to render the resulting law void for vagueness.

I mean really, when both the inferior courts and the executive branch cannot "develop" the law any better than to say "we can only use examples that the Court has provided," we have the effective situation that the statutory law is arbitrary until the Court itself makes up its mind - and given the inability to actually coalesce the mess of 101 jurisprudence - that "mind," is at best schizophrenic and cannot inform the normal person as to what is and what is not within the law.

Will - or perhaps a better question, CAN the Court realize its own "handiwork" of the current catastrophe of eligibility?

Sadly, I remain...

The difficulty with this opinion, as in a number of other recent Federal Circuit opinions is that the court goes first to the judicial exceptions without any, or any serious, attention to the wording of the statute and the four categories set out in it. Each category has considerable prior case law, and omission to consider inclusion in one of the statutory categories and going straight to the judicial exceptions is a mistake unbefitting a law student. It is not to construe the statute judicially but to ignore it.

In the present case the court might well have considered whether the claimed method is sufficiently transformative of the digital images and accompanying data to fall within 101 process eligibility as understood by straightforward interpretation of the statute. Such a finding would have avoided the embarrassment of invoking judicial exception. If on the other hand compliance was found, then judicial exception should have been applied with great caution.

I therefore find myself much in agreement with Skeptical. This point has been made to the Justices of the Supreme Court in the amicus brief filed by the Chartered Institute of Patent Attorneys in support of the Ariosa petition, and it remains to be seen whether the petition will be allowed and what improvement (if any) will result.

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