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« IPRs Threatened/Filed as Money-Making Strategy | Main | Apotex Inc. v. Wyeth LLC (Fed. Cir. 2016) »

August 17, 2016


"to the extent that sense is involved in any recent § 101 jurisprudence"

Hey Andrew,

Never were truer words spoken. The Mayo/Alice framework is completely nonsensical, and as you note, improperly conflates 103 with 101. Rather than saying that "Diehr is good law," SCOTUS needs to ditch the Mayo/Alice framework and go back and reaffirm the validity of the principles of Diehr. If SCOTUS won't, Congress should do it for them explicitly.

Do I see this right, that when it comes to the question "Inventive concept Y/N?" this PTAB panel is choosing to work through an analysis not a million miles away from the EPO's approach, namely confining eligible inventive activity to the technological arts (rather than, say, the bookkeeping arts).

Anything new here? Or was this always the way, in the USA?


No argument from me, though I am scarred for life that you confused me with Andrew. :)



Yep, that seems to be the case, and it is new (since the 2012 Mayo decision) and still evolving.


Hey Michael,

Sorry for the "name confusion," no slight intended!

Mike – your posts have gotten so good, you are being confused with me – congrats!

As an EP practitioner, I am comfortable with the idea of using a filter based on technical subject matter as a first pass for patent eligibility, but is this not going to present difficulties in the business method area? I can see it might work if the BM claim was tied to the use of a technical invention.

Thanks for the PGR statistics that "To date, there have been 32 PGR petitions filed, only three of which have proceeded to a final written decision. All of these decisions have involved claims being ruled invalid under 35 U.S.C. § 101." [Even though by now a very large number of patents could have been subjected to PGRs on numerous invalidity grounds not available in IPRs.]
I.e., if not for Alice there might not yet be ANY PGR decisions!
In AIPLA debates before the final version of the AIA PGR was being touted as an effective "opposition system" that would enhance patent validity presumptions if not used. I argued that PGR was almost useless as limited to only the first 9 months after a patent issues, which is long before most patents are ever asserted against anyone. Few companies ever go around attacking patents that are not actually threatened with. Especially with such an expense and inter partes trial system having such a very broad estoppel danger.


Yes, it does, as many business methods are technical solutions to business problems. Part of the claim-drafting challenge these days is to focus on the technical improvement provided by the method, to the extent that it exists under the current regime.


Mike, I'm another EPO person. The EPO requires a solution to a technical problem. Do I understand you right, that US jurisprudence doesn't?

You see, with ingenuity, you can solve all sorts of non-technical problems using technology, like when best to buy and sell shares in companies. Is that sort of subject matter eligible?

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