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« Conference & CLE Calendar | Main | Guest Post -- Recent Software Case Gives Important Lessons for Biotech »

October 16, 2016


"Whether it is a sign of things to come remains to be seen."

It's not a sign of "things to come", unless by "things to come" you mean "patentees are going to be asserting less 'do-it-on-a-computer" type junk, and therefore there will be fewer successful 101 challenges.

Also, I don't believe September or October were particularly great months for 101 appellants.

What does "specifically claimed" software mean, by the way, for the purpose of this "abundantly clear" test for patent eligibility which you set forth above? As long as you say more than just "use software", you're good to go?

I would appreciate hearing about district courts holdings related to "natural laws."

Good as in "the cancer hasn't spread so you're technically in remission" good.

But yeah, that's comparatively not bad.


For the Federal Circuit's take on "specific" see McRo - variations of the word appear at least 25 times in the opinion.

There is no abundantly clear test (as I'm sure you know), but is is more than abundantly clear that software is eligible - see Enfish.


These are all of the district court 101 decisions, including any regarding natural laws. We have not counted, but vast majority appear to be based on the abstract idea exclusion, however.

Mike Borella: "it is more than abundantly clear that software is eligible"

What's "abundantly clear" is that a whole ton of software is ineligible and it's never coming back. Since I last wrote, the CAFC has tanked even more junk under 101.

"There is no abundantly clear test"

The only reason for that is that the CAFC is desperate to keep some software patents alive, but they can't figure out a coherent way of doing that. So they just muddy the water. And you carry that water for them (why? that's anybody's guess).

"For the Federal Circuit's take on "specific" see McRo - variations of the word appear at least 25 times in the opinion"

Just tell everyone what the word "specific" means in this context, Mike. After all, you're some kind of "expert", aren't you?

Fair Warning:

"[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent eligible.”

Note the absence of any mention of how "specifically" the ineligible subject matter is claimed.

Now ask yourself: what happens if you try to claim logic applied to data in the absence of any explicit reference to a computer? The CAFC answered that question yesterday: your claim is ineligible, and the "specifity" doesn't matter.

Back to the Alice quote. The logical conclusion when you combine these two decisions seems "abundantly clear" to me, Mike. I believe this sad episode in the history of the US patent system is going to come to an end sooner rather than later.

"Carry the water for them"...

Get well soon, PatentDocs.

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