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December 13, 2016


Hey Michael,

Finally, a district court judge who uses some logic and "common sense" (pun intended to KSR International) in determining patent-eligibility, even using the nonsensical and broken Mayo/Alice framework. If only the Federal Circuit and especially SCOTUS would do the same.

In TNS Media Research, LLC v. TiVo Research and Analytics Inc., No. 11-cv-4039 (KBF) (S.D.N.Y.), Judge Forrest took the step of vacatur on patents already found ineligible; patents directly targeted by current 101 jurisprudence (Analyzing Return On Investment Of Advertising Campaigns By Matching Multiple Data Sources and Using Consumer Purchase Behavior For Television Targeting). Now these defendants will spend millions thru trial, where the patents will be tossed by the CAFC, because the 101 caselaw is a tabula rosa for any district judge to apply their philosophy to virtually any claims. At least at the CAFC, it's panel dependent, so you have to draw two for snake eyes.

What a beating and utter waste.


Those two decisions were before and after Enfish, Bascom, McRO and the like. We'll see if the Federal Circuit has an opportunity to opine.

Hey Michael,

I finally read Judge Forrest's opinion. What a breath of fresh air on determining patent-eligibility!. An actual cogent legal discussion of how to objectively interpret and apply the broken Mayo/Alice framework to a given patent claim, (as well as few snide comments, including how SCOTUS has yet to define what the Royal 8 mean by "abstract idea"). Like I said, the Federal Circuit and especially SCOTUS could learn much by reading Forrest's opinion.

"Certainly, if an invention passes a §§ 102 or 103 analysis, it should pass Alice step two."

I love it. Not just because it's correct, but because it also hints at the improper conflation of 101 with 102 and 103 under Alice. Well, what's good for the goose is good for the gander: if judges are going to have to undertake a 102/103 analysis at this stage, then passing that test should be sufficient to confirm patent-eligibility. Note that the way Judge Forrest stated it, NOT passing muster under 102/013 isn't necessarily fatal under 101.

And she achieved this result without going to a Markman hearing, which would be another, but much more expensive and resource-wasting, way to avoid the trap of "gisting" claims to the point where they're so bereft of meat as to fail under Alice.

Nice job by Judge Forrest.

"This reductionist simplicity may obscure
underlying complexity, and it may jeopardize the innovative improvements upon
longstanding accomplishments that patents are intended to incent"

Welcome to the "Gist/Abstract" sword of Supreme Court scrivening.

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