About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Conference & CLE Calendar | Main | Views on Venue -- District of Delaware Provides Some Guidance on Venue in ANDA Cases Post-TC Heartland »

September 17, 2017


Hey Don,

The determination in this suit by the district court that the claimed invention is patent-ineligible is, itself, patently absurd on its face. What the district court did in this case is also shameful. Just more evidence that the Mayo/Alice framework is nonsensical.

How are claims 34 and 35 ineligible under 101? Where do the things claimed occur in nature? Please, Judge Huff, show me where I can find in nature the mixtures recited in claims 34 and 35.

Another case of a judge making her life easier by conflating the 102 and 103 inquiries with 101, without having to go through a Markman hearing first. Phooey on youey.

This appears to NOT be an isolated incident.

See http://www.ipwatchdog.com/2017/09/17/patent-battle-generic-inomax-leaves-five-mallinckrodt-patents-invalid/

I have a hard time following this ruling. Isn't every drug's action a natural phenomenon?

Mr. Snyder,

The short answer is "yes."

Drug's work (have utility) ONLY through a natural reaction. That is what is especially pernicious here. There are no drugs that have utility (in and of themselves) WITHOUT the "act of nature."

So (if the logic here stands), you have the Hobson's choice of no utility (in and of the drug itself) or a reliance on a "law of nature" - either of which removes patent eligibility.

Those advocating for the Supreme Court (being Supreme) and legislating from the bench should be careful of that which they wish for, as they may well get it.

Skeptical, I'll see your "yes" and raise you: all of science is predicated on natural phenomena, the idea that things will always behave the same way under identical conditions. This decision, taken to its logical conclusion, would mean that nothing is patentable, because everything is a natural phenomenon.

Atari Man/Skeptical,

For what you said is why 35 USC 101 should be interpreted AS WRITTEN, with NO EXCEPTIONS allowed. That's why SCOTUS' nonsensical Mayo/Alice framework has unhinged the determination of patent-eligibility from any sense of logic or law.

Atari Man,

All that we have is a Flash of Genius to peer into what happens anyway (in nature).

We, as humans, must still operate in THIS universe, and according to the laws of this universe.

The problem is not "the logical conclusion" or even "taking the logical conclusion too far."

The problem is forgetting that patents are a good thing and that we WANT patents - more of them, faster, and with more assurance that they will be enforced.

The key then is to stay away from the slippery slope of "exceptions" to begin with.

ESPECIALLY when things like "abstract" and "significantly more" are NOT defined and left up to some later judicial member to consider "I know it when I see it."

The comments to this entry are closed.

April 2024

Sun Mon Tue Wed Thu Fri Sat
  1 2 3 4 5 6
7 8 9 10 11 12 13
14 15 16 17 18 19 20
21 22 23 24 25 26 27
28 29 30