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« Merck Sharp & Dohme B.V. v. Warner Chilcott Co. (Fed. Cir. 2017) | Main | PTAB Life Sciences Report »

October 23, 2017


While supporting the constructive views of Judge Linn, one wonders whether a representative claim positively including a turnstile and opening/restricting the turnstile as a physical device would have been less prone to objection.

It is an unavoidable truth that the words "directed to" and "focus" are unacceptably indefinite and lead to exuberant disregard to the "all elements" rule.

Hey Michael,

As I've said before, I could do better predicting patent-eligibility with a Ouija board than with the nonsensical and broken Mayo/Alice framework. Smart Systems is just another example of SCOTUS creating an utter mess in patent law, one they refuse to clean up, and one which, unfortunately, the Federal Circuit, with the exception a few judges like Linn in this case, refuses to push back at this contrived "out of thin air" Mayo/Alice framework.

"Of late, however, clarity has been emerging..."

I really cannot agree with this. What we have seen emerging is a faction of the CAFC who *want* to save the patent system by cabinning and redirecting Alice, which has resulted in a variety of claims surviving an Alice challenge. These precedents, however, do not make the law any more *clear*. They just make the law *less* deleterious to a well-functioning patent system (although, probably not by a large enough factor to prevent overall deterioration).

In fact, I would say that the law becomes successively *less* clear. Claims that *surely* should be 101 eligible (Sequenom) are cut down, while claims that are *much* more marginal (Enfish) survive.

One is left with the very distinct impression that the distinction between these two cases lies not in their facts or procedural postures, but rather in the fact that one of them (Enfish) wound up in front of Judges Moore & Taranto (two Alice-skeptical judges), while the other (Sequenom) ended up in front of Judge Wallach (perhaps the most Alice-bullish judge on the bench, alongside Judge Dyk).

That is the *opposite* of the law being clear. The law is clear when one can look at the facts and predict the outcome before one knows the judge(s). By contrast, right now, one can have very little confidence about the outcome---regardless of the facts---until one knows which judge(s) will hear one's case.

Will somebody wake up Congress?


I'm not disagreeing with you. Please note the entire sentence: "Of late, however, clarity has been emerging, but not enough to disambiguate the Alice test. Instead, it only helps us understand why different individuals can use the same test to come to radically different conclusions."



If I were to paraphrase then, what is becoming clear is the LACK of clarity...

A law that is so "clear" as to allow within its gambit "different individuals can use the same test to come to radically different conclusions" fails under the Void for Vagueness doctrine.

That doctrine is not just for criminal law maters (as has been shown in other forums) and the linchpin of its application in the patent arena may very well come from Oil States (if you believe the government brief that patents really are not property and all).

If you think the Fed. Cir. judges are inconsistent, you ought to try dealing with the PTO's examiners. They seem to have extracted one important lesson from all the confusion: there's no penalty for sending an applicant away empty-handed.

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