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January 25, 2018


"A recent trend in § 101 jurisprudence is the increasing importance of process over substance. If a Federal Circuit panel reviews claims after they were construed by the district court, refuses to summarize the claimed invention at a high level in part one of the Alice inquiry, and considers the teachings of improvements set forth in the specification in parts one or two of this inquiry, it is much more likely that the Court will find the claims in question to be eligible."

That sounds in the opposite - when substance is actually engaged, the process appears rational. It is when NO substance is engaged (and "Gisting" is prevalant), THAT is when you have "process over substance."

Note that transformative improved functionality is apparent from the straightforward wording of the claim, which prompted the Court to enquire deeper and reach the favourable result that it did.

The legal inconsistency referred to in the article may be improved by more thoughtful and detailed claim drafting, as here.

"Intra-circuit split" is a charitable phrasing. Philosophical chasm is more like it.

With millions of dollars in litigation hanging on utterly random District Court judge draws, the current situation is intolerable. Congress or the Supreme Court are totally abdicating their responsibilities to equity and justice on this topic.


I commend you on your excellent insights regarding the current intra-circuit split - the tension between Amdocs and Two-Way Media is palpable: When should the claims be construed – before consideration of 101 issues or after? To what extent should the claims, for purposes of assessing patent eligibility, be considered in view of the specification.. Maybe the big takeaway here is that if the Federal Circuit could develop a consistent process for assessing patent eligibility in a way that makes sense to the patent bar, then the heightened level of kvetching about 101 jurisprudence (including calls for legislative clarification of 101) would effectively cease.

Mr. Snyder's comment of "Philosophical chasm" is absolutely correct.

However - this is directly BECAUSE of the meddling of the Supreme Court and that body's actions BEYOND their responsibility.

Somehow calling for MORE of what started the problem (in order to reach any sense of "equity") guarantees only more of the same mess.

There is a quote, I believe attributed to Einstein, that fits here...

@ Gary Cohen

As explained in a number of briefs that I have written, it is a matter of taking into account the "all elements" rule that applies to sections 102 and 103 into 101. Although there is room for interpretation of the claim, that is an inescapable requirement of patent law.

We then have the correct division of the Federal Circuit into correctly informed lawyers and ill-informed lawyers.

How can you make a decision about a claim when you do not truly understand what it means?

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