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March 04, 2018



The claim recites a process that involves inserting one physical object into another physical object.

That process may or may not be known or obvious based on what was known. But only a deranged individual would conclude that the process recited is "abstract".

One wonders what consciousness-expanding substances the judge ingested prior to writing this decision.

If Judge Newman is on the panel that hears the appeal, I'll get out the popcorn.

The infirmity of the "Void for Vagueness" 101 jurisprudence reflects again in the mishmash of what should have been a straight-forward 103.

Congress carved 103 out of the same paragraph as from which came 101.

They did so for a reason, that reason being removed by Judicial Fiat.

James Madison may need some type of "dampening" for the level of spinning in his grave that is surely going on.

Hey James,

Yet another nonsensical 101 decision proving the absurdity of the Mayo/Alice framework. The illogic of the district court is beyond the pale.

At first sight the application of Section 101 seems problematic.

But what are the vibrations, what is their magnitude and frequency? What evidence is there that the proposed insert with suppress them? What useful design guidance is given? Is it credible that the proposed design solution will in fact work, and if so under what range of circumstances?

If any experiments were carried out, but details were suppressed in the application as filed, that is a gross breach of scientific ethics, and Dick Feynman would be turning in his grave. if it was a mere speculative exercise, Dick Feynman would be equally upset. Either way deserved patentee sympathy = 0.

The application is another effort to claim all solutions of a known problem without disclosing any of them, following in the uninspiring footsteps of Funk Brothers v Kalo.

It is hoped that there will be no appeal, otherwise we risk yet another unfortunate decision from the Federal Circuit.

The patentee conceded that the only inventive aspect was the step of tuning of the liner, but there's precious little in the specification about how to do that. To argue enablement, they have to claim that it's obvious how to do it - in which case, where's the invention, again?
The claims are overbroad and claim the result rather than the invention, a combination that often makes Alice look like the right tool for the job.

To echo Atari Man's sentiments:

So inserting something into a hollow shaft is abstract. Interesting. I guess it follows that coitus is also abstract. Does that mean the baby that results is abstract too? That would be news to most parents.

"A method of making a car go faster, comprising:

providing a car having an acceleration pedal,
configuring the car to drive faster,
pushing the acceleration pedal of the car."

This cant be abstract to most commenters here, since "pushing the pedal" is clearly a physical action....

To Mr. Demers and Mr. Cole, I would mention the fact that (especially in law) the ends do not justify the means.

Even if - especially if - this patent should easily succumb under other sections of law, the muddling of law to reach a judicially desired end should NOT suffer the embarrassment of how the jurisprudence of 101 has been made into a shambles.

Seems like a lack of enablement/WD or obviousness matter to me more than a 101 matter, but I'm not a patent lawyer.

I did however see this morning's Supreme Court opinion in U.S. Bank N.A. v. Village at Lakeridge which I think could bear directly on the pending questions of just how/who factual determinations are made in 101 cases.

"What is the nature of the mixed question here and which kind of court (bankruptcy or appellate) is better suited to resolve it? Mixed questions are not all alike. Some require courts to expound on the law, and should typically be reviewed de novo. Others immerse courts in case-specific factual issues, and should usually be reviewed
with deference. In short, the standard of review for a mixed question depends on whether answering it entails primarily legal or factual work".

This suggests to me that the USSC may at some point substantially limit the ability of the CAFC to re-litigate 101 determinations in the future.

Mr. Snyder,

The more important drive is whether or not the examination or the PTAB "get it right" in the first instance as to the factual predicate to the legal question of 101.

Only IF that initial foray has "gotten it right" would any such "substantially limit" come into play.

Let's remember that examination and PTAB occurs in an administrative agency of the Executive Branch which is held to tighter factual treatment than an Article III court.

@ Skeptical

Just put yourself in the position of a judge in a CAFC panel hearing this case.

You can see that this is a worthless patent.

One route open to you is to kill it off by affirmance under Section 101, which is a favour to the litigating parties and the public.

The other is to be a legal pedant, say that Section 101 is the wrong tool, and look forward to seeing the case again, after some $millions of expensive litigation, in about 3-5 years time.

The strong temptation is to take the short cut, hopefully minimising the amount of damaging obiter rhetoric to make trouble for future cases.

If I had the necessary qualifications and was on the panel, I would affirm with reluctance.

Paul Cole, he district court judge was wrong. Period. And if the case is as open-and-shut as you say, the defendant should have no difficulty on remand getting the case dismissed by summary judgment on the correct grounds: lack of enablement and/or written description; lack of novelty; obviousness. And if that doesn't work, then the patentee deserves a trial. But affirmance under 101 because you think the patent is garbage on other grounds, but is ok under 101? Are you serious?

More importantly, every other patentee deserves better than what this judge did. And THAT'S why the CAFC needs to reverse and remand.

It is perhaps a good thing then, Mr. Cole, that your version of "legal pedant" is not a universal trait.

The ends do not justify the means.

Especially in law.

The comments to this entry are closed.

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