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« Conference & CLE Calendar | Main | St. Regis Mohawk Tribe (and Allergan) File Motion to Preclude PTAB Final Written Decision in IPR »

March 11, 2018


So basically Judge Hughes says, We got it wrong in Ariosa so we need to continue to get it wrong in cases like this one, thereby discouraging useful R&D and undermining the rationale for having a patent system in the first place.

Remind me, when does Judge Hughes retire?

At its core, the Supreme Court "gift" of the "Gist/Abstract" sword is Void for Vagueness.

How many forehead scans (the pings and pongs of the lower court decisions) are needed to gauge THAT temperature?

Can anyone cite a case or reason this particular method does not gain safe harbor via 35 U.S.C. § 287(c)?

Also, as usual, if this were a novel device, there would be no eligibility question. If the routine steps created a novel composition or physical result, there would be no question. Instead, the result of the method is an item of information, and as usual, the patent system locks up tight in dealing with items of information as patent eligible inventions.

Hey Kevin,

When SCOTUS creates a nonsensical test for patent-eligibility (including failing to define what they mean by "abstract idea"), why is it surprising you get inconsistent application of that test?

Mr. Snyder,

I suggest that you look again at the Alice case, in which items averred to by both parties as passing the machine prong were none-the-less deemed by the Court to be abstract.

In other words, your attempted penchant for "method" differentiation (as a function of "information") is simply wrong.

I presume, Martin, that Kaz is making the accused devices and thus was subject to direct infringement liability (which they skirted by how the device performed) and that they induced infringement by instructing doctors how to use the device (the statute doesn't say the doctors are not infringers, it just says there is no liability for their infringement).

Kevin I think the Docs would know how to use the device with no instruction at all. Is the selling of the device inducing infringement all by itself?

Nice to see a little sense from the panel majority here.

Interesting question, Martin - a little like an attractive nuisance. I think inducement requires intention (mens rea) but not sure if selling a device where the inevitable consequence of using will induce infringement is enough.

Doctor Noonan,

What possible other result could come from selling the device, except for its use?

It's an interesting question- can you induce a person to infringe who has safe harbor from infringement?

Could the manufacturer avoid liability by restricting sales to doctors (or other medical professionals covered under
§ 287(c) ) since this is indisputably a method used on a human body?

In any event, with $20M on the line, en banc petition or cert petition following seems likely.

I see that, at the EPO, the opposition to the issued patent has been dismissed but that an appeal is pending. The patent issued Feb 2012 and its 20 year term runs out in September 2019.


I have a hunch though, that the EPO Board of Appeal will find the claims obvious. From such a Decision, there is (as we all know) no further appeal.

The statute reads:

(1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b), the provisions of sections 281, 283, 284, and 285 shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

So I think the medical practitioner is an infringer but the patentee has no remedy against the practitioner.

How can someone induce behavior that does not apply under sections 281, 283, 284, and 285?

Mr. Snyder, you are not following the law as written.

The "not applied" is in regards to something THAT OTHERWISE WOULD constitute infringement.

A => B => C
but not C in special cases,
still leaves A => B

Martin, these sections refer to remedies and liabilities, not whether the activity is infringing. That was the point - to give doctors a safe harbor from liability while still having their infringing behavior constitute the predicate direct infringement needed to support indirect infringement.

Thanks for the discussion.

Sorry Mr Snyder, but I would rather return to eligibility than stay with "safe harbor". Ned Heller makes a nice point on the Crouch thread. Here it is:

"Diehr physically modified a physical molding process to improve a physical process. The claim included a programmed computer, put it was not there simply to calculate numbers. Its output was used real time to determine when to open the mold.
Here, at best, we have an improved machine that combines existing machines with a new calculus and a new way measuring surface temperature of the forehead. But there is a dispute between the majority and the dissent as to whether machine or process was modified in any way other than the improved calculus.
If one allows existing machinery to do existing things to gather data and the only thing different is the calculus which implements a discovered relationship, the patent is on the discovered relationship."

Calling Paul Cole: Paul you comment about that the majority takes the better view. So you disagree, I imagine, with Ned.

So do I. Why's that? Because this is an invention in technology, no less than Diehr. Ned declares it to be "only" calculus, nothing more. For me, it's more than that.

That said, the claims are, as ever, too wide. Shame about that.

Anybody else?

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