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« Conference & CLE Calendar | Main | General Hospital Corp. v. Sienna Biopharmaceuticals, Inc. (Fed. Cir. 2018) »

May 06, 2018


Joseph Herndon, I would like to point out one error in your article. The invention is not a "Purely Business Method" as you describe it in the title of your post. The court never characterized the invention as such and most important the actual inventor never described the invention as such. The invention is a pioneering, integrated, technological process. The PTAB analytically dissected the pioneering concept, and the technology from the invention, which is functionally integrated in the claims as a whole, and explicitly described in the specification and drawings. This panel of the CAFC apparently agreed with the Board that such analytical dissection at 101 of the patent statute is proper and permissible, a substantial change to patent law and Supreme Court precedent. Irregardless, the use of the term, "Business Method" in the title of the patent application has no legal effect whatsoever on the whether the claimed process meets the conditions and requirements for statutory subject matter under section 101 of the patent act.


Mark Eberra

Hey Joseph,

I second Mark's comment about not referring to this claimed invention as "purely a business method." It's bad enough that SCOTUS has given us the nonsensical Mayo/Alice framework that has NO support in 35 USC 101 as written. Let's not make it worse, especially as the patent statutes don't explicitly proscribe patents on what is alleged to be a "business method" (and which qualify as a "process"). See also 35 USC 273 in that regard.

Why would a "pure" business method (and who knows what that really means) somehow be AUTOMATICALLY patent ineligible?

Was this not decided against in Bilski (with Stevens losing his majority-writing position)?

Unfortunately Public Pair this morning did not reveal any published specification for USSN 12/230.058, nor did the [email protected] database reveal anything. It is therefore only possible to judge the application on the basis of the single claim reproduced above.

However, I much doubt whether the claim is sufficiently transformative to fall within the "process" category of Section 101. It is difficult to see what unexpected new function or result flows from the combination of features claimed. With the utmost respect to Mark Eberra's comments (and I see from his website that he is a person profoundly deserving of respect) it is difficult to see that the process claimed falls within the field of technology as opposed to business administration.

The outcome was surely foreseeable in advance of the filing of an appeal at either stage, and prompts the question much asked in the UK during WW II: "Was your journey really necessary?"

It is unfortunate that cases of this degree of weakness continue to come before the courts, because they discredit our profession in the eyes of judges and create a string of adverse precedents that undermine the prospects for cases of more positive merit.

I think the claim cited here is anticipated inter alia by the Wayne's World movie, in which the Rob Lowe character gets a customer (the sponsor) to buy a product (the rights to produce the Wayne's World show and have his name associated therewith) in exchange for appearing on the show (which said sponsor does, as Wayne makes fun of him without his realizing he's being ridiculed), resulting in the show being produced with the sponsor appearing in the show.

So dead under 102.

I agree, though, that this shouldn't have been shot down under 101.

Mr. Cole,

Please point to me the location (in the law as written by our Congress) this "field of TECHNOLOGY" requirement that you appear to be reading into the law.

The comments to this entry are closed.

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