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July 19, 2018


I find the spin on this article to be very heavy towards the views of the Reyna dissent, and while there is an abundance of “proper legal points,” there is also an bundance of assumed conclusions that do not reflect a proper legal understanding.

Let me also quickly add that there are factual predicates in Step 1 as well as the HEIGHTENED (and necessary) factual predicates if THE OFFICE is going to use what is basically official notice as to a state of the art (what is it is not conventional).

And let’s also remind all that the Office use of Official Notice is itself constrained in that (explicitly) Official Notice may NOT be used for “state of the art” determinations, which means that any time that the Office wants to rely on “conventional,” they MUST provide proper evidentiary support. In other words, the Office Berkheimer memo contains a serious flaw. The flaw is attempted to be “sidestepped” in that the memo also includes the direction that “if challenged,” examiners must comply with providing the proper evidentiary basis - but such “if challenged,” should be an affirmative first step and allows for a trap for the unwary who may not understand that ANY TIME conventionality is used, and used without proper evidentiary support, a challenge should be not only immediate, but the action of the Office that does attempt such a move is necessarily incomplete - thereby making it improper for the next action to be made Final.

Once the pattern of such proper challenges are established, I fully expect the Office to retreat to a more legally defensible position.

Re "whether performing Step 2 of the Mayo/Alice test can require a factual inquiry ... could make patent litigation much more complicated and expensive."
Presumably somewhat, up front, in the relatively small % of all patent suits in which 101 is seriously asserted and this issue is contested. But if successful, not nearly as complicated and expensive as allowing the case to proceed through all other discovery, trial preparation and trial.

Whether claim limitations involve more than performance of "well-understood, routine, [or] conventional activities previously known to the industry" is intrinsically a fact-based enquiry. Sometimes the answer may be clear e.g. from admissions in the patent specification or matters that very clearly form part of the common general knowledge. In that case the court may proceed straightforwardly under the illusion that it is applying law, but with a hard reality underpinninning of found fact. In Berkheimer situations, the facts are disputable, and procedures to get at the true position are essential.

Skeptical's analysis here appears both correct and appropriate.

It is not a surprising development. Hopefully it will increase complaints about defects in 35 USC 101 and may hasten revision of 35 USC 101 to sensibly protect the US economy that needs more patents not less.
Patent prosecutors may be upset but I doubt patent litigators will really care how much of a financial burden this new development costs their prosperous clients.

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