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« IPO Releases Resources for Retention and Advancement of Women in the Legal Profession | Main | USPTO Makes Ex Parte Jung an Informative Decision »

July 24, 2018

Comments

Naturally, I love Judge Plager's concurrence as much as anyone else around here, but I quibble at the disparagement of the majority opinion as "ho-hum." In terms of setting forth a clear and intelligible presentation of the § 101 analysis, Judge Chen's opinion really is surprisingly good. Much better than most of the "we know it when we see it, so don't worry your pretty little heads" pablum we get in the usual § 101 opinion.

Basically, what I take away is that instead of collapsing § 101 into § 103 (as looked likely to happen in the immediate wake of Mayo), § 101 has instead collapsed into § 112(a) (written description). This is still sub-optimal, but at least we know where we stand now. The CAFC is spending less and less effort in hiding the ball, and basically admitting that the new § 101 is just the old written description analysis. It is good to know this, even if---as a matter of statutory construction---it makes little sense.

Also, the court basically comes out and says (and Judge Plager has a good laugh about it) that step 1 and step 2 are really the same thing. Good for them. At least we have, at last, an honest explanation of what how the new § 101 analysis is *really* going to work.

Well, there IS another way out: in every 101 case that reaches them, the judges of the CAFC could cursorily say, "There is no 101 problem here", without further explanation, and then dispose of the case on 102/103/112 grounds, or if there are other outstanding issues under 102/103/112 (e.g. if they were raised in the pleadings below but not decided by the trial court), remand to the trial court for further proceedings.

But I don't expect the CAFC judges to do this.

@Greg:

This opinion collapses both 103 and 112 into 101. Here is a discusion of the prior art under prong one:

"As the district court aptly observed, this basic and longstanding practice can be found in, for example, a television station’s use of a breaking news ticker across the bottom of the screen. The court also pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the claimed invention."

But you are right in that the focus is on written description.

As I being one of those “other voices” have oft stated:

Void for Vagueness

To what extent could the claimed computer-readable medium fall within the "manufacture" category of Section 101?

Wearing my European hat, I would comment that all the allegedly novel features fall within the non-technical domain of business administration. Interestingly, however, corresponding EP-B-0888604 was granted with the following main claim which arguably has a somewhat more technical presentation:

A system for engaging the peripheral attention of a person in the vicinity of a display device of an apparatus, comprising:

a content display system (203a, 203b or 203c) associated with the display device, the content display system further comprising:

means for enabling a user to request the acquisition of a set of content data from a content providing system (202a, 202b or 202c);

means for receiving a set of content data;

means for receiving a set of instructions for enabling a display device to selectively display, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from a set of content data; and

means for using the display device to selectively display the image or images using a received set of instructions;

a content providing system (202a, 202b or 202c), separate from the content display system including means for providing a set of content data to the content display system;

means for providing to the content display system a set of instructions for enabling a display device to selectively display, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from a set of content data;

first communication means for enabling communication between the means for providing and the content display system; and

second communication means for enabling communication between the content providing system and the content display system.

During prosecution it was emphasized that the content providing system and the content display system were completely separate. No opposition was filed which is unfortunate since it would he interesting to know to what extent the claim could have survived a determined third-party attack. There is also a granted Japanese equivalent.

Another echo:

Judge Plager then makes an analogy between the notion of an inventive concept and similar "inventive requirements" that were eliminated from the § 103 obviousness inquiry by the 1952 Patent Act:

As a decisional construct for validation of a property right—a patent—the idea of a necessarily underlying 'inventive concept' proved unworkable. The concept provided no discernable boundaries for decision-making in specific cases, resulting in an incoherent legal rule that led to arbitrary outcomes. Judge Rich, who devoted his life to patent law, saw this clearly, and gave the Congress a workable alternative—nonobvious subject matter—which they adopted.

Those that truly understand patent law and its history have long noted the ultra vires nature of the Court acting as if Congress did not strip away the tool of common law development for "invention," and replaced that by carving out of the former single paragraph the new section of 103.

The modern day Court - much like the anti-patent Court of the 1930s and 1940s - needs to be held accountable to the limitations of that Court.

"Supreme" in name does NOT mean absolute supremacy.

@ Skeptical

At the time of his first inaugural, Abraham Lincoln was fresh from law practice in the firm of Lincoln & Herndon and judicial precedent is a matter on which he had daily and personal experience. Here is what he had to say on the Supreme Court:

"I do not forget the position assumed by some that constitutional questions are to be decided by the Supreme Court, nor do I deny that such decisions must be binding in any case upon the parties to a suit as to the object of that suit, while they are also entitled to very high respect and consideration in all parallel cases by all other departments of the Government. And while it is obviously possible that such decision may be erroneous in any given case, still the evil effect following it, being limited to that particular case, with the chance that it may be overruled and never become a precedent for other cases, can better be borne than could the evils of a different practice. At the same time, the candid citizen must confess that if the policy of the Government upon vital questions affecting the whole people is to be irrevocably fixed by decisions of the Supreme Court, the instant they are made in ordinary litigation between parties in personal actions the people will have ceased to be their own rulers, having to that extent practically resigned their Government into the hands of that eminent tribunal."

The attention paid to Supreme Court opinions nowadays goes far beyond what Abraham Lincoln would have considered reasonable. And people gold plate those decisions and give them an impact far beyond what the Justices intended.

Good argument and careful legal and factual presentation can achieve much, and as it is all we can do at the moment should be strenuously implemented in the cases with which we have to deal.

And by the way, we in Europe know precisely what an invention is. It is the solution to a technical problem. And the technical problem is a reconstruction based on the closest prior art, the difference from that prior art, and the new function or result that flows from that difference in the context of the combination of features claimed.

Echoing Groucho Marx, I have discovered the secret of success in patent law. The secret of success in patent law is new function or new result. If you can fake one of them, you've got it made.

Mr. Cole,

Please be aware of (and wary of NOT being aware of) the difference between "technical" and the Useful Arts.

A wanting to wear a European hat when looking at the US law of 101 will only guarantee that you are not looking at OUR law properly.

Mr. DeLassus makes a few comments that indicate that while he may have read the concurrence, he does not grasp the point of the concurrence.

To wit, and to the extent that Mr. DeLassus believes that some "final clear answer" has now been laid forth that all subsequent courts will follow, he is sadly mistaken.

The point of the concurrence is that NO such clear path will - even CAN - be found.

It is only "this time" that the court finds its path (as noted, a collapsed 103/112 path).

The point is that the NEXT adjudication may find some completely different path. There is NO "and this is how it is 'really' going to work."

Let alone the fact that 101 is NOT 103/112, this "method" of letting 101 "be" anything that any particular judge wants it to be is what is at the heart of both the concurrence and what HAS LONG BEEN NOTED by voices such as mine.

Mr. Cole,

To echo your point with that fantastic quote from Mr. Lincoln, I have long advocated that attorneys in EVERY** State have a sworn a duty to NOT place the Supreme Court ABOVE the Constitution.

Each - and every - branch of our government is below the Constitution and each branch is a branch of limited powers (along with having checks and balances). An attorney has a SWORN ETHICAL duty to fight a Supreme Court ruling that is not proper. We - even more than Mr. Lincoln's 'candid citizen' - must not resign our Government improperly into the hand of that eminent tribunal, as our nexus with the law creates a more pressing duty.

** the only arguable exception may rest in the attorney oath for the Commonwealth of Massachusetts which seems to call for attorneys to treat the Court merely as some 'favored client.'

"This opinion collapses both 103 and 112 into 101... [b]ut... the focus is on written description."

This is a good point. I would not wish to downplay the extent to which even this panel's opinion taints §101 with §103.

"[T]o the extent that Mr. DeLassus believes that some 'final clear answer' has now been laid forth that all subsequent courts will follow, he is sadly mistaken."

This is a very fair point. Judge Plager's concurrence rightly lampoons the way that §101 jurisprudence swings this way and that with each new panel. I would be delighted if other panels were to follow Judge Chen's opinion, not because I think his rule explication of the rule is particularly *sound* (either logically or as a matter of policy), but simply because it is at least clear and easy (or at least easier) to apply. Sadly, however, experience gives us little reason to endorse the hope that the majority opinion here will be honored by anyone other than these panelists.

"[I]f the policy of the Government upon vital questions affecting the whole people is to be irrevocably fixed by decisions of the Supreme Court, the instant they are made in ordinary litigation between parties in personal actions the people will have ceased to be their own rulers, having to that extent practically resigned their Government into the hands of that eminent tribunal."

This is a fine sentiment, and totally understandable in the immediate wake of the Dred Scott decision. If, however, we do not care for the idea that "the policy of the Government upon vital questions affecting the whole people is to be irrevocably fixed by decisions of the Supreme Court," how---in practice---is the contrary supposed to work?

In other words, presently it happens that any given portion of the constitution can have a variety of different interpretations, and if there is a question of which of those interpretations will be given acting legal effect, we pose the question to the Supreme Court and their interpretation becomes the legally actionable one. I take it that Pres. Lincoln (at least as of the time of that speech) did not care for this arrangement, but one way or the other, there has to be *some* way of deciding which of a variety of competing interpretations gets put into legal effect. If it is not the SCotUS who decides that question, then who, and how?

We really should note that there is a difference between interpretation and legislating from the bench.

I think that the take-away from President Lincoln is that every case before the Supreme Court is between specific parties in a specific situation, and that in that context its decisions should be analysed carefully and correctly and not gold-plated.

If you read Mayo and Alice they are much more careful and limited decisions than is generally appreciated.

A question for my US colleagues. Would the more specific claim granted by the EPO also have been thrown out by the CAFC?

And why was the fact of grant in Japan and Europe not pointed out with some force to the CAFC and discussed in its opinion? TRIPS compliance goes both ways, and as I have pointed out on a number of occasions the US in its 101 case law is NOT currently compliant with TRIPS, contrary to the Charming Betsy doctrine.

"A question for my US colleagues. Would the more specific claim granted by the EPO also have been thrown out by the CAFC?"

My expectation is that, yes, the EP claim that you quote would hold up in the U.S. There are a *lot* of means-plus-function limitations in that claim, which means that the claim would be confined to the embodiments disclosed in the application (and "variants" thereof).

This would make it very hard for *this panel* to look at the claim as an instance of claiming "attention management" in the abstract. Rather, I would expect that this panel would have looked at that claim, and concluded that it was claiming *one specific* solution to the problem of "attention management" (whatever that means).

"If you read Mayo and Alice they are much more careful and limited decisions than is generally appreciated."

This is definitely true of Alice. Mayo is a little less clear. After all, the proof of the pudding is in the eating. Mayo is susceptible of both an expansive reading and a narrow one. If the CAFC gives Mayo an expansive reading, then it has a broad holding. If the CAFC gives Mayo a narrow reading, then it has a narrow holding.

My take is that the CAFC started out giving Mayo a narrow read (as when they immediately re-validated their first Myriad holding following the post-Mayo GVR), then they started giving Mayo a much broader reading in the immediate wake of Alice, and now they are starting to trim it back to a narrower reading again. The trendline seems to be moving in the right direction, albeit slowly and fitfully.

"I have pointed out on a number of occasions the US in its 101 case law is NOT currently compliant with TRIPS, contrary to the Charming Betsy doctrine."

And may God bless you for it. I think that you are 100% correct on this point. I also think that a WTO suit against the U.S. for our TRIPS non-compliance is the surest means by which the Congress might be moved to correct the situation. Here's hoping that your regular reminders on this point bear good fruit in time.

"[T]here is a difference between interpretation and legislating from the bench."

Indeed? Who makes that determination, and how does one recognize the one from the other?

DeLassus - your last question appears to be Tr011ing.

I will let you think about just why.

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