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« Guest Post -- A Cautionary Note to the PTAB | Main | Spineology, Inc. v. Wright Medical Technology, Inc. (Fed. Cir. 2018) »

December 17, 2018

Comments

Thanks for publishing substantive practical advice on overcoming Alice [101] abstraction rejections. [Much more constructive than the many ineffective personal rants against Sup. Ct. decisions.]

Impact of Core Wireless Licensing SARL v. LG Electronics Inc., 880F.3d 1356 (2018)….?

@skeptical

Core Wireless is about improved user interfaces, where the improvement is to overcome some physical limitation (e.g., small screens). Applicable to the "displaying data" aspects of this case, but only if your invention is analogous.

@paul

When the Supreme Court decision is objectively obtuse, a rant or two is perhaps warranted.

Michael, rants are fine in their place. My objections to mere personal rants against Sup. decisions on a legal educational blog is that they confuse lay readers when presented as if they were legally relevant, and they discourage readers from wading through them in hopes of finding actually useful information.

Paul,

I agree with Michael-perhaps even more than "a rant or two is" is warranted with respect to SCOTUS. Their nonsensical and broken Mayo/Alice framework is unworkable, leading to multitudes of Federal Circuit panel decisions for which the "rhyme or reason" is unfathomable and purely subjective. I could do better with a Ouija board than trying to apply this unworkable framework.

I have repeatedly argued that the four statutory eligible categories and the three judicially identified ineligible categories comprise two non-intersecting sets. Any suggestion otherwise involves judicial re-writing of statute and raises issues of the separation of powers.

A simpler and more straightforward expression of this principle which may be more immediately and directly useful follows. Claimed subject matter cannot both fall as a matter of substance (as opposed to mere outward presentation) within an eligible category and also fall into an ineligible category.

The remedy to much difficulty is therefore straightforward. Claims should be drafted so that they fall as clearly and straightforwardly as possible into one of the four eligible categories. Judicial authority for each of the four categories is summarised in the relevant section of MPEP.

In the event of objection either before the USPTO or before a court, the fact of positive compliance with an eligible category can be identified, and the reasons can be explained. It is notable that few of the CAFC or district court decisions that I have read have yet dealt with the issue of positive compliance. However, any lawyer who when construing or applying a statute fails to consider the positive provisions and only considers the exceptions would deserve a failing grade in any law school of any university where the Common Law is taught.

This kind of positive action which is within the power of all of us in our profession is a much better solution than vain ranting.

Mr. Morgan,

Your desire to "poo-poo" ANY meaningful discussion on Constitutional issues has been noted, given that you constantly snipe from the sidelines and never actually engage on the merits of Constitutional issues presented.

It is more than a bit disingenuous for you to presume confusion, irrelevancy, or discouragement when you yourself do more to confuse, to be irrelevant and discourage discussion (which SHOULD occur on a legal educational blog).

Please stop trying so very hard to NOT have the legal discussions that should be had.

Mr. Cole,

Your expressed views simply do not accord with the words of the Court itself.

It is the Court that has point blank stated that items squarely within the statutory categories NONETHELESS "really are directed to" something else. Even in the Alice case, BOTH SIDES stipulated to certain claims fully being within proper statutory categories (which would have removed the "present case or controversy" predicate for the Court's legal authority under your supposition -- more than merely the Constitutional issue of separation of powers is in play here).

Your desired "positive action" is not sufficient to overcome the reality with which we must necessarily face: the scoreboard IS broken.

"[T]he four statutory eligible categories and the three judicially identified ineligible categories comprise two non-intersecting sets. Any suggestion otherwise involves judicial re-writing of statute and raises issues of the separation of powers."

I agree that it makes more sense to understand the "exceptions" as being implicit in the statutory language. I also agree that any other understanding of the exceptions raises separation of powers issues.

That said, the Supreme Court is fairly clear that It does *not* regard the "exceptions" as being an outgrowth of the statutory language. Rather, It regards the exceptions as something that It has layered on top of the statutory language. See, e.g., Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) ("The Court's precedents provide three specific exceptions to § 101's broad patent-eligibility principles... ***While these exceptions are not required by the statutory text***, they... have defined the reach of the statute as a matter of statutory stare decisis going back 150 years," emphasis added). It is regrettable but nonetheless undeniable that the Court simply shrugs off the obvious separation of powers problem inherent in this view of the exceptions. That is why, it seems to me, the only resolution of this problem is *not only* to amend the statute to revise the exceptions, but *also* to remove patent appeals from the Court's certiorari jurisdiction. So long as the Court retains jurisdiction over patent appeals, It will simply lard Its version of the exceptions back into the statute, no matter how clearly the Congress amends the statute to trim the exceptions back.

"It is notable that few of the CAFC or district court decisions that I have read have yet dealt with the issue of positive compliance."

Indeed, this is noteworthy. I can think of *only* two cases of recent vintage (In re Nuijten,500 F.3d 1346 (Fed. Cir. 2007) and In re Wang, No. 2017-1827 (Fed. Cir. 20 Jun 2018, non-precedential)) that actually engage with the statutory categories---rather than the "judicial exception" categories---when assessing §101 compliance.

"Indeed, this is noteworthy. I can think of *only* two cases of recent vintage (In re Nuijten,500 F.3d 1346 (Fed. Cir. 2007) [_] that actually engage with the statutory categories---"

And the In re Nuitjen case was hopelessly MIS-decided from a purely factual point of view.

The universe simply does not exist according to how that case was decided.

Electric Power Group: “Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003)."

From a read of those cases one may uncover hints at the real intent of the EPG decision, which overlooks technological fact and precedential case law as to "data" such as "sensor data". EPG is an EXPEDIENT that gives the Fed Cir's handlers what they want, a weak patent system.

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