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« Novartis AG v. Ezra Ventures LLC (Fed. Cir. 2018) | Main | Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc. (Fed. Cir. 2018) »

December 10, 2018


"But the District Court's reliance on a USPTO warning (not an actual USPTO decision or rejection, but just a warning) may be extreme."

Hey Michael,

An understatement, especially given that SCOTUS refuses to define what it means by "abstract idea," leaving all of us "mere mortals" to flounder as how to apply the nonsensical, broken, and unworkable Mayo/Alice framework.

I just wanted to comment to say thanks for taking the time and effort to consistently provide such excellent posts.

It's a common trap: discretion undertaken without detailed explanation is acceptable, and taken broadly by the parties, while specific exploration of balancing factors narrows the acceptable scope of discretion to the merits or demerits of those individual factors; assuming the decision turns only on the factors elucidated. Only the judge knows how much weight he gave the non-binding opinion- or much more accurately a non-procedural bit of advice from a non Article III forum.

Also, PS;

An abstract invention is not the same thing as an abstract claim.

An abstract invention is an eligibility problem. An abstract claim is a patentability problem.

All information is intangible, but some information is not abstract.

Information consumed by human beings is always abstract. Without a human being, there can be no abstraction.

Information inventions where the utility of the invention arises by non human consumption of information should be eligible inventions.

Abstract claims mean the claims are too abstracted from the invention, and thus do not encompass any particular invention. This abstraction can arise from obviousness, failure to demonstrate complete grasp of the invention, or the use of components in their designed capacity to produce variations, not innovations.

What did I miss?

Nice Post.

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