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« Express Mobile, Inc. v. Code and Theory LLC (N.D. Cal. 2019) | Main | Sanofi Mature IP v. Mylan Laboratories Ltd. (Fed. Cir. 2019) »

February 26, 2019

Comments

"The opinion also notes that both the federal Circuit's own precedent and that of the Supreme Court had long recognized that § 101 was a "condition for patentability" along with § 102 and § 103."

Hey Kevin,

May be "long recognized," but as Professor Hrick correctly observes, a misinterpretation of the patent statutes, especially by SCOTUS. The Graham decision cited to is full of problematical statements and questionable historical research by SCOTUS about the patent statutes and the Patent Clause as Professor Mossoff has also correctly observed. That SCOTUS continues to repeat this error and that the Federal Circuit meekly complies doesn't make it right, only a Rule of Judicial Fiat.

This poorly constrained decision as to 101 fails to drive home J. Moore's point in Digitech where she said:

“if your claims were to a formula for digital image processing, namely take the image on the front end, modify it in a device independent way, output it and you’ll have a better quality, that’s a whole different ballpark, that’s like a manufacturing process. Your claims aren’t directed to that at all. Your claims are directed to only the data that’s going to be used within that process.”

The oral argument in UF v GE finds the Fed Cir drawing a comparison to a child setting the table. With 101 "abstract idea" being "a matter of law", who cares about the PHOSITA; rather we have: "I know an abstract idea when I see one" (with analogy to tasks performed by a child).

J. Moore needs to make clear the DISTINCTION between her words in Digitech and those in UF v GE (especially as to "in a device independent way"). She lost an opportunity to clarify the muddy waters. Digital image processing claims will remain uncertain, i.e., "in the dark", when it comes to 101. Thank you Fed Cir!

"Legal creativity in argument is the lifeblood of the litigator's craft..."

Yes, to give credit where due, this was at least a creative appellate strategy. I thought it was just as hopeless as it eventually proved when I listened to the oral argument, but even then I thought to myself "points for creativity." They had a set of claims that stood no hope of surviving Alice scrutiny, so instead of trying to address the Alice merits, they tried to turn this into a sovereign immunity issue.

The XI amendment argument went about a dozen miles past the farthest reaches that the SCotUS has ever acknowledged for XI amendment immunity. There was no way that a mere *lawyer* could convince the CAFC to push XI amendment immunity out that far. Such work would require a hypnotist ("... when you hear the word 'Constantinople,' you will write a precedential opinion saying that subject matter ineligibility is not an affirmative defense to patent infringement, but is rather a non-compulsory counterclaim...").

Still and all, this effort was at least *creative*...

Greg's notion that "you will write a precedential opinion saying that subject matter ineligibility is not an affirmative defense to patent infringement, but is rather a non-compulsory counterclaim" comes completely out of the blue with no tether to any prior position is simply incredulous.

As Greg is a regular over at Patently-O, and there is an entire section of that blog run by Prof. Hricik, and within that section, there have been MANY detailed arguments directly on point, Greg's view here comes across more than a bit disingenuous.

And I will note, that I share this NOT because I agree with Prof. Hricik. Quite in fact, I do not, and I have provided detailed counter points in dialogue with Prof. Hricik (rather than, as Greg has now done across multiple forums, dismissed out of hand positions that deserve at least a cogent reply).

"Greg's notion that "you will write a precedential opinion saying that subject matter ineligibility is not an affirmative defense to patent infringement, but is rather a non-compulsory counterclaim" comes completely out of the blue with no tether to any prior position..."

Not so. This was actually an argument that Univ of Florida made at oral arguments. I encourage folks to listen to the oral arguments for this case. They were wild.

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2018-1284.mp3

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