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« Conference & CLE Calendar | Main | Hyper Search LLC v. Facebook Inc. (D. Del. 2018) »

May 19, 2019


Even though the Examiner allowed the '755 Patent despite four separate § 101 rejections, the Court still found that the USPTO's decision to grant the patent does not relieve the patent holder from making an independent evaluation of the strength of the patent prior to suing. The Court stated that the "issuance of a patent cannot and should not be a license to sue with abandon." The Court further noted that patent examiners are non-lawyers, and an Examiner's opinion on the legal question of patent eligibility does not relieve a patent attorney from his or her obligation to make an independent assessment based on an evaluation of the relevant law.

Someone please remind Judge Andrews that the PERTINENT Rule of Law (regardless of whether or not an examiner is an attorney) is set by Congress at:

35 U.S.C. 282 (a) IN GENERAL.—A patent shall be presumed valid.

This is a "SHALL" which overrides the feelings of the Judge.

"I believe I am a reasonable patent attorney with an understanding of § 101 law... ."

Perhaps this just goes without saying, but you are leagues ahead of me if you really do understand §101 law. I like to think of myself as also being a "reasonable patent attorney," but it has been years since the judicial outworkings of §101 have made any sense to me.

The point expressed by Mr. DeLassus may be more stridently put as the Court (and courts, and the Patent Office up to the point of the new “Off Ramps” protocol) were “in the business” of RE-writing 35 USC 101 by way of Common Law evolution, but in doing so had created such a mish-mash of ping-pong decisions that the state of the law is a veritable Gordian Knot, and what any (all) additional court decisions are doing is merely adding more rope to that knotted ball.

It is past time to apply some Scissors to that Knot.

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