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« Life Sciences Court Report | Main | FDA Continues to Approve Biosimilars »

February 17, 2020

Comments

This proposal seems a fine idea and a fair compromise. I will note, however, that the actual substantive effect of this language is the same as the Coon/Tillis draft's amendment to §112(f). As between redefining infringement in §271 and altering claim construction in §112 to achieve this outcome, I have a slight preference for the §112 approach. Still and all, if it were to prove possible to achieve consensus behind the §271 approach and not the §112 approach, I would hate to make the good to be the enemy of the better.

A true "Step by Step" approach would be to fix 101 WITHOUT taking within the city walls the Trojan horse fabricated by those who really DO NOT WANT to fix 101.

Thanks, Greg. The basis of the suggestion is to avoid ambiguity. While the 112(f) proposal may get us to the same place, this is a limitation on liability. Seems more straightforward.

skeptical: politics is the art of the possible. It isn’t a Trojan horse; it’s calling their bluff and take away their rhetoric

Dr. Noonan, respectfully, there IS a Trojan horse that has been presented.

So while I certainly espouse a path of bluff calling and taking away rhetoric, I do not espouse a path of ignoring that certain parties have come to the table of reform with the sole purpose of BLOCKING reform.

An adage from my Uncle Ben (granted, not his most famous adage): It is good to have an open mind, but it is not good to have such an open mind that your brain falls out.

skeptical: we will never change their minds, but neither can we ignore them and their political clout. All we can do is present them with everything their hearts desire, and then let them explain why it isn't good enough. In addition to losing all credibility they put legislators in a bad position if they try to accommodate their unreasonableness.

"politics is the art of the possible. It isn’t a Trojan horse"

Exactly. Complaining of "Trojan horses" is a great way to ensure that the status quo persists indefinitely. Compromise is necessary to achieve reform, and it is hard to think of another compromise that will move the ball forward beside the limitation-on-functional-claiming compromise.

Anyone who purports to support legislative reform but considers the limitation-on-functional-claiming compromise to be unacceptable should be offering an alternative trade that s/he thinks would be plausibly enticing to the opponents of reform. If you do not have a plausible alternative to this compromise, then you are really an opponent of legislative reform, even if you want to think of yourself as a proponent of reform.

Mr. DeLassus,

Respectfully, yours is the very worst of advice.

It is NOT merely "complaining of" -- but the full force and weight of realization that such ARE present that you (the Royal you, since the personal you really would rather turn blinders on) need to take into account.

Here is the alternative:
Fix one thing at a time, and STOP trying to allow those who would fix NOTHING to demand that EVERYTHING need be fixed at the same time.

Another perspective shared on another forum is that this amounts to betraying small startups in the high tech space in favor of Big Tech. There is some validity to that position, which I agree is unfortunate. But to me (my bias is showing, or perhaps my age and the prospective increased need for inventions in the biotech/pharma space) I am less interested in the protecting the next gadget and more concerned about diagnostic methods and personalized medicine.

My proposal is hardly perfect, and perhaps there could be a carve-out for small or micro-entities, or some other accommodation much like Section 287(c) had for biotechnology methods. But the post intended to get conversation around the issue, which is stalemated where it is now.

"Another perspective shared on another forum is that this amounts to betraying small startups in the high tech space in favor of Big Tech."

How so? The position of small software startups would be no worse under your proposal than currently. One can draft around the "structural component corresponding to that function that is expressly disclosed in the patent specification" by simply larding the specification with every known structure. It is unwieldy, but not actually all that difficult. Moreover, after one has drafted a few of these apps, there will be a chunk of text that can just be copied and pasted going forward, so it will not even run up the billable hour costs all that much in the long run. The problems engendered by "structural component corresponding to that function that is expressly disclosed in the patent specification" will be much easier to overcome than the problems engendered by Mayo/Alice.

The *startups* themselves might actually welcome the change that you propose. Anything that removes the §101 obstacle is good for them.

The *lawyers* who draft patents for these startups probably dislike the idea of having to think hard and draft well. Functional language covers a multitude of sins. It is harder to see which lawyers know their stuff and which are mere poseurs when one is allowed to omit description of structure. The statutory change that you propose would quickly highlight the distinctions between the talented and the talentless, and the talentless will not like that.

Nevertheless, the *lawyers* are not the *startups*. The proposal is good for startups, whether or not it suits the lawyers.

Dr. Noonan,

Thank you for your last post, with your candor about a possible bias that you have.

It is somewhat rare for that type of admission to be made, and I appreciate that frankness.

As for me, my view is NOT segregated along any one particular line of innovation, and my views run at a different level of protecting innovation in and of itself - no matter the current form of that innovation.

Perhaps THIS is 'my bias,' having in my much younger days a minor in the history of science and technology....

(Another of Uncle Ben's adages come to mind: Divide and Conquer)

Thanks, Greg. My statement was as close to a quote as I could get (without the false calumny that my position was based on client interests, amusingly implied to be Big Tech companies).

Kevin-
Interesting idea, but let's recall the actual outcome of Dr. Pallin's '111 patent: The district court held it invalid as obvious. Thus, Senator Frist might have been correct, but for the wrong reason: "Innovations" that would have been obvious, such as Dr. Pallin's, in any technical area, "do not require the midwifery of patent law." That's the functional role of obviousness (so often noted by the Supreme Court): advances that an ordinary artisan would have made in absence of the patent incentive are unpatentable. The new tests-upon-tests under Section 101, and the now decades-long trend of industry-specific carve-outs (such as Section 287) might help, but they certainly look awkward when compared to the elegance of Section 103.

It should be self evident that such a suggestion as:

“ One can draft around the "structural component corresponding to that function that is expressly disclosed in the patent specification" by simply larding the specification with every known structure. “

is clearly NOT any type of meaningful attempt at “compromise” — if only “larding up” is precisely NOT what patent specifications are meant to do, and you immediately fall into the DOUBLE trap of having to repeat any AND EVERY thing already known (and heaven forbid if you happen to miss one) AND the “larding” and ensuing “bloat” will — without a doubt — bring about charges that the applicant is trying to hide the ‘real’ invention.

This is nothing more than the very BAD idea that “is ok” in Mr. DeLassus’s view, as he has been known to throw computing art innovations under the bus in exchange for his known proclivity for Pharma protection.

Of course, the other trap (ignored by Mr. DeLassus) is that it will NOT be just the computing arts subjected to the massive bloat effects, but will be MOST ALL non-Pharma innovations that happen to tend to use words sounding in function in their claim elements.

If this be “compromise,” then “compromise” be DAMMED.

This would not be “the perfect” getting in the way of “the good;” this would be “the truly awful” getting in the way of the “good for Pharma.”

Joe: it is rare that the law gets someone as erudite, elegant, and clever as Giles Sutherland Rich. Yes, the current foolishness just burnishes his legacy even more than it already has been, but while I think the strategies that he employed (not directly challenging the Supreme Court's "invention" jurisprudence but crafting a statute that convinced the Court (against all reason except face-saving) that Congress had just codified what they had been saying all along) are sadly not as available to us on the Section 101 question. But unless the dam breaks we will be continuing this almost Blackstonian explication of eligibility law for the foreseeable future, to all of our detriment.

Thanks for the comment.

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