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« Conference & CLE Calendar | Main | Thryv, Inc. v. Click-to-Call Technologies, LP (2020) »

April 19, 2020


Good write up, Kevin.

It's refreshing to see at least SOME Federal Circuit judges are willing to try to limit inquiries that are properly the domain of 102/103 to analysis under...102/103. And disappointing that Judge Dyk still wants to conflate the 101 analysis with 102/103.

While the result here is encouraging, it is noted that none of the claims at issue were method claims. Do you think diagnostic *method* claims are still dead in the USA? To put it differently, could the claims at issue here have been written as method claims, not in Jepson format, and still survived 101 under current jurisprudence?

Readers may note that corresponding patents have been granted in China, Japan and Europe.

The European claim is quite specific and tied to factor DBR(n) as defined in a fairly complex equation. Even that, it would seem falls short of an adequate definition which can be found in the related US patent 7194300 which claims the corresponding method at claims 15-19 and possibly 20.

It is interesting to speculate on the ability of claim 22 of the present patent to withstand detailed scrutiny under 35 USC 112(f). The drawings are relatively superficial and the description is not over-burdened with detail.

However, the decision points in the direction of eligibility which is a welcome development.

Dear Atari: yes and no (meaning yes, diagnostic method claims are still dead in the US, and no, writing them in method format would likely have doomed these claims. Judge Dyk is just one of about half the Court that have abdicated their responsibility to push back on the Supreme Court

Thanks for the comment

There are of course more options as to conclusions to be drawn.


Separation of Powers (law being written from a policy perspective by the wrong branch of the government)

Void for Vagueness (the law being written is entirely reactive, a jumbled mess, and cannot be known a priori for any given set of facts - note as well that this is reflected in the fact that the jurisprudence MORE resembles a Gordian Knot than any sense of 'Common Law evolution down to a settled determination)

"Advisory Opinion" nature (noting how the Court in its own justification uses a projective, subjective, 'something bad MAY happen' rationale for ITS insertion of ITS policy)

There certainly is a tendency to "avoid the Constitutional question," but most often THAT type of approach works when non-Constitutional approaches are not only available, but RESOLVE the issues.

HERE, the issues ARE the actions of the Supreme Court and ARE Constitutionally driven.

The longer We (the Royal We) do NOT address this, the more problems will fester.

It is difficult to see why some people seem to think that a non-patent Court of Appeals would do any better in trying to define the undefined Sup. Ct. term "abstract?"

It is interesting to note the "bright line practice tip" concerning advantages.

In CIPA's brief to the Supreme Court in Ariosa,


it was argued that the panel opinion erred in discounting the new utility of the ordered combination of claimed elements considered as affirmative evidence of eligibility and, instead, erroneously concluded that the claimed method of detecting paternally inherited cffDNA is not new and useful, citing cases from Evans v Eaton, 20 US 356, 399 (1822) through Webster Loom Co. v. Higgins, 105 U.S. at 591 to KSR 550 U.S. at 416.

My personal brief to SCOTUS in the Recognicorp case


similarly argued that new and beneficial results should be considered under Alice to ensure that the test for eligibility under § 101 is no more severe than the test for nonobviousness under § 103.

It is gratifying to see that the arguments in these two briefs are beginning to gain at least some traction in the Federal Circuit.

Mr. Cole,

How in the world are you seeing "at least some traction" in the self-admitted (by that body) SELF-CONFLICTED and self-contradictory Federal Circuit?

There is NO steady movement to resolution.

There is (sadly) at best merely a ping-pong match going on.

ALL of your own brief writing has availed nothing. What does that tell you?

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