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September 13, 2020


"[P]atent lawyers should ask the court to revisit and correct this misinterpretation."

I have no objection to requesting en banc reconsideration of cases decided on Enfish grounds to try to change circuit law on this point. I am dubious, however, that this is going to be a fruitful path toward improvement in §101 law. The more realistic path toward improvement runs through Congress, and therefore interested patent attorneys need to be thinking about what sorts of *compromises* are tolerable to get past the present §101 mess.

The last round of draft legislation on this point foundered when certain on the pro-reform side decided to make the good to be the enemy of the perfect, by insisting that the §112(f) reform proposed as the sweetener to the anti-reform side was unacceptable. The problem is that §101 reform legislation cannot succeed on the votes of §101 reformists alone. We need votes from reform skeptics, which means that we need to reach a compromise with the other side. That involves learning to control the temptation toward histrionics (the term "Trojan horse" got thrown around a lot last time to no particularly useful ends) and calmly consider where we on the pro-reform side can meet the anti-reformists halfway.

The notion that "compromise" is not only necessary, but should be aimed for is vile.

The far better 'compromise' would be to recognize exactly who is disrupting the attempts to fix 35 USC 101, recognize why they are attempting to disrupt a fix to 35 USC 101, and shine a bright spot light on their illicit attempts to continue down a path of Efficient Infringement and weakening of patents.

ANY - and I do mean any ancillary issues that may be legitimately put on the table can EASILY be done so once the eligibility issue is completed.

”The notion that "compromise" is not only necessary, but should be aimed for is vile.”

You are going to have a truly terrible day when you learn how laws get passed in a representative democracy.

When understanding the holding (actually the ratio decidendi) of a case, it is important to understand the material facts that generated the holding. And the material fact is that in both Bilski and Alice, the ineligible idea as "found" by the Court was not recited in any of the claims held ineligible, but rather was discerned (through a non-transparent process) of actually looking at the advance - what Judge Michel and Mr. Battaglia are calling a patentability question. Yes, it could also be a patentability question if ineligible subject matter that was newly discovered were treated as Section 102 prior art (and in both Alice and Bilski that was in fact the case), but the Court did not given eligibility weight to the combined elements of the claim's structural components but rather to the advance that those combined elements represented. That is what "directed to" means, because that is how the Court treated directed to in the binding precedents. So discussion of pre-Alice precedents that are inconsistent (particularly Diehr) is irrelevant, unless and until Alice is (at least impliedly) overruled. That said, it would be been much better if the Court actually said what is why doing, and why.

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