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April 20, 2021


Ironically, of course, only the Supreme Court could achieve the dubious outcome you posit. Which may mean that the LAST thing we want to see happen is this Court to grant cert in American Axle or any other case before Congress acts to clarify the meaning of the statute. Accordingly we should not hold our breath for this situation to be rectified.

Hi - See my article "Nothing is Patentable" - where I cover this Diehr and many other patents. https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2642361

Mike: Yes, can we now clearly state and accept (what SCOTUS apparently cannot state explicitly) that Diehr impliedly overruled Flook, and that Mayo/Alice have now impliedly overruled Diehr. So the law is Alice, not Diehr, and was Diehr only after Flook (I'll leave the discussion of earlier history to another time). And it will remain that way unless Congress or the Court (again) reverses the course. Whether it should I'll leave for a different discussion.

You mention that Alice was "spun" to not contradict Diehr.

Even more "spin" was applied in the Mayo case - and the contrast there is even more stark.

Not only *could* Alice be used to overturn Diehr, Alice *has* been used to overturn Diehr. This has already happened.

This is hardly a secret. Judge Lourie noted as much during oral arguments a few years ago.

Justice Rehnquist piously affirmed in his Diehr opinion that Diehr was not overturning Flook sub silentio, but Justice Stevens (the author of the Flook opinion) was not fooled. He wrote a scathing dissent in Diehr walking through how Diehr should have turned out if the Flook rule had actually been employed.

As it happens, I like Diehr and I do not like Flook, so I was happy to see Justice Rehnquist's little slight of hand come off. Still and all, I was not fooled. Justice Stevens' dissent in Diehr had the right of it---the Diehr rule constituted an overturning of the Flook rule, even if it was not honest enough to come out and say so.

Unfortunately for us all, Justice Breyer took note of this little bit of ju-jitsu and turned it back on us all in Mayo. He piously intoned that he was not overturning Diehr, even as the Mayo rule effectively achieved as much. And what could we on the Diehr side do about that, but stand and gape? After all, our side had done the same to Flook, and if Diehr can say that its holding is fully consistent with Flook, then when Mayo reinstates the Flook rule, it is not possible to say that the new rule is not also fully consistent with Diehr.

Justice Breyer has done unto Rehnquist just as Rehnquist had done unto Stevens. Diehr is---for all intents and purposes---a dead letter *for the moment*.

The good news is that the pendulum swings one way, and then it swings back. *Eventually* either the Court or the Congress is going to reinstate the Diehr rule. Who knows, maybe American Axle will be the vehicle by which this happens (I am skeptical of that, but I would be delighted were it to come to pass). For the moment, however, one really has to be a fool to cite Diehr as the precedent that saves one's claim. Diehr has no juice right now.

I note that example 25 of the PTO's patent eligibility examples analyzes the Diehr claim and finds it eligible. Not that that matters to the courts...

Mr. Feigelson,

That is no surprise as the courts have even rejected USPTO examples PRIOR TO the 2019 Patent Eligibility Guidance from Iancu.

See Cleveland Clinic.

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