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May 03, 2021


Flash prediction: nothing good will come of this.

(yeah, that's like shooting fish in a barrel).

Would LOVE to be wrong on this particular flash prediction, though.

Very sadly, I can think of many substantially more meritorious cases that could have gone to the Supreme Court, Recognicorp in which I wrote an amicus brief being one of them.

Judge Dyk, writing for the majority of the panel, concluded: "Thus, the problem is that the claims’ instruction to tune a liner essentially amounts to the sort of directive prohibited by the Supreme Court in Mayo — i.e. “simply stat[ing] a law of nature while adding the words ‘apply it.’” and subsequently "What is missing is any physical structure or steps for achieving the claimed result of damping two different types of vibrations. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work."

Those who trouble to download and read the specification of the application will note its quite startling deficiency of disclosure and will be puzzled why the Examiner did not raise issues under 35 USC 112(f) since the functional language "tuning" and "positioning" is not supported by any detailed description of the process steps involved and corresponding arguments have been raised against the equivalent European application on the ground of lack of clarity, Article 84 EPC.

It is distressing that a patent which in my opinion has been so poorly and incompletely drafted is going before the Supreme Court and representing our profession. If certiorari is eventually granted, it is difficult to see any good coming from it. I find myself in agreement with Skeptical here.

The SCotUS has called for SG input on these subject matter eligibility cases before, and nothing has come of it. Better cases than this have been denied cert. I am skeptical that anything will happen here. In the end, cert. will be denied just as it was denied in Sequenom, and RecogniCorp, and Vanda, and Berkheimer, etc.

I would assume the main reason for the ask was just that it's a new admin and they want (1) to give Biden's OSG an initial chance to weigh in and (2) to see if (1) differs in any meaningful way from the position held by the previous admin.

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