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« Conference & CLE Calendar | Main | Broad Opposes CVC's Motion to Exclude Evidence and CVC Files Reply »

June 13, 2021


Michael, for me that's a first class tutorial on how the USA got to where it is now, on eligibility. Thank you. I hope you get as a reward a nice long thread of high quality comments.

In Europe, where I am, eligibility is covered by Art 52 of the EPC. There has been a passionate argument between those who advocate the "technical contribution" approach of the English courts and those who prefer the "technical character" approach on which the EPO has now settled. So I get feelings of deja vu when observing the Yu/Apple argy-bargy in the USA and I am driven to suspect that legal thought leaders in the USA (apart from Pauline Newman) are influenced by the English judges but not at all by the established case law of the Boards of Appeal of the EPO. Or is it that no price is too high to pay, swiftly to get rid of bad patents in summary proceedings and thereby finesse out of getting sucked in to full-blown and inordinately lengthy and expensive disputed proceedings over the validity of any given duly issued claim?

Perhaps the courts think that patent attorneys and their clients are authors of their own misfortune, in claiming more than that to which they can legitimately lay claim. I wonder, is it that which leaves Prost, Taranto & Co with a clear conscience, when they summarily dispose of claims like Yu's? Should patent attorneys stop grumbling and instead learn to draft better, or at least be more realistic when choosing which claims to assert?

The penal, er, panel decision is a travesty. It's a camera. You can pick it up. A five-year-old understands that it's tangible, not abstract. Find the claims invalid under 102, 103 or 112, if that's appropriate. But not 101.

Prost and Taranto should be put out to pasture. Especially as they've shown that after all these years, they still haven't figured out that they collectively don't know a tenth of Judge Newman's understanding of patent law, yet they still have the audacity to disagree with her.

The phrase "Put another way, if you can drop it on your foot, it is not an abstract idea."

does NOT survive even Alice

- as claims in that case (taken as fact by both parties, and thus NOT something that the Court could even change if it wanted to) WERE to things that one could "drop it on your foot," but nonetheless were also deemed "abstract" (even as that term was deigned not needing to be actually defined by the Court).

I WILL take issue though as to where the blame must (predominantly) fall for the Gordian Knot - and that is NOT with the CAFC.

That blame is to the Supreme Court, as both the source and the body that COULD (if they so desire and it is clear that they do not with the number of denied certs) fix what they have unleashed.

Certainly, the CAFC has been busy adding rope to the Gordian Knot, but it is the Supreme Court that both started that knot, 'promoted' that knot, and refuse to cut through that knot.

By way of a bit of self-promotion, I have also provided a mechanism by which the Supremes could quite easily fashion an implement to cut that knot: The Kavanaugh Scissors.

For some reason, while reading this, the lyrics "How did we get here?" by way of the Talking Heads popped into my head.

For some reason I have harbored the apparently naive idea, as one of those who practice in the mechanical arts, that I was (kinda) safe from this nonsense.

Mr. Courtright,

If I may be so bold, may I reference Niemöller:


If SCOTUS fails to reverse the CAFC in either American Axle or this case, then I fail to see how Congress will be able to avoid overruling Alice via legislation for much longer.

The exception is truly swallowing up all of patent law.

An excellent commentary - thank you!

As an EPO attorney I am biased of course, but I can't help thinking that this is an issue on which the EPO have found the right (ahem) solution to the problem.

American Axle struck me as the right decision for the wrong reasons, and this decision seems like more of the same - the claim was probably bad for obviousness, but... this? The more I read it, the more confused I become.

What is going on? Do you see any prospect of this unpredictability and confusion being sorted out any time soon?

Sorry to bombard you with questions but...

Reading the specification of US6611289 I am struck by the fact that all of the specific embodiments recite four monochromatic image sensors, and explain that the advantages provided by the invention arise from this arrangement. The majority also seem to have "focussed" on this issue too.

Do you see any possibility that the result might have been different if the specification had explained a problem solved (technical effect achieved) by something corresponding in scope to the claim? Namely something with a monochromatic image sensor and any other image sensor.

I ask because, having read the patent I think the EPO might have alleged that the technical effect achieved by the invention was only achieved in the case where one of the image sensors was monochromatic and the other had a filter, and to the extent the claim was broader than this then it achieved no effect. At the EPO this could, in my view, have been dealt with ordinarily under Article 56 EPC as an argument for obviousness. It would not have been an excluded subject matter point.

The reason I am interested in this particular tangent is that the recent Enlarged Board decision from the EPO https://www.epo.org/law-practice/case-law-appeals/pdf/g190001ex1.pdf spent some considerable time discussing the question of technical effects which might not occur across the entire scope of a claim - which seems relevant to me

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