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August 10, 2021


How does this analysis apply to American Axle or Apple v Yu?

They both lacked specificity and enough distinction from the prior art. Or at least that is what the panels decided. Both outcomes are debatable. The point of the article is to try to explain what the courts are looking for. That doesn't necessarily mean that the outcomes from the Courts' processes are ideal.

Excellent article (of which, I am not yet done digesting) -- but there is one augmentation that I would add:

The Bahr Step Zero Memorandum of May 4, 2016.

That Bahr Step Zero Memorandum dictates just how the use of facts asserted by the Office in evaluating the Graham Factors have a carry-over effect on the eligibility examination protocol.

It is worth noting that factual assertions by the Office are binding on the Office as matters of fact (regardless as to what further legal arguments these admissions may be applied to).

So, in regards to the use of Graham Factors for a 101 point of law, per that Step Zero Memorandum, the Office procedure for examining for subject matter eligibility starts with a “Step Zero” and a factual assertion made by the Office in its application of the Graham Factors is binding on the Office regardless of any differing legal arguments to which the factual assertion may be applied, to quote:

“After determining what the applicant invented and establishing the broadest reasonable interpretation of the claimed invention, the eligibility of each claim should be evaluated as a whole using the two-step analysis detailed in the Interim Eligibility Guidance.”

Whenever the Office starts into a "broadest reasonable interpretation," one MUST remember just what controls the 'reasoning' of what is reasonable.

Mike and Ashley, nice writeup. But you failed to mention that Diehr implicitly overruled Flook 3 years later with a change to the Court's membership, and that it is not at all clear that Diehr rather than Flook is the correct way to analyze 101 issues after the 1952 Act (not really changed by the AIA). And of course, Diehr isn't the correct approach under the current Bilski/Myriad/Mayo/Alice framework. If people would just recognize that the "other inventive concept" (Flook's language) is to be determined by reference to an even novel discovered but excluded subject (science, nature, abstract ideas), the law would become much clearer (and its application less inconsistent). But they keep trying to resurrect Diehr notwithstanding its implied repeal by Bilski, Mayo and Alice. They (and it appears that you) need to get over it, or convince SCOTUS or Congress to do so. :-) Best, Josh

The idea that Diehr has been over-ruled was EXPRESSLY rejected by the members of the Court that were doing as Pro. Sarnoff implies.

And this follows the EXPRESED fact that Bilski reinforced that Diehr had cabined Flook and Benson.

The real view is that the Court chose NOT to state that ANY of their rulings are in conflict with any other of their rulings - which is a falsehood.

We are left with a Gordian Knot in which plainly contradictory views are each left 'intact'

We ALL need a pair of Kavanaugh Scissors to cut that knot.

What we all need to get over is any notion that the Court cares at all about doctrinal considerations in patent law. Due in part to their (relative) lack of experience (compared with almost any other substantive area of the law how many Supreme Court patent law decisions have there been?) and because their decisions are always outcome-determinative, bending the law to reach the "right" outcome, unless Congress takes patent law jurisdiction from the Court we will always be in this situation. We all need to remember the Court is very fond of "totality of the circumstances" tests, which provide the most judicial (and subjective) flexibility to almost any analysis. Members of the Court (for example, Justice Stephens) have not only more experience with but a greater affinity to antitrust law (it isn't a coincidence that the Court always speaks of the patent "monopoly") so restricting patent rights comes naturally.

The real problem is that the Federal Circuit has not challenged the Court's decisions by distinguishing them (something we ask law students to learn to do), which would force the Court to address the consequences of their decisions (as in Sequenom). Until they do expect no change.

"[T]he two prongs of the Alice test have been, in practice, unceremoniously yet effectively collapsed into a single prong."

Definitely. One could imagine a legal regime in which the two prongs speak to different issues, but in the CAFC's hands the two have definitely collapsed into one.

Sadly (oh so sadly), I concur with Dr. Noonan.

The CAFC's last attempt to push back we to ridicule the dicta of Justice Breyer.

The firehosing of the caged simians of the CAFC has been brutal and severe.

Sarnoff: "they keep trying to resurrect Diehr notwithstanding its implied repeal by Bilski, Mayo and Alice. They (and it appears that you) need to get over it"

Narrator voice: "They will never get over it."

Seriously, people far more thoughtful than Kevin Noonan have been telling him and his cronies even before the Supreme Court's Mayo decision to "get over" the fact that Diehr made no sense when interpreted as broadly as they would like. But Kevin actually believes that it would be a GOOD thing if people could patent methods of looking at old data and thinking new thoughts about it. Or he used to (maybe he actually grew up a little bit since then? I doubt it).

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