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November 16, 2021

Comments

Two words: Gordian Knot

A few thoughts:

(1) §101 never actually mentions “claimed inventions.” The “claimed invention” does not get a mention until §102. Instead, §101 speaks of “inventions patentable.” In other words, on its face §101 is not concerned with that which is claimed, but rather exists to inform us what sort of inventions are even appropriate to consider when drafting claims.

(2) Almost any area of law will have borderline cases. Whenever you ask the courts to police a line that Congress draws, the courts will inevitably get some of these cases wrong (on both sides of the line), with the result that folks will be dissatisfied with the arbitrary and contradictory nature of these determinations about which side of the line contains each of these borderline cases.

(3) With points 1 & 2 above in mind, I do not *like* the post-Mayo jurisprudence any more than you do. If I am being fair to the CAFC, however, they used to think that Congress had drawn the line between eligibility and ineligibility in one place, and then the SCOTUS (who gets the last word on this point) told the CAFC “no, Congress drew the line further over this way.” So, now the CAFC has to police this new border. All of us who had grown accustomed to the old line look at these cases and think “this is definitely on the right side of the line,” so we get frustrated with these outcomes, but really this is more *our* fault than the CAFC’s. We are just slow to recognize where the real line is. Once we grow accustomed to realizing where Congress really drew the line, we will stop feeling so put out every time the CAFC reminds us of the real boundary.

Mr. Delassus's "just accept it" is possibly the worst advice ever.

This simply chalks up to "new line" the problem that this so-called "new line" is a Gordian Knot of contradictions -- it is not even a line.

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