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« Mayor and City Council of Baltimore v. AbbVie Inc. (7th Cir. 2022) | Main | Senator Tillis' Patent Eligibility Reform Proposal: A Biopharma Perspective »

August 03, 2022

Comments

" I can only imagine how the courts and the USPTO might misuse the exclusion of Section (b)(i)(B)(i)."

Two points:

(1) If this bill were to become law, I envision much of the case law about "technological" inventions from the CBM era living on to inform the implementation of this new provision.

(2) I agree that there will be a lot of initial confusion over this section's reach until it has been litigated for a few years. If the statute were clearly to elimination Mayo and Myriad while only partially repealing Alice, that would still be progress. Not perfect, but better than the status quo (as you say, "two steps forward and one step back").

One needs only to familiarize oneself with the EPO case law on what is and what is not "technical" to appreciate how challenging this distinction is to operate fairly and predictably, in a myriad of marginal cases. But if you want to confine the grant of patents (each one having any commercial value being a real restraint of trade) to non-obvious contributions to the useful arts, what is the alternative?

The buzz I am receiving is that this a (possibly purposeful) Trojan Horse against software patents.

This is far more than one step back (to carry the analogy provided by Mr. DeLassus).

MaxDrei,

How in any real world sense would EPO case law inform the US Jurisprudence on contributions to the Useful Arts?

I have a question. What counts as "integrating"?

I appreciate that it has to be "something more" than "merely storing and executing, the steps of the process that the machine or manufacture perform" but that don't impress me much. What else are computers doing, other than storing and executing?

In other words, how effective a filter on eligibility will "integrate" prove to be in practice? Who's to say? Is "integrate" any more than a wave of the hand, an "I know it when I see it" criterion?

MaxDrei,

That is a great question. If left unanswered, it is likely that the courts will fall back on their Alice-based reasoning (or lack thereof).

Mike

How many people here remember the briefing for In re Bilski en banc? Anyone who has a question about what is meant by "integrating" should go read those briefs that argued for the machine or transformation test. That is what (b)(2)(A) is doing---codifying the machine or transformation test.

I disagree that this is codifying the machine or transformation test - and I seriously doubt that any court would find as such.

I should rather say that (b)(2)(A) codifies the "machine" prong of the machine or transformation test. For better or worse, I do not see an effort here to codify the "transformation" prong.

Again, I disagree that this is codifying even the machine prong.

Tillis DOES advance some language "in regards to" machine action, but this in no way resembles how the courts have attempted to write any type of 'machine' legislation.

Perhaps Mr. DeLassus should abstain from discussing technology (and law related to such) that he clearly does not understand.

"Section (b)(i)(B)(i)... states that a 'non-technological economic, financial, business, social, cultural, or artistic process' would also be an exclusion. The problem with this language is that these terms are not defined and potentially quite broad."

May I suggest that this is less problematic than it appears at first sight. Firstly, it seems to me that this provision is essentially harmless relative to the status quo. That is to say, I cannot think of a single claim that has been successfully asserted post-Bilski that would not pass even a capacious construction of this prohibition. The courts are already excluding claims on basically this basis, so putting it formally into the statute will really not affect any real world outcomes.

Secondly, I am not sure that “technological” is as “undefined” as some imagine. “Congress is presumed to be aware of an administrative or judicial interpretation of a statute and to adopt that interpretation when it… adopts a new law incorporating sections of a prior law… That presumption is particularly appropriate [w]here… Congress exhibited both a detailed knowledge of the… judicial interpretation and a willingness to depart from those provisions regarded as undesirable or inappropriate… .” Lorillard v. Pons, 434 U.S. 575, 580 (1978). In other words, insofar as courts have interpreted “technological” in the patent context, Congress can be presumed to incorporate those interpretations when Congress uses the word “technological” in a statutory revision without providing additional definition.

As it happens, the CAFC has had several occasions* to interpret “technological” in the context of the CBM statutes. This word already has the beginnings of a common law definition, and (like most common law terms) that definition will become ever more clearly focused as case law builds up. The canvas here is less blank than folks suppose.

(*) HTTPS://SCHOLAR.GOOGLE.COM/SCHOLAR?HL=EN&AS_SDT=1FFFFFFFFFFFFFFFFFFFFFFFFFFFFFFFFE0000000000000004000001FFFFFFECFFF87FE3FFFFFFF00000000000000000004&SCIODT=1FFFFFFFFFFFFFFFFFFFFFFFFFFFFFFFFE0000000000000004000001FFFFFFECFFF87FE3FFFFFFF00000000000000000004&CITES=14570700292112568579&SCIPSC=1&Q=%22TECHNOLOGICAL%22&BTNG=

The Status Quo IS a problem (and one being sought to be rectified), so a statement like, "it seems to me that this provision is essentially harmless relative to the status quo" is CLEARLY a non-starter.

Please stop posting on this topic that you clearly do not understand, Mr. DeLassus.

Your "push" is easily seen as a Big Pharma bias, and "divide and conquer" IS in fact very bad for you too.

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