[Coming late to the party!]
I suggest that it is worth noting that
Judge Lourie wrote the quoted words analysing Mayo, Flook, Benson etc. with
regard to the nature of the required ‘inventive contribution’.
Because Judge Lourie wrote the majority opinion in Prometheus Laboratories v. Mayo
Collaborative, 628 F. 3d 1347 (2010) that claimed that the Machine or
Transformation test, used as an investigative tool, led to a “clear and
compelling conclusion, viz. that the present claims pass muster under §
101”. Moreover he also authored the majority opinion in AMP v.
Myriad which the Supreme Court should rule on in a few weeks.
I have
only had time to read through the CLS v. Alice opinions once, but it
seems clear that Judge Lourie in particular has studied carefully and taken on
board the Supreme Court's analysis in Mayo and applied it as the Supreme
Court presumably intended. (The Supreme Court presumably indicated that
Mayo was applicable to ‘computer-implemented inventions’,
‘doing business over the internet’, and the like, when they GVR'ed
Wildtangent v. Ultramercial (known as Ultramercial v. Hulu when it
was before the Federal Circuit.)
For what it is worth, here is how I
think of the Mayo doctrine. There are the four categories of statutory
patent-eligible subject matter. There are the common law ‘judicial
exceptions’ for laws of nature, natural phenomena and abstract ideas.
Patent lawyers and judges who advocate broad patent-eligibility of course argue
that the judicial exceptions should be construed as narrowly as possible. Think
of these exceptions from patent-eligibility as a dark shadow, or umbra. The
Mayo court laid down the doctrine that applications of laws of nature,
natural phenomena or abstract ideas are likewise not patent-eligible if they
only add ‘routine, conventional activity previously engaged in’ by
those in the relevant field. The Mayo doctrine thus surrounds the umbra
of bare laws of nature, natural phenomena and abstract ideas with a penumbra of
patent-ineligible applications that add nothing to such laws, phenomena or ideas
beyond routine conventional activity.
The approach of the Supreme Court
in Mayo is of course regarded by disciples of Judge Rich as being
incompatible with Judge Rich's Three Doors doctrine, in that it appears
to be based on a combination or conflation of sections 101, 102 or 103 of the
patent statute. (I am not aware of any logical or legal principle that requires
the analysis of a legal claim under distinct sections of a statute to be wholly
independent of one another, as claimed by Rich, Rader and the doctrinaire
advocates of the patent system. Disclaimer: IANAL.) It seems that Rader,
Moore, Linn and O'Connor simply cannot accept the enormity of what the Supreme
Court has done in Mayo - see footnote 5 on page 24 of the CLS v.
Alice opinions. But Judge Lourie has shown that he has understood and
accepted the precedent and doctrine established by the Supreme Court in
Mayo, though he would obviously hold that the ‘judicial
exceptions’ ought not to be construed too broadly, and that the analysis
of what purports to be ‘routine’ or ‘conventional’
should be similarly limited. [ Reply to This | Parent | # ]
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