This is not legal advice.
Reading for the day was:Merges & Duffy: 159-162 (Funk Bros. Seed Co. v. Kalo Inoculant); 164-167 (Parke-Davis v. H. K. Mulford), Handout: Association for Molecular Pathology v. USPTO – Background, pp. 8-24, II. Subject Matter Eligibility, pp. 36-62.
I didn’t spend as much time preparing for this class as I did for the Bilski class and I think that was a mistake. In this class we looked at some very recent decisions in Ultramercial vs. Hulu and WildTangent vs. Ultramercial. Based on discussions in class, I couldn’t really make out the difference in these two cases. Neither of these has Wikipedia citations, unfortunately. However, if you just a bit into the citation above, you’ll notice that the suit against Hulu was dropped. That’s why the name change on appeal.
Other post-Bilski Federal Circuit decisions include Research Corp v Microsoft, Cybersource v Retail Decisions and CLS v Alice.
I want to change focus a bit here. Last Thursday Nick stepped down as co-host of the Lawcast and associated Open Source Playground (OSP) projects. We have/had a number of projects going. Over the weekend I spent much of my time trying to figure out the future of OSP and related entities. Because of this, I didn’t have time to properly write up my patent notes from last Friday. Rather than spend more time on patentable subject matter, I want to move on to the readings for tomorrow. Below I have provided you with my unedited notes from Friday’s class.
Nuijten (which is not a SCOTUS case) says signals not patentablefrom Wikipedia“The Federal Circuit has ruled, in In re Nuijten,[12] that signals are not statutory subject matter, because articles of manufacture (the only plausible category under 35these days, maybe Nuijten would fall under “abstract idea”software is “very algorithmic”two method claims <– method claims are most often used in softwareGottschalk holding from Wikipedia:“Respondents’ method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general-purpose digital computers is merely a series of mathematical calculations or mental steps and does not constitute a patentable “process” within the meaning of the Patent Act, 35 U.S.C. 100 (b). Pp. 64-73.”Section 100 is where the definitions areBenson is a passive-aggressive holding.Diamond v. DiehrBilski revived Flook somewhat.inappropriate to dissect a claimrecent SCOTUS cases may be inconsistent with Diehr.this is an unsettled piece of the lawBenson, Diehr and Flook are all guidepostsI’m less concerned about patents now that their are “global prior user rights”post-Bilski and Mayo:method for processing images“The invention presents functional and palpable applications in the field of computer technology”Research Corp v Microsoft <– before MayoCybersource v. Retail Decisions:unpatentable “mental process” which is an abstract ideaUltramercial v Hulu:not abstractWildTangent v. Ultramercial:SCOTUS granted certHow will CAFC respond to SCOTUS?JULY case:CLS v. Alice — if you are going to read any case, read this one.*no categorical exclusions*Funk Bros (1948): <– before the 1952 Patent ActWhy was there a different result in Chakrabarty?“distinctive name, character, and use”My Note: what the hell does a name have to do with it?Parke-Davis (1912):purified adrenalineMyriad (2012):Why the strong opposition to these claims?Declaratory Judgment case
In class, we are now done with discussions about patent eligible subject matter and will move on to utility. Look for the write-up from tomorrow’s class on Wednesday morning!
