Logically First, But Practically Never?

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Logically First, But Practically Never?


The Patently–O blog draws our attention to an opinion of the Federal Circuit Court of Appeals in Dealertrack v. Huber that poses a big question about a big subject: patentable subject matter. Specifically, when should the court consider whether an issued patent is invalid because it does not claim patentable subject matter? That is, is this invention the kind of thing that can be patented? As a logical matter, this question seems primary. We need to know if the invention is in the ballpark before we start worrying about whether it is playing by the rules for how to write patents. For that reason, as the majority opinion of Judges Linn and Dyk notes, the Supreme Court has characterized patentable subject matter as a “threshold test.” On the other hand, as pointed out by Judge Plager in a partial dissent, patentable subject matter can present a “jurisprudential morass” out of which courts struggle to extract themselves. Accordingly, Judge Plager (echoing some commentators, including Patently–O’s Professor Crouch) proposes that the Federal Circuit require that district courts address patentable subject matter issues only as a last resort, after having ruled on any other challenges to the validity of a patent (anticipation, obviousness, lack of written description, and the like).

On the merits, the majority followed the court’s earlier decision in CyberSource v. Retail Decisions in holding that just saying that a method is “computer aided” doesn’t aid the patentability of an abstract (unpatentable) idea: “The claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. The undefined phrase ‘computer aided’ is no less abstract than the idea of a clearinghouse itself.” Judgment of invalidity affirmed.

Posted by David Swetnam-Burland

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